The Complainant is Hoffmann-La Roche Inc. of Nutley, New Jersey, United States of America, represented internally.
The Respondent is home, Konstantin Kovalevski of Kharkov, Ukraine. 2. The Domain Name and Registrar
The disputed domain name (“the 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 November 14, 2012. On November 14, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 20, 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 November 23, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 13, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 14, 2012.
The Center appointed Teruo Doi as the sole panelist in this matter on January 7, 2013. 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, with its affiliated companies, engaged in the 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 (Annex 3 to the Complaint), with the first use in 1982. Same as the Complainant, F. Hoffman-La Roche AG, Basel, Switzerland, is owned and controlled by Roche Holding AG, a company organized and doing business under the laws of Switzerland of Basel, Switzerland. Aforesaid F. Hoffmann-La Roche AG owns and uses the domain name .
ACCUTANE is an alternative Trademark (US version) for the trademark ROACCUTAN. The ROACCUTAN trademark is protected in a multitude of countries worldwide. As an example reference is made to the International Registration No. R450.092, a certificate of which is submitted in a copy as Annex 4 to the Complaint with priority date for the mark ROACCUTAN August 21, 1979.
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 printed advertisements in medical journals, promotional materials, packaging, medical informational materials, television advertising and direct mailings. The sales of the ACCUTANE products in the United States have exceeded hundreds of millions of dollars.
Furthermore, the Complainant’s use and registration of the mark ACCUTANE do predates the Respondent’s registration of the disputed domain name on November 2, 2012. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name incorporates the Complainant’s trademark ACCUTANE in its entirety, and the Complainant’s use and registration of its trademark ACCUTANE predate the Respondent’s registration of the disputed domain name. Hence, the Respondent’s domain name is confusingly similar to the Complainant’s trademark ACCUTANE.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has not granted the Respondent any permission to use the Complainant’s mark in the disputed domain name, which is used for an on-line pharmacy.
The Respondent’s use of the disputed domain name is for commercial gain by misappropriating the goodwill associated with the Complainant’s mark ACCUTANE.
The Respondent by using the disputed domain name is intentionally misleading consumers and confusing them by making them believe that the websites behind those links are associated or recommended by the Complainant.
Accordingly, the Complainant requests the Administrative Panel appointed in this administrative proceeding issue a decision that the disputed domain name be transferred to the Complainant. 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 is required to prove that each of the following elements exists in seeking the transfer of the disputed domain name:
(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;
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The disputed domain name incorporates the Complainant’s trademark ACCUTANE in its entirety and, according to Hoffmann-La Roche Inc. v. Hightech Industries, Andrew Browne,WIPO Case No. D2010-0240 “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”.
And, according to Lilly ICOS LLC v.JohnHopking / Neo net Ltd.,WIPO Case No. D2005-0694 “generally, a user of a mark may not avoid likely confusion in appropriating another’s entire mark and adding descriptive or non-distinctive matter to it.” The additional words “buy” and “USA” added to Complainant’s mark, may suggest that Respondent’s websites are locations where a consumer may buy (ACCUTANE) brand product”.
In view of the distinctive quality of the mark ACCUTANE, the addition of these descriptive or non-distinctive words before or after the word “Accutane” does not affect the Panel’s finding that the disputed domain name is identical or confusingly similar to the Complainant’s registered trademark ACCUTANE. B. Rights or Legitimate Interests
The Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, which the Respondent has not rebutted.
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, the Panel finds the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
In view of the distinctive quality possessed by the mark ACCUTANE which is the Complainant’s well-known trademark, the Respondent’s registration of a domain name consisting of this word combined with a set of descriptive words is a clear indication of the Respondent’s bad faith. The disputed domain name is misleading consumers who access the Respondent's website by confusing them that the websites behind the links may be associated or recommended by the Complainant for commercial gain. The Panel thus finds the Respondent registered and is using the disputed domain name in bad faith.
The Panel notes that the Respondent has failed to respond to the Complainant within the stipulated time, and, as such, does not contest the facts asserted by the Complainant in the Complaint. 7. Decision
For the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the disputed domain name, , be transferred to the Complainant.
Teruo Doi
Sole Panelist
Date: February 5, 2013
Full & Egal Universal Law Academy