The Complainant is Hoffmann-La Roche Inc. of Nutley, New Jersey, United States of America (“US”), represented internally.
The Respondent is Dmytro Pereverziev of Kyiv, Ukraine. 2. The Domain Name and Registrar
The disputed domain name is registered with FastDomain, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 24, 2012. On September 24, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 25, 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 October 1, 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 October 1, 2012.
On October 2, 2012, the Complainant requested a suspension of the proceeding to seek a possible settlement with the Respondent. On October 2, 2012, the Center notified the suspension of the proceeding until November 1, 2012. On October 18, 2012, the Center received two informal email communications from the Respondent. On October 19, 2012, the Complainant requested the reinstitution of the proceeding. The Center reinstituted the administrative proceeding on October 19, 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 October 26, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 15, 2012. The Respondent did not submit any formal response. Accordingly, the Center notified about the Parties of the commencement of panel appointment process on November 16, 2012.
The Center appointed Clive Duncan Thorne as the sole panelist in this matter on November 27, 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
In the absence of a Response, the facts which the Panel relies upon which it accepts as true are set out in the Complaint as amended to reflect the Respondent as Dmytro Pereverziev rather than the original Respondent, Domain Privacy Service. This is pursuant to the amendment filed by the Complainant on October 1, 2012.
According to the Complainant it is, together with its affiliated companies engaged in research and the development of pharmaceutical and diagnostic products. It is a member of the Roche Group, one of the worlds leading research-focused healthcare groups and having global operations in more than 100 countries. The Complainant is the registered owner of the mark ACCUTANE which is registered at the US Trademark Office as of August 28, 1973 under registration number 966924, a first use date in 1972. A copy of the certificate of registration is exhibited at Annex 3 to the Complaint. A group company, F Hoffmann-La Roche AG, based in Basel Switzerland is owned and controlled by Roche Holding AG, another company organized and doing business under the laws of Switzerland. F. Hoffmann-La Roche AG owns and uses the domain name . According to the Complainant, ACCUTANE is an alternative trademark (US version) for the trademark ROACCUTAN. The mark ROACCUTAN is protected in a multitude of countries worldwide. As an example, reference is made to the Madrid Protocol International registration number R450092, a certificate which is exhibited as Annex 4 to the Complaint. The priority date for this mark is August 21, 1979.
The mark ACCUTANE is used to designate a dermatological preparation in the form of a product indicating 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. Sales of Accutane in the United States have exceeded hundreds of millions of dollars.
The Complaint has exclusive rights for ACCUTANE and no licence, permission, authorization or consent has been granted to third parties to use the mark ACCUTANE as a domain name.
It can be seen at Annex 8 to the Complaint that the Respondent's domain name is used to offer Accutane as well as other drugs. Upon clicking on "Accutane 10 Roche", Internet users are redirected to a pharmacy online at ””, where "generic Accutane (Isotretinoin)" is offered.
The history of the administrative proceeding includes some email correspondence between the Complainant and the Respondent, including an email dated October 2, 2012 from which it appears that the Respondent offered to transfer the disputed domain name to the Complainant. On October 11, 2012, after these proceedings had been suspended, he indicated that "I can't unlock domain and need 31 days to be able to transfer it". In the event, no further action appears to have been taken by the Respondent to settle the dispute and the current Complaint was proceeded with. 5. Parties’ Contentions A. The Complainant
1. The Complainant submits that the domain name is confusingly similar to a trademark in which it has rights. It refers to its US registration of the mark ACCUTANE and that the disputed domain name incorporates the trademark ACCUTANE in its entirety.
2. The Respondent has no rights or legitimate interests in respect of the domain name. The Complainant relies upon the fact that the Complainant has exclusive rights for ACCUTANE and that these have not been licensed to the Respondent. There is no other evidence which entitles the Respondent to use the mark ACCUTANE within the disputed domain name.
3. The domain name is registered and is being used in bad faith. The Complainant relies upon the Respondent's website at Annex 8 to the Complaint as evidence that the Respondent is intentionally attempting (for commercial purposes) to attract Internet users to the Respondent's website and that this creates a likelihood of confusion with the Complainant's well-known mark as to the source, affiliation endorsement of the Respondent's website. B. The Respondent
The Respondent did not formally reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel is satisfied, based upon the evidence set out above, that the Complainant has rights in the trademark ACCUTANE.
The Panel also finds that the disputed domain name is confusingly similar to the trademark ACCUTANE. Its reasons for finding this is that the mark ACCUTANE is used in its entirety but qualified by the remainder of the domain name which is a reference to buying online. The Panel agrees with the Complainant's submission that the phrase, "shop" is a "descriptive addition" and that the addition of the generic words "online" and "shop" does not remove the confusing similarity between the disputed domain name and the trademark in question.
The Panel also notes that the Complainant's use of the registration of the mark ACCUTANE predates the Respondent's registration of the disputed domain name. B. Rights or Legitimate Interests
In the absence of any evidence entitling the Respondent to use the mark ACCUTANE and the fact that the Complainant has exclusive rights to use the mark ACCUTANE and has made out a prima facie case under this element, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. There is no evidence whatsoever to support a finding to the contrary. C. Registered and Used in Bad Faith
The Complainant asserts that the disputed domain name was registered in bad faith since at the date of the registration on December 13, 2012 the Respondent "no doubt" had knowledge of the Complainant's well- known product and mark ACCUTANE. In the absence of any evidence to the contrary, the Panel accepts this submission. The evidence adduced by the Complainant demonstrates that the Complainant had promoted and sold the Accutane product for very many years worldwide. Also that the mark ACCUTANE has been widely used for the purposes of promoting the product.
The Complainant submits that the disputed domain name is being used in bad faith and that this is shown by the use of the domain name by the Respondent as set out in Annex 8 to the Complaint. The Panel, in the absence of any evidence to the contrary accepts this submission and that the Respondent is intentionally attempting, for commercial purposes, to attract Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's well-known mark, ACCUTANE, as to the source, affiliation endorsement of the Respondent's website. In the Panel's view, the disputed domain name is misleading consumers who access the Respondent's website by misleading them and confusing them that the websites behind the links are associated or recommended by the Complainant.
The Panel thus finds 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.
Clive Duncan Thorne
Sole Panelist
Date: December 11, 2012
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