The Complainant is Hoffmann-La Roche Inc. of Nutley, New Jersey, United States of America and Genentech, Inc. of South San Francisco, California, United States of America, represented by Lathrop & Gage LLP, United States of America.
The Respondent is Oleksandr Mandryk, Alex /Protected Domain Services - Customer ID: NCR-934539 of Chernivtsi, Ukraine and Denver, Colorado, United States of America. 2. The Domain Name And Registrar
The disputed domain names and are registered with N LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 26, 2010. On June 28, 2010, the Center transmitted by email to N LLC a request for registrar verification in connection with the disputed domain names. On June 29, 2010, N LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 12, 2010. Due to the issues regarding the Notification of Complaint, the due date for Response was extended to August 4, 2010. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on August 5, 2010.
The Center appointed Amund Grimstad as the sole panelist in this matter on August 13, 2010. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant, together with its affiliated companies, is one of the leading researchers and developers of pharmaceutical and diagnostic products in the world.
The ACCUTANE® mark of Roche is protected as a trademark for a dermatological preparation in the United States. ACCUTANE is registered to the Complainant in the United States Patent and Trademark Office ("U.S.P.T.O.") as of August 28, 1973 under Reg. No. 966,924, having a first use date of November 27, 1972.
The TAMIFLU® mark of Roche is protected as a trademark for a pharmaceutical antiviral preparation in many countries worldwide. For example, TAMIFLU is registered to the Complainant in the U.S.P.T.O.under Reg. No. 2,439,305, having a priority date of April 26, 1999. The Complainant also owns the mark TAMIFLU and Design registered on June 4, 2002 under Reg. No. 2,576,662. 5. Parties’ Contentions A. Complainant
The Respondent’s domain names and are confusingly similar to the ACCUTANE AND TAMIFLU trademarks.
The Respondent’s domain names consist of the Complainant’s trademarks with the addition of the word “buy” and the gTLD “.biz”. The trademarks ACCUTANE and TAMIFLU are the distinctive elements of the Respondent’s domain names. The additions are not sufficient to avoid the finding of similarity.
The Complainant further states that the Respondent should be considered as having no right or legitimate interest in respect of the domain names and . The Complainant has rights in the trademark ACCUTANE and TAMIFLU, which precede the Respondent’s registration of the disputed domain names.
The Complainant argues that the Respondent has failed to show any legitimate interest in the use of the disputed domain names and that the Respondent is not using the disputed domain names for a bona fide offering of goods or services. The disputed domain names are used to link to sites used for selling generic forms of the Complainant’s products sold under the trademarks ACCUTANE and TAMIFLU.
The Respondent's use of the disputed domain names provides a link actually to a site marketing generic forms of Accutane and Tamiflu products to purchasers.
The Complainant has not authorized the Respondent to use the Complainant’s trademarks ACCUTANE and TAMIFLU in a domain name or otherwise.
The Complainant argues that the disputed domain names have been registered in bad faith. The Complainant requests as remedy the transfer of the disputed domain names to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion And Findings
In order for the Complainant to prevail and have the disputed domain names and transferred to it, the Complainant must prove the following (the Policy, paragraph 4(a)(i-iii):
- The domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the domain names; and
- The domain names were registered and are being used in bad faith. A. Identical or Confusingly Similar
In order for the Complainant to successfully argue that the disputed domain names should be transferred to the Complainant, the domain names must be identical or confusingly similar to a trademark or service mark in which the Complainant has rights. (Policy, paragraph 4(a)(i)).
The domain names and contain the ACCUTANE and TAMIFLU trademarks, thereby creating a similarity to these trademarks.
The domain names of the Respondent consists of the trademarks of the Complainant ACCUTANE and TAMIFLU with the addition of the word “buy”. The word “buy” is a generic word merely describing the act of purchasing the goods sold by the Complainant under the trademark ACCUTANE and TAMIFLU. The mere addition of common terms such as “buy”, to a mark, does not change the overall impression of the designations as being domain names connected to the mark, see, for example, Asia Pacific Breweries Limited v. Chris Kwan, WIPO Case No. D2003-0920, Arthur Guinness Son & Co. (Dublin) Ltd v. Steel Vertigogo, WIPO Case No. D2001-0020.
The problems relating to use of the generic word “buy” has been found by several UDRP panels to be insufficient to negate confusing similarity between domain names and complainants’ trademarks, see for example, Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti, WIPO Case No. D2005-0037.
The gTLD “.biz” is not relevant in assessing whether the disputed domain names are confusingly similar to the Complainant’s trademarks.
The use of the trademarks in the disputed domain names are likely to create confusion amongst Internet users as to whether the web site to which the domain names resolve are endorsed by or affiliated in some way with the Complainant.
The first requirement of the Policy has therefore been fulfilled. B. Rights or Legitimate Interests
Secondly, the Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain names. (Policy, paragraph 4(a)(ii)).
In the present case the Respondent does not use the disputed domain names. Therefore there is no evidence that the Respondent has used the disputed domain names for a bona fide offering of goods or services.
The Complainant has not authorized the Respondent to use the Complainant’s trademark ACCUTANE and TAMIFLU in a domain name or otherwise.
Based on the record and in the absence of submissions from the Respondent, the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Finally, the Complainant must show that the domain names have been registered and are being used in bad faith. (Policy, paragraph 4(a)(iii)).
The Complainant’s products and trademarks are well known.
The Panel agrees with the decision rendered in Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163, in which it was established that bad faith may be present where a domain name “is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith”.
The Respondent seeks to use that recognition to divert Internet users seeking the Complainant's web sites to web sites wholly unrelated to the Complainant. Such uses of the Complainant's marks ACCUTANE and TAMIFLU are clear indications of bad faith on the part of the Respondent, cf.Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784.
The use of the trademarks ACCUTANE and TAMIFLU with the addition of the word “buy” combined with the use of the disputed domain names in this case suggests that the Respondent is deliberately trying to free ride on the goodwill of the Complainant. This leads the Panel to conclude that the disputed domain names were registered and are being used in bad faith.
The third requirement of the Policy has therefore been fulfilled. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, and be transferred to the Complainant.
Amund Grimstad
Sole Panelist
Dated: August 26, 2010
Full & Egal Universal Law Academy