The Complainant is Hoffmann-La Roche Inc., Nutley, New Jersey, United States of America, internally represented.
The Respondent is Krontak Ladik, Koroleva, Kiev, AE, Ukraine. 2. The Domain Name and Registrar
The disputed domain names and are registered with Moniker Online Services, LLC 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 7, 2013. On January 7, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 16, 2013, 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 January 18, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 7, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 12, 2013.
The Center appointed Fabrizio La Spada as the sole panelist in this matter on February 19, 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 the owner of the trademark ACCUTANE registered in the United States Patent and Trademark Office on August 28, 1973 and renewed on June 29, 1993 (Registration Number 966,924). This trademark is registered for a “dermatological preparation”. It has been used since 1972 in connection with the sale of a product indicated for the treatment and prevention of acne.
The Complainant is also the owner of the trademark XENICAL, registered in the United States Patent and Trademark Office on July 18, 1995 (Registration Number 1,906,281). This trademark is registered for a “pharmaceutical preparation for weight reduction and long-term management of weight”. The trademark XENICAL is also registered, in the name of the Swiss company F. Hoffmann-La Roche AG, in numerous countries, including Ukraine.
The Respondent registered the disputed domain names on December 13, 2012.
At the time the Complaint was filed, both disputed domain names resolved to websites providing information on the Accutane product (for the disputed domain name ) and on the Xenical product (for the disputed domain name ) and featuring links to online pharmacies, where Internet users could buy products presented as generic forms of the Accutane and Xenical products. 5. Parties’ Contentions A. Complainant
The Complainant contends that it is a member of the Roche Group (which also includes the Swiss company F. Hoffmann-La Roche AG), one of the world’s leading research pharmaceutical research-focused healthcare groups having global operations in more than 100 countries.
The Complainant states that the trademark ACCUTANE designates a dermatological preparation in the form of a product indicated for the treatment and prevention of acne and has been extensively promoted for many years in the form of advertisements in medical journals, promotional materials, packaging, medical information materials, television advertising and direct mailings. It further states that the trademark XENICAL designates an oral prescription weight loss medication used to help obese people lose weight.
The Complainant points out that both disputed domain names incorporate the Complainant’s trademarks in their entirety and submits that, according to UDRP precedents, the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to a complainant’s registered mark. The Complainant further contends that the addition of a generic or descriptive term to a trademark in a domain name is normally insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP. As a consequence, the mere addition of the generic terms “20mg” (in the disputed domain name ) and “1” and “120mg” (in the disputed domain name ) is not capable to dispel the confusing similarity arising from the incorporation of the Complainant’s trademarks into the disputed domain names. Furthermore, the Complainant states that the registration and use of the Complainant’s trademarks predate the Respondent’s registration of the disputed domain names.
The Complainant further contends that it has exclusive rights in the ACCUTANE and XENICAL trademarks and that no licence, permission, authorization or consent has been granted to the Respondent to use these trademarks in the disputed domain names. According to the Complainant, it is obvious that the Respondent uses the disputed domain names for commercial gain and with the purpose of capitalizing on the fame of the Complainant’s trademarks, as is evidenced by the fact that the disputed domain names are used to redirect Internet users to on-line pharmacies offering generic Accutane and generic Xenical.
The Complainant submits that the disputed domain names were registered in bad faith, as the Respondent certainly had knowledge of the Complainant’s well-known trademarks at the time it registered the disputed domain names. The Complainant also contends that the disputed domain names are being used in bad faith, since the Respondent is intentionally attempting to attract Internet users to its websites for commercial gain. According to the Complainant, the Respondent is intentionally misleading the consumers and confusing them by making them believe that the websites behind the disputed domain names are associated or recommended by the Complainant. As a result, the Respondent is illegitimately capitalizing on the fame of the ACCUTANE and XENICAL trademarks.
The Complainant requests the transfer of the disputed domain names. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in these proceedings and obtain the transfer of the disputed domain name, the Complainant must prove that each of the three following elements is satisfied:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section A); and
(ii) The Respondent has no rights or legitimate interests in respect of the domain name (see below, section B); and
(iii) The domain name has been registered and is being used in bad faith (see below, section C). A. Identical or Confusingly Similar
This question raises two issues: (1) does the Complainant have rights in a trademark or service mark; and (2) is the domain name identical or confusingly similar to such trademark or service mark.
As regards the first issue, the Complainant has provided documentary evidence that it is the owner of registered trademarks for the terms ACCUTANE and XENICAL.
Concerning the second issue, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s registered trademarks. First, the Respondent’s domain names incorporate the Complainant’s trademarks in their entirety. According to previous UDRP decisions, “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” (see, e.g., AT&T Corp. v. William Gormally,WIPO Case No. D2005-0758; Quixtar Investments, Inc. v. Dennis Hoffmann,WIPO Case No. D2000-0253). In the Panel’s view, the addition of the words “20mg” (in the disputed domain name ) and “1” and “120mg” (in the disputed domain name ) to the Complainant’s trademarks in the disputed domain names is not sufficient to avoid a finding of confusing similarity. The Panel notes that the terms “20mg” and “120mg” refer to the prescribed doses of the Acutane and Xenical drugs and therefore, in the Panel’s view, must be deemed to be descriptive terms. It is widely admitted that the addition of a generic or descriptive term to a mark, as the Panel finds is the case in this matter, will not alter the fact that the domain name at issue is confusingly similar to the mark in question (see e.g., Terex Corporation v. Texas International Property Associates – NA NA,WIPO Case No. D2008-0733; Billabong International Limited, GSM (Operations) Pty Ltd, GSM (Trademarks) Pty Ltd, GSM (Europe) Pty Ltd, GSM (NZ Operations) Ltd v. Mookie Lei,WIPO Case No. D2008-0101).
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
“(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
In the present case, the Respondent has not filed a response to the Complaint. However, based on the evidence on record, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain names, for the following reasons.
First, there is no indication that the Respondent has used or prepared to use the disputed domain names or names corresponding to the disputed domain names in connection with a bona fide offering of goods or services. The use that the Respondent makes of the disputed domain names (i.e., directing Internet users to on-line pharmacies selling products that compete with the Complainant’s Accutane and Xenical products) cannot be considered to be a bona fide offering of goods or services (see, e.g., Rolex Watch U.S.A., Inc. v. Vadim Krivitsky,WIPO Case No. D2008-0396).
Second, the Respondent has no connection or affiliation with the Complainant, which has not licensed or otherwise authorized the Respondent to use the ACCUTANE and/or the XENICAL trademarks or register any domain name incorporating such trademarks.
Third, the Respondent does not appear to be commonly known as “20mgaccutane”, “1xenical120mg” or any other similar name, and there is no indication on record that could justify rights and/or legitimate interest in the disputed domain names.
Fourth, the Respondent does not appear to make any legitimate use of the disputed domain name for non-commercial activities. On the contrary, the websites to which the disputed domain names resolve are commercial websites, used to sell products.
Finally, there are no other elements on record, nor explanations by the Respondent (which did not file a response in the course of these proceedings), indicating that the Respondent would have rights or legitimate interests in respect of the disputed domain names.
Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in respect of the disputed domain names.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith. In particular, paragraph 4(b)(iv) provides as an instance of registration and use in bad faith, circumstances indicating that:
“(iv) by using the domain name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The Panel is satisfied that these circumstances are fulfilled in this case. The Panel finds that the Respondent must have known the existence of the Complainant’s trademarks at the time it registered the disputed domain names. The ACCUTANE and XENICAL marks appear to have been in use for about forty years before registration of the disputed domain names, are not descriptive and have no other meaning than in connection with the Complainant’s marks and products. In addition, the websites to which the disputed domain names resolve make explicit references to the Complainant’s ACCUTANE and XENICAL products. Furthermore, it is well established that using a domain name which incorporates a trademark to offer the products of competitors of the trademark owner is likely to cause confusion among Internet users as to the source of products or to confusingly suggest sponsorship by the trademark owner (see, e.g., Six Continent Hotels, Inc. v. The Omnicorp,WIPO Case No. D2005-1249).
Therefore, the Panel finds that the disputed domain names were registered and are being used in bad faith.
Accordingly, the Panel finds that the Complainant has satisfied 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 disputed domain names, and be transferred to the Complainant.
Fabrizio La Spada
Sole Panelist
Date: March 20, 2013
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