The Complainant is Hoffmann-La Roche Inc. of Nutley, New Jersey, United States of America, represented internally.
The Respondent is Private Registration of Nanjing, Jiangsu, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Nanjing Imperiosus Technology Co. Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on February 14, 2013. On February 14, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 15, 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 18, 2013, the Center transmitted an email communication to the parties in both Chinese and English regarding language of the proceeding. On February 19, 2013, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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 26, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 18, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 19, 2013.
The Center appointed Chiang Ling Li as the sole panelist in this matter on March 25, 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’s mark ACCUTANE (the “Trademark”) has been registered as a trademark in various countries around the world, including the United States Patent and Trademark Office.
The disputed domain name (the “Domain Name”) was created on January 28, 2013. The Respondent did not submit any response to the Complaint. 5. Parties’ Contentions A. Complainant
(i) The language of the proceedings
The Complainant demonstrated that the Registrar’s Registration Agreement is entirely in English, and that the Domain Name’s website is also entirely in English. The Complainant also cited a previous UDRP case The Coca-Cola Company v. Private Registration,WIPO Case No. D2012-1414, in which the registrar was the same as the Registrar in the current case, and the complaint there was also submitted in English.
(ii) The Domain Name is confusingly similar to the Trademark
The Complainant submits that the Domain Name incorporates the Trademark in its entirety, and that the additional generic terms “buy”, “order”, “pills” and “online” do not sufficiently distinguish the Domain Name from the Trademark. It adds that the Complainant’s use and registration of the Trademark predates the Respondent’s registration of the Domain Name.
(iii) Respondent’s lack of rights or legitimate interests in the Domain Name
The Complainant submits that it has the exclusive rights to the Trademark and that it has not authorised the Respondent’s use to the Domain Name. It says that the Domain Name clearly alludes to the Complainant. The Complainant also argues that the Respondent has used the Domain Name for commercial gain with the purpose of capitalizing on the fame of the Trademark.
(iv) Domain Name was registered and is being used in bad faith
The Complainant says that the Domain Name was registered in bad faith because the Respondent undoubtedly had knowledge of the Trademark, which is well known. It further said that the Domain Name is being used in bad faith because the Respondent has attempted to attract Internet users to the Domain Name’s website by creating a likelihood of confusion as to the source, affiliation and endorsement of the Respondent’s products or services on its website, for a commercial purpose. The Complainant further alleges that the Respondent may generate unjustified revenues, and as such, is illegally capitalizing on the Trademark.
(v) Requested Remedy
The Complainant requests that the Domain Name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
(i) The language of the proceedings
The Panel notes different from the Complainant’s claim, the Registrar confirmed the Registration Agreement for the Domain Name is in Chinese. However, the Panel has considered the various circumstances in determining the language of the proceedings, including the fact that the website at the Domain Name is entirely in English, all email communications sent from the Center to the Parties are in both Chinese and English languages, the Respondent is default in this case, and the Complainant’s preferred language is English. In the spirit of fairness and justice to both Parties, the Panel has determined that the English language is the most appropriate for these proceedings.
(ii) The Domain Name is confusingly similar to the Trademark
The entire Trademark was incorporated in the Domain Name. The words “buy”, “order”, “pills” and “online” do not distinguish the Domain Name from the Trademark in the opinion of the Panel.
The Panel finds that the first element of the Policy has been met.
(iii) Respondent’s lack of rights or legitimate interests in the Domain Name
While the overall burden of proof rests with the complainant, the consensus view of UDRP panels is that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. See paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). In this case, the Complainant submits that it has the exclusive rights to the Trademark and that it has not authorized the Respondent’s use in the Domain Name. The Respondent has not responded to the allegations of the Complainant.
The Panel finds that the second element of the Policy has been met.
(iv) the Domain Name was registered and is being used in bad faith
The Respondent would have been aware of the Trademark and / or the Trademark products, prior to registration of the Domain Name as the Domain Name was used by the Respondent to establish a website that directs Internet users to an online pharmacy. Previous decisions have ruled that such an act constitutes registration and use in bad faith (see Pfizer Inc. v. jg a/k/a Josh Green,WIPO Case No. D2004-0784 and Pfizer Inc v. Juan Gonzales,WIPO Case No. D2004-0589).
The Panel is satisfied that the third element of the Policy has been met. 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.
Chiang Ling Li
Sole Panelist
Date: April 8, 2013
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