The Complainant is Hoffmann-La Roche Inc. of Nutley, New Jersey, United States of America.
The Respondent is Dronak Jan of Krakow, Poland. 2. The Domain Name and Registrar
The disputed domain name is registered with T, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 8, 2013. On January 8, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 9, 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 11, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 31, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 1, 2013.
The Center appointed Fabrizio La Spada as the sole panelist in this matter on February 13, 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 Respondent registered the disputed domain name on December 25, 2012. The disputed domain name, , contains the entire ACCUTANE mark of the Complainant.
The disputed domain name resolves to a website which provides information on the Accutane product and features a link to an online pharmacy, where Internet users can buy a product that is presented as a generic form of the Accutane product. 5. Parties’ Contentions A. Complainant
The Complainant contends 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.
The Complainant points out that the disputed domain name incorporates the Complainant’s trademark in its 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 term “review” is not capable to dispel the confusing similarity arising from the incorporation of the Complainant’s trademark into the disputed domain name. Furthermore, the Complainant states that the registration and use of the Complainant’s trademark predate the Respondent’s registration of the disputed domain name.
The Complainant further contends that it has exclusive rights in the ACCUTANE trademark and that no licence, permission, authorization or consent has been granted to the Respondent to use this trademark in the disputed domain name. According to the Complainant, it is obvious that the Respondent uses the disputed domain name for commercial gain and with the purpose of capitalizing on the fame of the Complainant’s trademark, as is evidenced by the fact that the disputed domain name is used to redirect Internet users to an on-line pharmacy offering generic Accutane.
The Complainant submits that the disputed domain name was registered in bad faith, as the Respondent certainly had knowledge of the Complainant’s well-known trademark at the time it registered the disputed domain name. The Complainant also contends that the disputed domain name is being used in bad faith, since the Respondent is intentionally attempting to attract Internet users to its website for commercial gain. According to the Complainant, the Respondent is intentionally misleading the consumers and confusing them by making them believe that the website behind the disputed domain name is associated or recommended by the Complainant. As a result, the Respondent is illegitimately capitalizing on the fame of the ACCUTANE trademark.
The Complainant requests the transfer of the disputed domain name. 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 the trademark ACCUTANE.
Concerning the second issue, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark. First, the disputed domain name incorporates the Complainant’s trademark in its 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 word “review” to the Complainant’s trademark in the disputed domain name is not sufficient to avoid a finding of confusing similarity. 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 name, for the following reasons.
First, there is no indication that the Respondent has used or prepared 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. The use that the Respondent makes of the disputed domain name (i.e., directing Internet users to an online pharmacy selling a product (a generic form of Accutane) that competes with the Complainant’s product) 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 trademark or register any domain name incorporating such trademark.
Third, the Respondent does not appear to be commonly known as “accutanereview” or by a similar name, and there is no indication on record that could justify rights and/or legitimate interests in the disputed domain name.
Fourth, the Respondent does not appear to make any legitimate use of the disputed domain name for noncommercial activities. On the contrary, the website to which the disputed domain name resolves is a commercial website, 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 name.
Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in respect of the disputed domain name.
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 trademark at the time it registered the disputed domain name. The ACCUTANE mark appears to have been in use since 1972, is not descriptive and has no other meaning than in connection with the Complainant’s mark and products. In addition, the website to which the disputed domain name resolves makes explicit references to the Complainant’s Accutane product. Furthermore, the website at the disputed domain name also features a link to an online pharmacy where a generic form of Accutane is sold. In addition, 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 name was registered and is 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 name, , be transferred to the Complainant.
Fabrizio La Spada
Sole Panelist
Date: March 15, 2013
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