The Complainant is Hoffmann-La Roche Inc. of Nutley, United States of America (“US”), represented internally.
The Respondent is N/A, Privacy Protection of Moscow, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name is registered with CJSC Registrar R01 (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 28, 2013. On January 28, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 29, 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.
On February 7, 2013, the Center transmitted the language of the proceedings document to the parties in both English and Russian. On February 7, 2013, the Complainant confirmed its request English to be the language of the proceedings, as expressed in the Complaint. The Respondent did not submit any comments.
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 February 13, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 5, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 6, 2013.
The Center appointed Assen Alexiev as the sole panelist in this matter on March 14, 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.
In respect of the language of the proceedings, the Panel notes the following. According to the information provided by the Registrar, the language of the registration agreement for the disputed domain name is Russian. Under paragraph 11 of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding. The Center has provided both parties with an opportunity to comment on this issue by sending them an invitation both in English and Russian languages. The Complainant has submitted a request that English be the language of the proceedings, pointing out that the website associated to the disputed domain name is entirely in the English language. The Respondent has not submitted any comments on the Complainant’s request, although the invitation by Center clearly stated that the lack of comments by the Respondent will be regarded as consent the proceeding to be held in the English language. In this situation, the Panel accepts that the Respondent does not deny the arguments of the Complainant on this issue and agrees the proceedings to be held in English, and that doing so will be fair and efficient and will not put either of the parties at a disadvantage. Therefore, in exercise of its powers under paragraphs 10 and 11 of the Rules, the Panel decides that the language of this administrative proceeding will be English. At the same time, the Panel will accept and consider all evidence available in the case file and submitted by the Parties in either English or Russian languages. 4. Factual Background
The Complainant is a member of the Roche group - one of the world’s leading research focused healthcare groups, which is engaged in the research and development of pharmaceutical and diagnostic products and has global operations in more than 100 countries.
The Complainant is the owner of the word trademark ACCUTANE with registration no. 0966924, registered in the United States of America on August 28, 1973 for goods in International Class 05.
The Complainant has used for a long period of time the ACCUTANE trademark for a dermatological preparation for the treatment and prevention of acne. The total sales of this product in the United States of America have exceeded hundreds of millions of US Dollars. 5. Parties’ Contentions A. Complainant
The Complainant submits that the disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights, because the disputed domain name incorporates the Complainant’s ACCUTANE trademark in its entirety. The addition of descriptive or non-distinctive elements to the disputed domain name does not avoid the confusing similarity. Rather, the words “buy” and “online” may suggest that the Respondent’s website is a location where a consumer may buy the official ACCUTANE product of the Complainant.
According to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has exclusive rights for ACCUTANE, and no license, permission, authorization or consent has been granted to the Respondent to use ACCUTANE in the disputed domain name. The Respondent uses the disputed domain name for commercial gain and with the purpose to capitalize on the fame of the Complainant’s ACCUTANE trademark. The Respondent’s website is an online pharmacy offering generic Accutane, and no good faith can be assumed in the Respondent’s conduct, where the disputed domain name is confusingly similar to the Complainant’s trademark and is used in connection with the promotion and sale of competing products.
The Complainant contends that the disputed domain name was registered and is being used in bad faith. At the time of its registration, the Respondent had knowledge of the Complainant’s ACCUTANE trademark. By using the disputed domain name, the Respondent is intentionally misleading the consumers and confusing them by making them believe that the website at the disputed domain name is associated or recommended by the Complainant. The content of this website shows that the Respondent is using the disputed domain name as a forwarding address to an online pharmacy with the purpose to promote and sell, for commercial gain, pharmaceutical products that directly compete with the Complainant’s official product. These circumstances show that the Respondent is intentionally and for a commercial purpose attempting to attract Internet users to this website by creating a likelihood of confusion with the Complainant’s ACCUTANE trademark as to the source, affiliation and endorsement of the Respondent’s website.
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
Pursuant to Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:
(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 Respondent has registered and is using the disputed domain name in bad faith.
By Rules, paragraph 5(b)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…”
In this case, the Center has employed the required means to achieve actual notice of the Complaint to the Respondent, in compliance with Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.
In this administrative proceeding, the Respondent chose not to submit a formal Response. This conduct of the Respondent leads the Panel to conclude that it has no arguments or evidence to rebut the assertions of the Complainant. The Panel has to take his decision on the basis of the statements and documents before it and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable. A. Identical or Confusingly Similar
The Complainant has provided evidence and has thus established its rights in the ACCUTANE trademark, registered for the territory of the United States of America.
It is a common practice under the Policy to disregard the generic top-level domains (gTLD) such as the “.net” for the purposes of the comparison under the Policy, paragraph 4(a)(i). Therefore, the relevant part of the disputed domain name is its “buyaccutane-online” section. This section has three easily recognizable elements - “buy”, “accutane” and “online”. The “accutane” element is identical to the Complainant’s ACCUTANE trademark, which has been established on the market through extensive sales in the course of several decades. As the other two elements “buy” and “online” are clearly descriptive of Internet commerce, it can be expected that Internet users are likely to recognize the “accutane” element in the disputed domain name and associate it to the Complainant’s trademark, and the combination of the three elements can easily be considered as signifying an online pharmacy selling the ACCUTANE product of the Complainant.
For these reasons, the Panel finds that the disputed domain name is confusingly similar to the ACCUTANE trademark in which the Complainant has rights. B. Rights or Legitimate Interests
The Complainant claims that the Respondent has no rights or legitimate interests in the disputed domain name, and provides certain arguments and evidence in this regard. Thus, the Complainant establishes a prima facie case under Policy, paragraph 4(a)(ii).
It is well established that once a complainant makes out a prima facie case that the respondent has no rights or legitimate interests in a domain name, the burden shifts to the respondent to rebut the showing by providing evidence to the contrary.
In the present case, the Respondent has chosen not to present to the Panel any allegations or documents in its defense despite the instructions under the Rules, paragraph 5(b)(i) and 5(b)(ix), or the consequences that a Panel may extract from the fact of a default (Rules, paragraph 14). If the Respondent had any justification for registering or using the disputed domain name, it could have provided it. In particular, the Respondent has not contended that any of the circumstances described in Policy, paragraph 4(c) - or any other circumstance - is present in its favor.
The WhoIs information about the Respondent provided by the Registrar does not contain any evidence of rights or legitimate interests of the Respondent in respect of the disputed domain name.
At the same time, the disputed domain name is confusingly similar to the ACCUTANE trademark of the Complainant. The Respondent does not deny the contentions of the Complainant, does not claim having rights or legitimate interests in respect of this disputed domain name, and does not provide any explanation whatsoever for its registration and use.
At the same time, as alleged by the Complainant, the Respondent has used the disputed domain name to link it to the website of an online pharmacy which offers a so-called “Generic Accutane” - a product that clearly competes with the product of the Complainant. The website contains information about the pharmaceutical properties of this product and mentions that “Accutane® is manufactured by Roche Laboratories.”
The above satisfies the Panel that the Respondent is well aware of the goodwill of the Complainant and of its ACCUTANE trademark, and that the appreciation of this goodwill has motivated the Respondent to choose to register the disputed domain name and to link it to the described commercial website in an attempt to attract more customers to this website and to increase the sales made through it.
In the Panel’s view, such conduct could not be regarded as a bona fide activity that gives rise to rights and legitimate interests of the Respondent in the disputed domain name. Therefore, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name within the meaning of the Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith
For the purposes of Policy, 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 holder has registered or 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 the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder 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 holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s 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 your website or location or of a product or service on the holder’s website or location.
In the present case, the disputed domain name is confusingly similar to the Complainant’s ACCUTANE trademark, and the Respondent is found to have registered it without having rights and legitimate interests in it, while at the same time being positively aware of the Complainant and of its goodwill. Having registered the disputed domain name, the Respondent has used it to link it to a website which offers products that compete with those of the Complainant.
Taking all the above into account, the Panel is prepared to accept that the Respondent has registered and used it in bad faith primarily in an attempt to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s ACCUTANE trademark as to the source or endorsement of the Respondent’s website and of the goods offered on the Respondent’s website. 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.
Assen Alexiev
Sole Panelist
Date: March 28, 2013
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