The Complainant is Hoffmann-La Roche Inc., of Basel, Switzerland, internally represented.
The Respondent is Alex Kalto, Noresco Ltd. of Belize, Belize / Whois Privacy Protection Service of Xiamen, Fujian, China. 2. The Domain Name and Registrar
The disputed domain name is registered with B, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 17, 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 20, 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 the Complaint on February 20, 2012.
The Center verified that the Complaint together with the amendment to 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 21, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 12, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 13, 2012.
The Center appointed Richard Hill as panelist in this matter on March 22, 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 is a well-known pharmaceutical company owning the well-known trademark ACCUTANE, with rights dating back to 1982.
The Respondent registered the disputed domain name in January 2012.
The disputed domain name is directed to a website offering to sell “Generic Accutane”. 5. Parties’ Contentions A. Complainant
The Complainant alleges that it is, together with its affiliated companies, engaged in research and development of pharmaceutical and diagnostic products. It is a member of the Roche Group, one of the world’s leading research-focused healthcare groups and having global operations in more than 100 countries.
The Complainant states that its mark ACCUTANE is registered on behalf of the Complainant in the United States of America with a first use in 1982. That mark is used to market a dermatological preparation for the treatment and prevention of acne. This mark was extensively promoted for many years in print advertisements in medical journals, promotional materials, packaging, medical informational materials, television advertising and direct mailings. The sales of the Accutane product in the United States have exceeded hundreds of millions of dollars.
According to the Complainant, the disputed domain name is confusingly similar, in the sense of the Policy, to the Complainant’s mark, because it incorporates the mark in its entirety and merely adds common terms related to pharmaceutical products. It cites UDRP precedents to support its position.
The Complainant states that it did not license or otherwise authorize the Respondent to use its mark.
The Complainant alleges that the disputed domain name is redirected to an online pharmacy that offers “Generic Accutane”. Thus the Respondent uses the disputed domain name for commercial gain and with the purpose of capitalizing on the fame of the Complainant’s mark. This does not constitute fair use or a legitimate use of the mark. The Complainant cites UDRP precedents to support its position.
Further, says the Complainant, the disputed domain name was registered in bad faith since at the time of the registration, in January 2012, the Respondent had knowledge of the Complainant’s well-known product and the mark ACCUTANE.
The Complainant alleges that the disputed domain name is being used in bad faith because the Respondent is intentionally attempting (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. The Complainant cites UDRP precedents to support its position. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has provided evidence showing that it owns the well-known trademark ACCUTANE, which is used to market a pharmaceutical product. It is clear that the disputed domain name, consisting of the Complainant’s trademark with the addition of the generic terms “online”, “pharmacy”, and “1”, is confusingly similar to the Complainant’s trademark. See for example F. Hoffmann-La Roche AG v. Hua Jianmin,WIPO Case No. D2007-0746 (“the addition of English words as “online”; “pharmacy” [..] do not provide additional specification or sufficient distinction from Complainant or its trademark [...] In fact, the Panel finds that the addition of these English words serve to emphasize that information about the Complainant’s [...] drug products are available at these websites which only serve to increase the level of confusion of Internet users as Internet users may mistake the Respondent’s websites whether as the Complainant’s official websites or websites endorsed, sponsored or associated with Complainant”); see also F. Hoffmann-La Roche AG v. Bobik Marley,WIPO Case No. D2007-0694 (“confusing similarity, for the purposes of the Policy, is established when a domain name wholly incorporates a complainant’s mark and only adds a generic word along with, in this case, (..) the number ‘1’”).
The Panel finds that the disputed domain name is identical or confusingly similar to the Complainant’s trademark. B. Rights or Legitimate Interests
The Respondent does not have any license or other authorization to use the Complainant’s mark. It is using the disputed domain name to point to a website that offers a product that competes with the Complainant’s Accutune product.
The Panel finds that the Respondent is redirecting Internet users interested in the Complainant’s products and services to its own website for commercial gain and that such use does not fall within the parameters of a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy or a legitimate noncommercial or fair use pursuant to paragraph 4(c)(iii) of the Policy. See for example F. Hoffmann-La Roche Inc. v. Samuel Teodorek,WIPO Case No. D2007-1814 (“the Respondent’s use of the disputed domain name to redirect Internet users to an on-line pharmacy demonstrates Respondent’s lack of a legitimate interest in the domain name”); see also Pfizer Inc v. Juan Gonzales,WIPO Case No. D2004-0589 (“no good faith can be assumed in Respondent’s conduct, in view of the fact that the Domain Name is confusingly similar with Complainant’s trademark and is used in connection with the promotion and sale of competing products”). C. Registered and Used in Bad Faith
It is clear that the Respondent must have been aware of the Complainant’s marks when he registered and started using the disputed domain name, because the website at the disputed domain name contains the Complainant’s mark.
The Respondent (who did not reply) has not presented any plausible explanation for his use of the Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from the Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that the Respondent did not have a legitimate use in mind when he registered the disputed domain name.
Indeed the Respondent’s actual use of the disputed domain name (as noted above) is clearly not bona fide, because the Respondent operates a website that promotes a product that competes with the Complainant’s product. This indicates that the Respondent has registered and is using the disputed domain name to take advantage of the confusing similarity between the disputed domain name and the Complainant’s mark in order to profit from the goodwill associated with the mark in bad faith under paragraph 4(b)(iv) of the Policy. See Pfizer Inc v. Juan Gonzales,WIPO Case No. D2004-0589 (“using the Domain Name to promote and sell, for commercial gain, [..] pharmaceutical products (as “Generic Accutane”), which directly compete with Complainant’s genuine (ACCUTANE) [..] is further evidence of Respondent’s bad faith registration and use of the Domain Name”); see also Pfizer Inc. v. jg a/k/a Josh Green,WIPO Case No. D2004-0784 (bad faith is established when “Respondent is using the domain names as a forwarding address to a for-profit on-line pharmacy”). 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.
Richard Hill
Sole Panelist
Dated: March 26, 2012
Full & Egal Universal Law Academy