The Complainant is Roche Products Limited of Welwyn Garden City, United Kingdom of Great Britain and Northern Ireland, represented by Lathrop & Gage LLP, United States of America.
The Respondent is PrivacyP of Queensland, Australia and JoliMari, Joli Marikona of New York, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with DomainContext, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 16, 2012. On February 17, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 20, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 21, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to Complaint on February 21, 2012.
The Center verified that the Complaint together with the amendment to 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 23, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 14, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 16, 2012.
The Center appointed Emmanuelle Ragot as the sole panelist in this matter on May 3, 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, together with its affiliated companies, is one of world’s largest research-focused healthcare providers of pharmaceuticals and diagnostics with operations in numerous countries worldwide.
The ROACCUTANE trademark designates an isotretinoin medication used for treating skincare, acne problems.
The ROACCUTANE trademark is registered since 1979 in favor of the Complainant in numerous countries around the world and is still in use. The Complainant has submitted evidence that it holds the said trademark (Exhibit 3 of the Complaint)
For many years, the mark ACCUTANE of the Complainant, an isotretinoin medication was extensively promoted without limitation and has been used since 1972 (Exhibit 4 of the Complaint).
This brand is continuously in use in domain names by third parties marketing isotretinoin and other acne/skincare/pharmaceutical products.
The Respondent was informed that the disputed domain name was, according to the Complainant, infringing the trademark rights of the Complainant and was requested to transfer the disputed domain name to the Complainant on January 30, 2012 (Exhibit 5 of the Complaint).
The disputed domain name was created on December 28, 2011; prior to the filing of the Complaint, the disputed domain name redirected to a website which offered numerous pharmaceutical products, including the Complainant’s Accutane products, for online sale (Exhibit 6 of the Complaint).
The Complainant requests the disputed domain name be transferred to the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant has rights both in its registered trademark ROACCUTANE and famous mark ACCUTANE.
The Complainant is using both trademarks and is entitled to prevent any third parties from infringing its trademark’s rights.
The Complainant asserts that the disputed domain name is confusingly similar to the Complainant’s ROACCUTANE and famous mark ACCUTANE because (1) the disputed domain name incorporates the trademark in its entirety and (2) the addition of the generic term “pharm” does not sufficiently distinguish the disputed domain name from that trademark. The Complainant points to the fact that its registration and use of the ACCUTANE and ROACCUTANE trademarks predates the Respondent’s registration and use of the disputed domain name.
The Complainant further argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name because (1) the Complainant has exclusive rights in the ROACCUTANE and ACCUTANE trademarks and has granted the Respondent neither a license/permission/authorization nor any other consent to such use of the trademarks in the disputed domain name and (2) the Respondent obviously uses the disputed domain name for commercial gain and with the purpose of capitalizing on the fame of the Complainant’s ROACCUTANE / ACCUTANE trademarks and (3) the disputed domain name clearly alludes to the Complainant.
Finally, the Complainant suggests that the disputed domain name was registered in bad faith since, at the time of registration on December 28, 2011, the Respondent had knowledge of the Complainant’s ROACCUTANE / ACCUTANE trademarks. Moreover, the Complainant argues that the disputed domain name is being used in bad faith since when viewing the Respondent’s website one realizes that the Respondent has intentionally attempted (for commercial gain) to attract Internet users by creating a likelihood of confusion with the Complainant’s well-known trademarks as to the source, affiliation and endorsement of the Respondent’s website or of the products and services posted thereon or linked thereto. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant carries the burden of proving:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
The Respondent’s default in the case at hand does not automatically result in a decision in favor of the Complainant. However, paragraph 5(e) of the Rules provides that if a respondent does not submit a response, in the absence of special circumstances, the panel is to decide the dispute solely based upon the complaint. A. Identical or Confusingly Similar
Numerous UDRP panels have established that the addition of words, letters or numbers to a mark used in a domain name does not alter the fact that the domain name is confusingly similar to the mark.
In the case at hand, the descriptive language added namely “pharm” does not prevent a finding of confusing similarity (America Online Inc v. Anson Chan,WIPO Case No. 2001-0004).
The disputed domain name incorporates the whole of the ACCUTANE mark of the Complainant, also so similar to the Complainant’s mark ROACCUTANE, and adds the generic abbreviation term “pharm”.
The Panel concludes that the disputed domain name is confusingly similar to the trademark ROACCUTANE / ACCUTANE in which the Complainant has shown to have rights.
Moreover, it has been held in numerous UDRP decisions and has meanwhile become a consensus view among panelists (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.9) that the addition of a generic or descriptive term or geographical wording to a trademark in a domain name is normally insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP. Accordingly, the mere addition of the generic term “pharm” is not sufficient to dispel the confusing similarity arising from the incorporation of the Complainant’s ROACCUTANE / ACCUTANE trademark into the disputed domain name (see also: F. Hoffmann-La Roche AG v. Antonino Chiaramonte,WIPO Case No. D2011-1955).
Therefore, the first element under the Policy as set forth in paragraph 4(a)(i) in the case at hand is fulfilled. B. Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in the disputed domain name.
ROACCUTANE and ACCUTANE are not dictionary words and are used by the Complainant in connection with its brands in isotretinoin acne medication.
The Complainant or its affiliate companies have not authorized the Respondent to use its marks ACCUTANE or ROACCUTANE or to incorporate the ACCUTANE portion of its ROACCUTANE trademark into any domain name.
The Complainant or its affiliate companies have not granted the Respondent with a licence to use the marks ACCUTANE or ROACCUTANE or the ACCUTANE portion of its mark ROACCUTANE in any manner.
The Panel is further convinced that on the basis of the Complainant’s undisputed contentions, the Respondent apparently has neither made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has the Respondent been commonly known by the disputed domain name, nor can it be found that the Respondent made a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain.
The Respondent obviously has not been authorized to use the Complainant’s ROACCUTANE and/or ACCUTANE trademark, neither as a domain name nor on the Respondent’s website or in any other way. The Respondent, however, has used the disputed domain name at least temporarily to resolve to a website for an online pharmacy promoting the sale of the Complainant’s Roaccutane / Accutane products as well as numerous other pharmaceuticals some of which are apparently competing with those of the Complainant. In the absence of any other reasonable explanation, such use may neither be deemed legitimate nor noncommercial nor fair (see also: F. Hoffmann-La Roche AG v. Private Whois ,WIPO Case No. D2011-1484).
Accordingly, the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. Now, the burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating the contrary (see WIPO Overview 2.0, paragraph 2.1). In the case at hand, the Respondent did not reply to the Complainant’s allegations as they were included in the Complaint duly notified to the Respondent by the Center on February 23, 2012.
Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and thus the second element of the Policy. C. Registered and Used in Bad Faith
The Panel finally holds that the disputed domain name was registered and is being used by the Respondent in bad faith.
The Panels takes the view that the re-direction of the disputed domain name, which is confusingly similar to the Complainant’s trademark ROACCUTANE and mark ACCUTANE, to a website for an online pharmacy promoting the sale of the Complainant’s products as well as numerous other pharmaceuticals some of which are apparently competing with those of the Complainant, is a clear indication that the Respondent intentionally attempted to attract, for commercial gain, Internet users to its own website, by creating a likelihood of confusion with the Complainant’s ROACCUTANE trademark and ACCUTANE mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or a product thereon. Such circumstances, are evidence of registration and use of the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
In connection with this finding, the Respondent formally failed to respond to the Complaint.
Therefore, the Panel finds that also the third element under the Policy as set forth in paragraph 4(a)(iii) is fulfilled and that, accordingly, the Complainant has satisfied all of the three requirements of paragraph 4(a) of the Policy. 7. Decision
For 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.
Emmanuelle Ragot
Sole Panelist
Dated: May 17, 2012
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