Complainant is Hoffmann-La Roche Inc. of New Jersey, United States of America (the “USA”), represented by F. Hoffmann-La Roche AG, Switzerland.
Respondent is Zurab Polin, N/A of Fort Lauderdale, Florida, USA. 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 March 4, 2013. On March 4, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 5, 2013, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on March 6, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 26, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 2, 2013.
The Center appointed Steven L. Snyder as the sole panelist in this matter on April 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
Respondent Zurab Polin is ostensibly based in Fort Lauderdale, Florida, USA. He registered the disputed domain name , on February 16, 2013, right before the Spring Break visitors crowded the beaches. He then linked the disputed domain name to a webpage that advertises medications that are seemingly aimed at opposite ends of the age spectrum: Accutane, to reduce acne, and Cialis and Levitra, to increase erections.
Complainant is based in Nutley, New Jersey, USA. The company markets ACCUTANE, a medication designed to fight acne. It has been engaged in this never-ending and profitable battle since 1972. 5. Parties’ Contentions A. Complainant
Three arguments are set forth in the Complaint.
1) The disputed domain name is confusingly similar to the ACCUTANE mark, in which Complainant has rights:
- On August 28, 1973, the United States Patent and Trademark Office (“USPTO”) registered the mark ACCUTANE to Complainant in connection with a “dermatological preparation.” See USPTO reg. no. 0966924.
- The dermatological preparation is for the treatment and prevention of acne.
- Complainant has used the mark in commerce: “This mark was extensively promoted for many years in print advertisements in medical journals, […] television advertising and direct mailings. The sales of the ACCUTANE product in the USA have exceeded hundreds of millions of dollars.”
- The confusion between the disputed domain name and Complainant’s trademark is not lessened or dispelled by the additions of the word “buy” and the letters “ln” to the ACCUTANE mark.
- Complainant’s use and registration of the ACCUTANE mark predate Respondent’s registration of the disputed domain name.
2) Respondent has no rights or legitimate interests in the disputed domain name :
- Complainant has exclusive rights for ACCUTANE and has not granted permission to use the mark in the disputed domain name.
- Respondent uses the domain name “for commercial gain and with the purpose of capitalizing on the fame of Complainant’s mark ACCUTANE.”
- Respondent uses the disputed domain name to “direct Internet users to a website offering to “Buy Accutane.” It redirects Internet users to two pharmacies on-line,” one which explicitly offers a generic version of ACCUTANE.
3) The disputed domain name was registered and is being used in bad faith:
- The disputed domain name was registered on February 16, 2013; at this time Respondent was undoubtedly aware of Complainant’s “well-known product/mark ACCUTANE.”
- “Respondent is intentionally attempting (for commercial purpose) to attract Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s well-known mark as to the source, affiliation and endorsement of Respondent’s website.”
- Bad faith is shown by the fact that Respondent has used a domain name that is confusing similar to Complainant’s trademark “in connection with the promotion and sale of competing products.”
- Respondent “may generate unjustified revenues and therefore is illegitimately capitalizing on the ACCUTANE trademark fame.”
Based on these three arguments, Complainant requests that the disputed domain name be transferred to its ownership. B. Respondent
Respondent did not reply to Complainant’s contentions; 6. Discussion and Findings
To wrest the ownership of a domain name away from a respondent, a complainant must prove three facts. First, that the “domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.” Policy, paragraph 4(a)(i). Second, that the registrant has “no rights or legitimate interests in respect of the domain name.” Paragraph 4(a)(ii). Third, that the disputed “domain name has been registered and is being used in bad faith.” Paragraph 4(a)(iii).
Complainant has proven all three elements. A. Identical or Confusingly Similar
It is evident that the disputed domain name is confusingly similar to Complainant’s well-known mark, ACCUTANE. Indeed, if it were not confusingly similar there would be no point in linking the disputed domain name to a website that purportedly sells ACCUTANE.
The presence of the word “buy” and the extraneous addition of the letters “ln” in the disputed domain name do not lessen the confusion between the domain name and Complainant’s trademark ACCUTANE. Many UDRP panels have sagely reached the same conclusion. See e.g., LEGO Juris A/S v. PrivacyP / Kim Bum LLC,WIPO Case No. D2012-2462 (“the addition of descriptive terms to a trademark is generally not a distinguishing feature”). B. Rights or Legitimate Interests
There may be times when a respondent has a legitimate interest in using a complainant’s trademark in a domain name even without the complainant’s permission. See Policy, paragraph 4(c) This case is merely a straight forward case of cybersquatting: an individual takes a well-known mark and without the trademark owner’s permission uses the mark as the basis for a domain name; he then links the domain name to a website that sells products in direct competition to the trademark owner. Such use does not demonstrate Respondent’s rights or legitimate interests in the domain name. See Compagnie Générale des Etablissements Michelin v. PrivacyP and Kim Bum LLC,WIPO Case No. D2013-0181 (“Neither of the Respondents has a right or legitimate interest in luring consumers to a website under false pretenses and then profiting from their presence at the website.”). C. Registered and Used in Bad Faith
Before Complainant joined the noble war on acne, the word “Accutane” did not mean anything in the English language. Forty years later, the word “Accutane” is now known as a trademark “used for a preparation of isotretinoin.” ”/medical/accutane” Respondent did not make an innocent mistake when he used the trademark as the centerpiece of the disputed domain name , nor did he commit a naïve error when he linked the disputed domain name to a website that offered competing products and other medications. His actions were deliberate attempts to profit from the confusion of wretched acne sufferers; he has clearly engaged in bad faith registration and usage of the domain name. See Policy, paragraph 4(b)(iv) (stating that bad faith can be shown by using a confusingly similar domain name to attract Internet users to a commercial website); Pfizer Inc. v. jg a/k/a Josh Green,WIPO Case No. D2004-0784 (“Respondent’s use of the domain names to promote the sales of products in competition with PFIZER’s products constitutes bad faith.”). 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 Complainant.
Steven L. Snyder
Sole Panelist
Date: May 2, 2013
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