The Complainant is Hoffmann-La Roche Inc. of Nutley, New Jersey, United States of America, represented by Jérôme Rhein, Switzerland.
The Respondent is Isaac Goldstein of Central, Hong Kong. 2. The Domain Name and Registrar
The disputed domain name is registered with PostalDomains, Incorporated (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on August 22, 2012. On August 22, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 22, 2012, the Registrar 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 August 29, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 18, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 20, 2012.
The Center appointed Ho-Hyun Nahm as the sole panelist in this matter on October 1, 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, 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’s mark ACCUTANE is registered on behalf of the Complainant in the United States Patent and Trademark Office as of August 28, 1973 under Registration No. 966,924, with a first use in 1982. Same as Complainant, Hoffmann-La Roche Inc., also F. Hoffmann-La Roche AG, Basel, Switzerland, is owned and controlled by Roche Holding AG, a company organized and doing business under the laws of Switzerland. The mark ACCUTANE designates a dermatological preparation in the form of a product indicated 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.
The Respondent registered the disputed domain name on August 15, 2012. The Respondent uses the disputed domain name for website offering search engines with sponsored links. 5. Parties’ Contentions A. Complainant
The Complainant contends that:
-the disputed domain name is confusingly similar to a trademark in which the Complainant has rights;
-the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
-the disputed domain name was registered and is being used in bad faith.
The Complainant seeks the transfer of the disputed domain name from the Respondent to the Complainant in accordance with paragraph 4(b)(i) of the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to 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 requires that the Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name registered by the Respondent has been registered and is being used in bad faith.
The Respondent provided no Response, and the deadline for doing so expired on September 18, 2012. Accordingly, the Respondent is in default. Taking into consideration of the Respondent’s default, the Panel can infer that the Complainant’s allegations are true where appropriate to do so (Talk City. V.Michael Robertson,WIPO Case No. D2000-0009). Nonetheless, the Complainant retains the burden of proving the three elements of paragraph 4(a) of the Policy. A. Identical or Confusingly Similar
The Complainant has provided sufficient evidence showing that it is the owner of the ACCUTANE mark, the use and registration of which predate the Respondent’s registration of the disputed domain name. The Panel recognizes by the materials submitted by the Complainant that the Complainant’s mark ACCUTANE is well-known. In the Panel’s opinion, the fame of the Complainant’s mark will increase the likelihood of confusion.
The disputed domain name is confusingly similar to the Complainant’s mark ACCUTANE in that it incorporates the Complainant’s mark in its entirety. See Hoffmann-La Roche Inc. v. Hightech Industries, Andrew Browne,WIPO Case No. D2010-0240, finding “the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to the Complainant's registered mark.”
The Panel finds that the additional word “help” is a descriptive word used to provide assistance, and thus it does not constitute a prominent portion in the disputed domain name in determining confusing similarity between the disputed domain name and the Complainant’s mark. Therefore, the addition of the word “help” does not have any impact on the avoidance of confusion. See Research in Motion Limited v. Input Inc, Domain Manager, WIPO Case No. D2011-2197 finding “the additional word “help” is an expression commonly used in the world to provide assistance. For this reasons, the Panel concludes that the word “help” is solely descriptive. The use of the added descriptive word does not change the overall impression of the domain name as being dominated by the term (“ACCUTANE”) and does not serve to distinguish the disputed domain name from Complainant’s mark.”
The addition of the top-level domain “.com” does not have any impact on the overall impression of the dominant portion of the disputed domain name and is therefore irrelevant to determine the confusing similarity between the Complainant’s trademark and the disputed domain name as well.
As such, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s mark. B. Rights or Legitimate Interests
As it is virtually impossible for a complainant to prove the negative fact that a respondent has no rights or legitimate interests in the disputed domain name, it is well accepted that a complainant must only show a prima facie case that there are no rights or legitimate interests on the part of the respondent. The burden of proof production will then shift to the respondent. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
The Panel finds that the Complainant has exclusive rights for the mark ACCUTANE and no license/permission/authorization was granted for the Respondent to use ACCUTANE in a domain name. The Panel recognizes that the disputed domain name is resolved to website offering search engines with sponsored links. However, such a use of the disputed domain name does not constitute any rights or legitimate interests on the part of the Respondent. See Sigikid H.Scharrer & Gmbh & Co.KG, MyBear Marketing-und Vertriebs Gmbh, Mr. Thomas Dufner v. Bestinfo,WIPO Case No. D2004-0990 finding “the sole diversion of Internet traffic by Respondent to other, unrelated websites, does not represent a use of the disputed domain name in connection with a bona fide offering of goods and services. Rather, the conduct of Respondent serves the purpose of generating revenues, e.g., from advertised pay-per-click products.”
As such, the Panel concludes that the Respondent does not have rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
In light of the well-known status of the Complainant’s mark well before the registration date of the disputed domain name, it is presumed that the Respondent must have registered the disputed domain name with the knowledge of the Complainant’s rights in the Complainant’s mark, as it is inconceivable that the Respondent was unaware of the Complainant’s rights in the ACCUTANE mark. This is because it is unlikely that the Respondent would have registered the disputed domain name unless it was aware of the existence of the trademark ACCUTANE or that the disputed domain name might be of some type of economic advantage (See the Gap, Inc. v. Deng Youqian,WIPO Case No. D2009-0113; Caesars World, Inc. v. Forum LLC, WIPO Case No. D2005-0517).
Registration of the disputed domain name incorporating well-known Complainant’s mark ACCUTANE by an entity that has no legitimate relationship with the Complainant itself demonstrates bad faith (Telstra Corp. Ltd., v. Nuclear Marshmallows,WIPO Case No. D2000-0003, February 18, 2000).
The Panel recognizes that the use of the disputed domain name is to be advertising links to websites promoting and/or offering products and services of third parties, especially in the pharmaceutical field being the business of the Complainant. As such, the Panel infers that the Respondent, by using the disputed domain name, is intentionally misleading the consumers and confusing them so as to attract them to other websites, making them believe that the websites behind those links are associated or recommended by the Complainant. As a result, the Respondent may generate unjustified revenues for each click-through by on-line consumers of the sponsored links. The Respondent is therefore illegitimately capitalizing on the reputation of the Complainant’s mark. See L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc., Inc.,WIPO Case No. D2005-0623 finding “such exploitation of the reputation of trademarks to obtain click-though commissions from the diversion of Internet users is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous decisions.”
As such, the Panel concludes that the Respondent registered and is using the disputed domain name in bad faith. 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.
Ho-Hyun Nahm
Sole Panelist
Dated: October 11, 2012
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