The Complainant is Hoffmann-La Roche Inc. of Nutley, New Jersey, United States of America (“US”), represented internally.
The Respondent is JoliMari, Joli Marikona of New York, New York, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with DomainContext, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 15, 2012. On February 15, 2012, the Center transmitted by email to DomainContext, Inc. a request for registrar verification in connection with the disputed domain name. On February 20, 2012, DomainContext, Inc. 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 February 24, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 15, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 16, 2012.
The Center appointed Paz Soler Masota as the sole panelist in this matter on May 8, 2012. 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 and its affiliated companies constitute a leading group involved in the field of pharmaceuticals and diagnosis in many countries around the world, operating in more than 100 countries. The Complainant has obtained the ownership and enforcement of the US Trademark ACCUTANE, registered at the US Patent and Trademark Office as of August 28, 1973, with Registration No. 966,924.
Same as Complainant, Hoffmann-La Roche Inc., also F. Hoffmann-La Roche AG, of Basel, Switzerland, is owned and controlled by Roche Holding AG, a company organized and doing business under the laws of Basel, Switzerland. Aforesaid F. Hoffmann-La Roche AG owns and uses the domain name .
As it has been credited, ACCUTANE is an alternative Trademark (US version) for the Trademark ROACCUTAN, which is protected in several countries, as reflected by the International Registration No. 450092, with priority date as of August 21, 1979. The mark ACCUTANE designates a dermatological preparation in the form of a product indicated for the treatment and prevention of acne, the sales of the ACCUTANE product in the US having exceeded hundreds of millions of dollars.
The Respondent has registered the disputed domain name on January, 4, 2012 as confirmed by the Registrar. After several attempts, the Panel has not been able to enter into the website at the disputed domain name. 5. Parties’ Contentions A. Complainant
The Complainant has exclusive trademark rights for ACCUTANE, and no license, permission, authorization or consent was granted to the Respondent to use ACCUTANE in the disputed domain name.
The Complainant submits that the disputed domain name of the Respondent is confusingly similar to the Complainant’s mark ACCUTANE. The disputed domain name contains the entire ACCUTANE trademark of the Complainant. Moreover, the addition of the geographical indication “worldwide” is not capable to sufficiently distinguish the disputed domain name from the trademark. Because of the notorious character of the trademark ACCUTANE, the fact that the brand is fully embedded in the disputed domain name inevitably causes confusion and, hence, Internet users are induced to believe that the webpage involved is somehow associated or recommended from the Complainant, which is not the case.
From all the above, the conduct of Respondent represents an illegitimate predation as the Complainant is deprived from registering the disputed domain name.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. In fact, a reseller has no rights to incorporate an alien brand in its own trade name, without being authorized for the purposes. Moreover, the Respondent uses the disputed domain name for commercial gain and with the aim of capitalizing on the fame of the Complainant’s trademark ACCUTANE. The Respondent has intentionally attempted (for commercial purpose) to attract Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s well-known mark as to the source, affiliation and endorsement of the Respondent’s website or of the products linked to the Respondent’s website.
Finally, the Complainant submits that the disputed domain name was registered and is being used in bad faith by the Respondent. On the one side, because the registration took place as of January 4, 2012, which evidences that the Respondent was well aware of the prior legitimate rights of Complainant and, on the other side, because of the unconsented commercial use on an online-pharmacy business of the trademark ACCUTANE, which has provided the Respondent with unjustified revenues. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Paragraph 15(a) of the Rules instructs the Panel as to the principles to use in rendering its decision: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy sets out the three elements which must be present for the proceeding to be brought against the Respondent, and which the Complainant must prove to obtain a remedy. It provides as follows:
“You [the respondent] are required to submit to a mandatory administrative proceeding in the event that a third party (a “complainant”) asserts to the applicable Provider, in compliance with the Rules of Procedure, that
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.
In the administrative proceeding, the complainant must prove that each of these three elements are present”.
The Complainant has evidenced that it has registered trademark rights to ACCUTANE. The disputed domain name is not ad pedem litterae identical to the trademarks owned by the Complainant. The issue herein is therefore whether there is confusing similarity between the trademark and the disputed domain name.
The question is to be answered positively. In fact, the disputed domain name wholly incorporates the Complainant’s registered trademark ACCUTANE which represents a confusing similarity as found in to the Policy, and this despite the affixing of the term “worldwide” to the mark, for a geographical term has, intrinsically, a generic character (see, herein, the decision of the panel in Hoffmann-La Roche Inc. v. Pavlishin I. Mihail, WIPO Case No. D2010-1155; forward to many UDRP decisions, the addition of generic or descriptive terms to the mark lacks the capacity to eliminate or avoid the likelihood of confusion between the disputed domain name and the trademark: see herein specifically in connection with the trademark ACCUTANE the UDRP decisions Hoffmann-La Roche Inc. v. Andrey,WIPO Case No. D2008-1482; Hoffmann-La Roche Inc. v. Samuel Teodorek, WIPO Case No. D2007-1814; Hoffmann-La Roche Inc. v. Alisia Uzun, WIPO Case No. D2008-1138; Hoffmann-La Roche Inc. v. Online Pharma, WIPO Case No. D2006-0628; Hoffmann-La Roche Inc. v. Guillaume Ansart, WIPO Case No. D2008-1005; and Hoffmann-La Roche Inc. v. Private Person, Yaroslav P Savchenko, WIPO Case No. D2010-0394, and see also further F. Hoffmann-La Roche AG v. Private Whois valiumonlinepharmacies, WIPO Case No. D2012-0488; Hoffmann-La Roche Inc. v. Private Whois Service,WIPO Case No. D2010-1254; F. Hoffmann-LaRoche AG. v. Domain Admin, PrivacyP/Sergey Mishin,WIPO Case No. D2010-1256; F.Hoffmann-LaRoche AG v. Sergii, WIPO Case No. D2010-0728.
Thus, and according to paragraph 4(a)(i) of the Policy, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark ACCUTANE. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. Paragraph 4(c) reads:
“When you receive a complaint, you should refer to Paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii). you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.
It is generally difficult for the complainant to prove that the respondent does not have any rights or legitimate interests in a disputed domain name and, on the other hand, it would be fairly simple for the Respondent to demonstrate that it has any such rights or legitimate interests pursuant to paragraph 4(c) of the Policy. The Respondent has not filed its Response and failed to demonstrate its rights to or legitimate interests in the disputed domain name as per paragraph 4(c) of the Policy. It is sufficient for the Complainant to make a prima facie showing of its assertion in the event of the Respondent’s default.
The Complainant has owned the trademark ACCUTANE and it has used the mark for a very long time, since 1982 (the trademark has a priority date of August 28, 1973). The Complainant has not licensed, authorized nor permitted or consented to the Respondent’s use of the trademark.
According to prior decisions concerning the resale of goods under the UDRP, in order to be bona fide, the offering of goods or services must meet minimum requirements like the respondent must use the site to sell only the trademarked goods and the site should accurately disclose the registrant’s relationship with the trademark owner. According to the alleged and proven facts, this circumstance does not occur in the present case. In fact, Internet users are directly addressed to a pharmacy on line, by no other reference but the mark of the Complainant, so therefore, the Respondent uses the disputed domain name for a commercial gain by free-riding or capitalizing on the notoriety of the trademark ACCUTANE (see, again, Hoffmann-La Roche Inc. v. Andrey, WIPO Case No. D2008-1482; Hoffmann-La Roche Inc.v. Samuel Teodorek, WIPO Case No. D2007-1814; Hoffmann-La Roche Inc. v. Alisia Uzun, WIPO Case No. D2008-1138; Hoffmann-La Roche Inc. v. Online Pharma, WIPO Case No. D2006-0628; Hoffmann-La Roche Inc. v. Guillaume Ansart, WIPO Case No. D2008-1005; and Hoffmann-La Roche Inc. v. Private Person, Yaroslav P Savchenko,WIPO Case No. D2010-0394, see also herein Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784, ).
The fact of ACCUTANE being a coined or invented term has been steadily considered by the Panel as a factor leading to the illegitimate position of the Respondent, for it prevents it from evidencing that it is recognized in the market under such a denomination (see Hoffmann-La Roche Inc. v. Andrey, WIPO Case No. D2008-1482; Hoffmann-La Roche Inc. v. Online Pharma, WIPO Case No. D2006-0628; Hoffmann-La Roche Inc. v. Guillaume Ansart, WIPO Case No. D2008-1005). Or, in other terms, the only plausible explanation is that Respondent may not be unknowledgeable about the renowned feature of the term “accutane” (Hoffmann-La Roche Inc. v. Samuel Teodorek, WIPO Case No. D2007-1814) and that, therefore, Respondent is trading necessarily on the fame associated to the brand of Complainant (Hoffmann-La Roche Inc. v. Alisia Uzun, WIPO Case No. D2008-1138).
This being said, it is evident that the Respondent is well aware of the notoriety of the trademark ACCUTANE, as well as it is not authorized to include it in his own trade or domain name. This fact has been qualified by the Panel as illegitimate (see Hoffmann-La Roche Inc. v. Samuel Teodonek, WIPO Case No. D2007-1814). This circumstance, besides representing a parasitic conduct, prevents Complainant to legitimately have access to the registration of a domain name comprising its own trademark.
All the above is even more emphasized by the fact that the website of the Respondent does not disclose that it has no relationship with the Complainant, the owner of the trademark ACCUTANE.
The Panel finds the Respondent’s use of the disputed domain name cannot be considered to be in accordance with a bona fide offering of goods or services.
According to paragraph 4(a)(ii) of the Policy, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name . C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by the Administrative Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) is reproduced below:
“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location”.
Each of the four circumstances in paragraph 4(b) of the Policy, if found, is an instance of “registration and use of a domain name in bad faith”. In this Panel’s view, circumstances (i), (ii), and (iii) are concerned with the intention or purpose of the registration of the domain name, and circumstance (iv) is concerned with an act of use of the domain name.
The Complainant is required to prove both that the disputed domain name was registered in bad faith and is being used in bad faith because in paragraph 4(a)(iii) of the Policy, the provision contains the conjunction “and” rather than “or” and it refers to both the past tense (“has been registered”) and the present tense (“is being used”) hence circumstances at the time of registration and thereafter have to be considered by the Panel. The Complainant is required to prove that the registration was undertaken in bad faith and that the circumstances of the case are such that the Respondent is continuing to act in bad faith.
The Panel has considered the Complainant’s assertions and evidence with regard to the Respondent’s registration and use of the disputed domain name are in bad faith. By not submitting the Response, the Respondent has failed to invoke any circumstances that could demonstrate that the Respondent did not register and use the disputed domain name in bad faith.
The Panel surmises the Respondent’s true purpose in registering the disputed domain name which incorporates the Complainant’s mark appears to have been to capitalize on the reputation of the well-known trademark of the Complainant by diverting Internet users seeking the Complainant’s websites to the Respondent’s own website.
The addition of the term “worldwide” is, herein, more than questionable. Actually, and beyond the argumentation aforesaid, it is to emphasize that in many countries outside the US, the sale through the Internet of drugs is submitted to very strict terms and permissions, because of a very strict regulation on public health. Therefore, the use of the referred geographical term shall not have at all a positive bearing on the prospects of visitors from countries where the online pharmacy business is not operative. And this could, at the end, have a tarnishing effect on the reputation of the owner of the trademark ACCUTANE.
The Respondent, moreover, by using the disputed domain name, is misleading consumers and confusing them by making them believe that the website behind that link is associated, fostered or recommended by the Complainant. The lack of Response reveals to the Panel that the Respondent has no interest in defending its legitimate position; on the contrary, it reveals the true texture of its position, that is, to maintain itself in the gain of the circumstances, from the moment in which the registration of the disputed domain name was effective until the moment in which the declaration of this procedure could be detrimental to its interests: that represents the time gap for its illegitimate commercial gain.
The Respondent’s website has no legitimate business connection with the Complainant or its trademark. The Complainant has not granted the Respondent permission or a license of any kind to use its trademarks. Such unauthorized use of the Complainant’s marks by the Respondent suggests opportunistic bad faith.
The Panel finds that the case is squarely covered by paragraph 4(b)(iv) of the Policy.
According to paragraphs 4(a)(iii) and (b) of the Policy, the Panel finds that the disputed domain name has been registered and is being used by the Respondent in bad faith. 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 disputed domain name be transferred to the Complainant.
Paz Soler Masota
Sole Panelist
Dated: May 22, 2012
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