***IDENTICAL OR CONFUSINGLY SIMILAR - paragraph 4(a)(i) of the Policy***
The disputed Domain Name 'saxendapills.com' consists of the Complainant's SAXENDA mark registered in the European Union and the United States of America (the latter being the country of residence for the Respondent), combined with the generic term 'pills' and the '.com' suffix.
The '.com' suffix may be disregarded when it comes to considering whether a domain name is confusingly similar to a trade mark in which the Complainant has rights.
Further, the mere addition of the generic term 'pills' does not serve to distinguish the Domain Name from the Complainant's SAXENDA trade mark, particularly in light of the fact that the Complainant's SAXENDA trade mark registrations cover pharmaceutical preparations in class 5. See Warner Bros. Entertainment Inc.; New Line Productions, Inc. and DC Comics v. Procount Business Services FA 360942 (Nat. Arb. Forum Dec 22, 2004), finding that the addition of generic terms as well as the omission of spaces fails to create a meaningful distinction between the disputed domain name and the mark within it because "such additions do not disguise the fact that the dominant features of the domain names are Complainant’s marks, and each domain name is therefore confusingly similar to the marks pursuant to Policy ¶ 4(a)(i)".
As a result, the Panel concludes that the disputed Domain Name is confusingly similar to a trade mark in which the Complainant has rights within the meaning of paragraph 4(a)(i) of the Policy.
***RIGHTS OR LEGITIMATE INTERESTS - paragraph 4(a)(ii)of the Policy***
The Respondent does not appear to have any trade marks associated with the distinctive SAXENDA mark. There is no evidence that he is commonly known by this mark and he does not have any consent from the Complainant to use this mark.
The Respondent has not provided any evidence to show he has used the disputed Domain Name for any bona fide offering of goods or services of his own. The products which appear on the Respondent's website appear to the panel to compete in some way or another with the Complainant's planned SAXENDA product. This is not therefore a bona fide offering of goods and services under 4(c)(i) of the Policy and it is not a legitimate non-commercial or fair use under 4(c)(iii) of the Policy. See AM Int'l Group Inc. v Benjamin, FA 9442542 (Nat. Arb Forum May 11, 2007) finding that the respondent's use of a confusingly similar domain name to advertise real estate services which competed with the complainant's business did not constitute a bona fide offering of goods and services under paragraph 4(c)(iii) of the Policy.
Accordingly, the Panel finds that the Respondent does not have any rights or legitimate interests in the Domain Name within the meaning of paragraph 4(a)(ii)of the Policy.
***REGISTERED AND USED IN BAD FAITH - paragraph 4(a)(iii)of the Policy***
Paragraph 4(b) of the Policy sets out non-exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including circumstances where, by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.
The evidence of the Respondent's website shows it is an online store selling third party weight loss products. This is of note bearing in mind the Complainant's planned launch of the SAXENDA product is also in relation to weight loss. The Panel therefore finds that the Respondent has attempted to attract and cause confusion amongst Internet users between the Complainant's distinctive SAXENDA mark, and that the Respondent's sale of third party weight loss products on the website attached to the disputed Domain Name is for commercial gain. See AOL LLC v AIM Profiles, FA 964479 (Nat Arb Forum May 20, 2007) finding registration and use of the disputed domain name in bad faith pursuant to paragraph 4(b)(iv) of the Policy because the Respondent was commercially gaining from the likelihood of confusion between the complainant's mark and the competing instant messaging products and services advertised on the Respondent's website attached to the disputed domain name. Further, see Pfizer Inc. v Suger 02002-0187 (WIPO Apr 24, 2002) finding the link between the complainant's mark and the content advertised on the respondent's website was obvious, and therefore the respondent must have known about the complainant's mark when it registered the disputed Domain Name.
As such the Panel finds that the Complainant has made out its case under paragraph 4(b)(iv) of the Policy, and therefore the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.
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