The Complainant is Hoffmann-La Roche Inc. of Basel, Switzerland, represented internally.
The Respondent is Alex Rino of Moscow, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name is registered with Moniker Online Services, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 23, 2012. On August 23, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 24, 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 30, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 19, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 25, 2012.
The Center appointed Marie-Emmanuelle Haas as the sole panelist in this matter on October 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.
The language supported by the Registrar is English. The Complainant submitted the Complaint in English and requested English to be the language of the proceeding.
Therefore, the language of the proceeding is English, pursuant to the Rules, paragraph 11. 4. Factual Background
The Complainant, together with its affiliate companies, is one of the world’s leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics with operations in more than 100 countries.
The Complainant asserts that it registered a United States of America (“US”) trademark ACCUTANE, No. 966924, on August 28, 1973. The first use dated from 1982.
ACCUTANE is the US version for the ROACCUTAN trademark, protected in a multitude of countries worldwide. As an example reference is made to the International Registration No R450092. Priority date for the mark ROACCUTAN is August 21, 1979.
Otherwise, F. Hoffman-La Roche AG, the parent company of the Complainant, owns and uses the domain name .
The disputed domain name was registered on August 13, 2012. It resolves to a website, on top of which is the following statement: “Buy Accutane Online. Accutane FAQ & Answers”.
On the said website, one can read words such as “buy Accutane online”, “low cost Accutane”, “sold”, “Go to store”, “Delivery”, or click on links to “buy accutane online without prescription”, prices (for example “$1.56 per pill”) and logos of financial institutions such as MasterCard, WesternUnion, etc.. 5. Parties’ Contentions A. Complainant
The Complainant contends the following. A.1. The disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights
The disputed domain name incorporates in its entirety the Complainant’s trademark ACCUTANE.
The Complainant relies upon the decision in Hoffmann-La Roche Inc. v. Hightech Industries, Andrew Browne, WIPO Case No. D2010-0240, to affirm that “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 Complainant also argue that the generic words “buy” and “cheap” are non distinctive. Then, adding these words to the Complainant’s mark ACCUTANE does not prevent the confusing similarity of the disputed domain name with the Complainant’s trademark. A.2. The Respondent has no rights or legitimate interests in respect of the disputed domain name
The Complainant refers to Policy, paragraphs 4(a)(ii); Rules, paragraph 3(b)(ix)(2) to assert that the Respondent has no rights in respect of the disputed domain name.
The Complainant has exclusive rights for ACCUTANE trademark, and did not consent any license, permission or authorization to use ACCUTANE in the domain name.
The disputed domain name leads to a website titled “Buy Accutane Online. Accutante FAQ & Answers” and “Welcome to low cost accutane”, the Complainant states that Internet users may think that it is just an “Accutane FAQ & Answers”, whereas many links as “buy accutane online without prescription” appears on the homepage of the corresponding website.
Despite the “buy accutane online without prescription” link, or even the display of prices (for example “$1.56 per pill”), there is actually no possibility to buy ACCUTANE products on the Respondent’s website.
Referring to the Red Bull Gmbh v. Mohd Atif,WIPO Case No. D2012-0722, the Complainant asserts that this website cannot be regarded as a legitimate noncommercial site. A.3. The disputed domain name was registered and is being used in bad faith
The Complainant refers to Policy, paragraphs 4(a)(iii); Rules, Paragraph 3(b)(ix)(3) to assert that the disputed domain name was registered and is being used in bad faith.
The Complainant argues that ACCUTANE trademark appears to have been in use for nearly forty years in connection with the sale of voluminous quantities of the ACCUTANE products.
The Complainant also asserts that it is not plausible that the Respondent would have registered a domain name incorporating the trademark without knowledge of it, while ACCUTANE is not descriptive of anything and has no other meaning than in connection with the Complainant’s trademark.
For these reasons, the Complainant asserts that the disputed domain name has been registered in bad faith.
The Complainant also asserts that the disputed domain name is used in bad faith. Actually, the Respondent clearly wants to attract Internet users to its 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 or services posted on or linked to the Respondent’s website.
The Complainant, by using the disputed domain name, is intentionally misleading the consumers and confusing them by making them believe that the website behind those links are associated or recommended by the Complainant.
As a result, the Respondent may generate unjustified revenues and therefore is illegitimately capitalizing on the ACCUTANE trademark’s fame. 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 in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
In view of the Respondent’s failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences as it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a) of the Policy requires that the Complainant proves 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 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 was registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has clearly established prior rights in the registered trademark ROACCUTAN by appending evidence of three national registrations. The trademark ROACCUTAN is registered for products in International Class 5 (namely “pharmaceutical, veterinary and sanitary preparations and substances”) and is used to designate a product for treating acne.
The Complainant also asserts rights to the ACCUTANE trademark, which it alleges has been used in the United States since 1982. It provides a few articles published on the Internet demonstrating that the ACCUTANE trademark has been used in the United States by the different Roche companies since at least 1982.
The disputed domain name incorporates in its entirety the Complainant’s trademark ACCUTANE and merely adds the descriptive terms “buy” and “cheap”. The use of such descriptive words generally does not affect confusing similarity (see e.g. F. Hoffmann-La Roche AG v. Alexandr Ulyanov, Private Person,WIPO Case No. D2009-1590; F. Hoffman-La Roche AG v. Whois Protected,WIPO Case No. D2009-1569; F.Hoffman-La Roche AG v. PrivacyP, Domain Admin and Mark Sergijenko,WIPO Case No. D2007-1854; Aventis, Aventis Pharma SA v. VASHA Dukes,WIPO Case No. D2004-0276 holding that a domain name is confusingly similar to a trademark where a common descriptive term has been added to the trademark as part of the domain name).
It has already been found in Hoffman La Roche Inc. v. ML, Matt Leavsi / WhoisGuard, WIPO Case No. D2012-0587, that the words “buy” and “cheap” included in the domain name are non distinctive words, and does not prevent the confusing similarity between the disputed domain name and the ACCUTANE trademark.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. The condition of the paragraph 4(a)(i) of the Policy has been satisfied. B. Rights or Legitimate Interests
As set forth by paragraph 4(c) of the Policy, 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 the Respondent’s rights or legitimate interests to the disputed domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent did not submit a Response to the Panel in this proceeding and has not provided any evidence or circumstances required to establish that it has rights or legitimate interests in the disputed domain name, according to paragraph 4(c) of the Policy.
The Panel further notes that the Complainant’s trademark ACCUTANE predates the Respondent’s registration of the disputed domain name.
Furthermore, the Respondent has no connection or affiliation with the Complainant, and the latter asserts it has not consented to the Respondent’s use of the trademark in the disputed domain name.
Accordingly, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out examples of circumstances that will be considered by the Panel to be evidence of the bad faith registration and use of the disputed domain name. It provides that: “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 the Respondent has registered or the Respondent has 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) the Respondent has 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 the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on your website or location.”
In the Panel’s view, the Respondent must have been aware of the Complainant’s rights in the trademarks ACCUTANE and ROACCUTAN when registering the disputed domain name.
The Panel finds that the disputed domain name was registered intentionally to misdirect customers looking for the Complainant’s website relating to ACCUTANE. This constitutes bad faith registration.
The Complainant’s evidence shows that the disputed domain name resolves to a website presenting many links on its homepage, as well as “buy accutane online without prescription” link, whereas it only leads to an “Accutane FAQ & Answers”.
It clearly shows that the Respondent is intentionally using the disputed domain name to misleadingly divert customers to its website by making them believe that the Complainant recommended it.
As a result, the Respondent is intentionally creating a likelihood of confusion for Internet users in order to obtain commercial gain.
This constitutes bad faith use within the meaning of paragraph 4(b)(iv) of the Policy.
In this Panel’s view, even if the website is currently not offering the Accutane product for sale, given the meaning of the disputed domain name, it might change in the future. Such a situation would expose to the risk that fake Accutane products would be available to the public or that the public would be able to purchase Accutane products online without prescription.
Prior UDRP decisions ordered the transfer of a disputed domain name in such circumstances. The Panel finds support in Pfizer Inc. v. jg a/k/a Josh Green,WIPO Case No. D2004-0784, in which it was held that bad faith is established when “[r]espondent is using the domain names as a forwarding address to a for-profit on-line pharmacy”, and Aventis, Aventis Pharma SA v. VASHA Dukes,WIPO Case No. D2004-0276 (), in which it is held that “to a certain extent, the Respondent is encouraging consumers to enter into an irresponsible pattern of conduct in the purchase of drugs and even to self-medication in respect to those that need prescription” and thus finding that the respondent’s sale of the complainant’s pharmaceuticals without prescription using the complainant’s trademark as its domain name may “lessen the reputation associated with the Complainant’s trademarks”.
The Panel finds that the Complainant has also established the finding of bad faith registration and use within the meaning of paragraph 4(a)(iii) 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 domain name be transferred to the Complainant.
Marie-Emmanuelle Haas
Sole Panelist
Dated: October 17, 2012
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