Drug manufacturer Hoffmann-La Roche just lost a UDRP on the domain name diet-xenical.com.
Its a pretty amazing decision considering that Xenical is a trademark term for a diet drug, the domain holder didn’t even response to the complaint and the domain resolves to a website that advertises Generic Xenical for sale.
The disputed domain name is identical to the Complainant’s trademark except for the prefix “diet-“. It is well established, as the Complainant argues, that a mere prefix does not make a domain name distinct.
Whether use of the mark is likely to lead to consumer confusion is a different question.
The Respondent’s website does not suggest that it is marketing its products under the authority of the Complainant.
Indeed the Respondent’s website prominently displays a different trade name, “T+T Pharmacy” and also explicitly characterizes the sponsor of the website as a seller of generic drugs.
A reasonable consumer with basic knowledge of the fact that suppliers of proprietary drugs rarely market generic equivalents of those drugs would not conclude that the website is sponsored or approved by the Complainant.
The Complainant alleges that the disputed domain name “is confusingly similar to the trademark of the Complainant,” Complaint 10, at § A.
“The Complainant does not, however, allege any additional facts to support the conclusion that ordinary consumers would be likely to interpret the Respondent’s website as offering proprietary XENICAL when it explicitly states that it supplies generic drugs, or why they would believe that “T+T Pharmacy” is sponsored or authorized by the Complainant.”
Annex 5 of the Complainant’s submission shows webpages from Respondent dated 04.06.2013, each of which bears the running header, “Xenical – Buy Xenical Treatment Online for Obesity.” Respondent webpages retrieved by the Panel on September 26, 2013 showed no such header. The “About us,” “Frequently Asked Questions,” and “Contact us” pages of the Respondent’s website make no reference to the Complainant and make no suggestions that the Respondent’s products are authorized by the Complainant. They indicate that the Respondent is distinct.
In Toyota Motor Sales, the accused website had been modified by the time of trial to reduce the likelihood of confusion.
Similarly, in this case, it appears that the Respondent’s website has been modified since the screen shot presented by the Complainant was taken.
The Toyota Motor Sales court observed that forced relinquishment of a domain name is no less extraordinary a remedy than an injunction, and that “The important principle to bear in mind on remand is that a trademark injunction should be tailored to prevent ongoing violations, not punish past conduct.…
