Complainant is Hoffmann-La Roche Inc. of Nutley, New Jersey, United States of America, represented internally.
Respondent is Davidov Semen of Washington DC, United States of America (“US”). 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 April 4, 2013. On April 4, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 7, 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 April 10, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was April 30, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 2, 2013.
The Center appointed Sandra A Sellers as the sole panelist in this matter on June 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
Complainant, with its affiliates, is one of the world’s largest pharmaceutical companies, with operations in over 100 countries. One of its most well-known drugs is covered by the ACCUTANE trademark, for which it holds registrations throughout the world. For example, US Registration for ACCUTANE was registered August 28, 1973, with a date of first use of November 27, 1972. The ACCUTANE dermatological preparation has been extensively promoted for many years in medical journals, materials, television advertising and direct mailings. Sales of ACCUTANE products in the US has exceeded hundreds of millions of US dollars.
The disputed domain name was registered on March 19, 2013. Its website shows ACCUTANE products for sale in various dosages and quantities. 5. Parties’ Contentions A. Complainant
Complainant asserts that it has exclusive rights in the ACCUTANE trademark. It contends that the disputed domain name is confusingly similar to Complainant’s marks because it consists of Complainant’s ACCUTANE mark in its entirety, and that the only difference between Complainant’s mark and the disputed domain name is the addition of the descriptive terms “buy”, “drug” and “online”, which do not sufficiently distinguish the disputed domain name from Complainant’s mark. Complainant further alleges that Respondent has no rights or legitimate interests in the disputed domain name, and that it registered and uses the disputed domain name in bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the 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 domain name; and
(iii) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds the disputed domain name confusingly similar to Complainant’s ACCUTANE mark. It contains Complainant’s ACCUTANE mark in its entirety. The only difference between Complainant’s mark and the disputed domain name is the addition of the descriptive terms “buy”, “drug” and “online”, which do not sufficiently distinguish the disputed domain name from Complainant’s mark. Numerous previous UDRP decisions have held that the addition of a common word does not distinguish a domain name from the complainant’s mark or preclude a finding of confusing similarity. In particular, in a decision virtually synonymous with this case involving the ACCUTANE mark and the domain name , Complainant quotes the following highly relevant passages:
“Moreover, the addition of the term “buy” as a prefix to the ACCUTANE mark does not mitigate the confusing similarity between the Disputed Domain Name and the Complainant's trademark. The prefix “buy” is an ordinary descriptive word which is related to the trademark ACCUTANE and may lead Internet users to understand the Disputed Domain Name as hosting a website that offers for sale the Complainant's product. Adding the prefix “buy” to the Mark does nothing to dispel and serves only to reinforce the connection in the public mind between the word ACCUTANE and the Complainant, and therefore increases the risk of confusion”. See Hoffmann-La Roche Inc. v. Hightech Industries, Andrew Browne,WIPO Case No. D2010-0240 (Annex 5, p. 3).
Other UDRP decisions cited by Complainant have concluded that addition of the descriptive words “drug” and “online” also fail to distinguish the disputed domain name from Complainant’s trademark.
Accordingly, the Panel finds that Complainant has rights in the ACCUTANE mark and that the disputed domain name is confusingly similar to Complainant’s mark. Complainant has established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Because it is generally difficult for a complainant to prove the fact that a respondent does not have any rights or legitimate interests in a domain name, previous UDRP panels have found it sufficient for a complainant to make a prima facie showing of its assertion where there has been no response.
Complainant has exclusive rights in the ACCUTANE mark. Respondent is not affiliated with or related to Complainant, nor is Respondent licensed or authorized to use the ACCUTANE mark. In a particularly appropriate case cited by Complainant, the panel found that “several cases have found that a registrant has no legitimate interest in a domain name that is similar to a pharmaceutical manufacturer’s mark and that is being used to direct consumers to an on-line pharmacy.” Pfizer Inc. v. jg a/k/a/ Josh Green,WIPO Case No. D2004-0784. On the evidence before the Panel, Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name.
The Panel is satisfied that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in the disputed domain name.
Respondent is in default, and has not provided any evidence in its own favor.
The Panel finds that the evidence in the record is sufficient to establish that Respondent has no rights or legitimate interests in the disputed domain name, and thus Complainant meets the second criterion of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
The Panel finds it difficult to conceive that Respondent did not know of Complainant’s mark and products when Respondent registered the disputed domain name. As set forth above, the ACCUTANE mark is protected by various US and international trademark registrations. A sample registration for the ACCUTANE mark carries a priority date of November 27, 1972. ACCUTANE drugs are marketed through Complainant’s global operations in over one hundred countries. All of this occurred before the disputed domain name was registered in March 2013. Further, this disputed domain name reverts to a web page selling ACCUTANE drugs, which reinforces the inference that Respondent was aware of Complainant’s marks. Based on these facts, this Panel infers that Respondent was aware or must have been aware of Complainant’s mark when Respondent registered the disputed domain name, and therefore registered it in bad faith. See, e.g., Jupiters Limited v. Aaron Hall,WIPO Case No. D2000-0574, in which the panel found it “inevitable that [r]espondent registered the domain names in full knowledge of [c]omplainant’s rights and interests”.
It is clear to this Panel that Respondent, by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of a product or service on Respondent’s website, thus using Complainant’s marks in bad faith. This disputed domain name reverts to a web page showing ACCUTANE products identical to Complainant’s product, and which are sold under Complainant’s ACCUTANE mark. This disputed domain name then directs users to two online for-profit pharmacies that sell ACCUTANE or generic ACCUTANE drugs. See Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784; Pfizer Inc. v. Juan Gonzales, WIPO Case No. D2004-0589. This content appears designed to reinforce the Internet user’s impressions that the disputed domain name is affiliated with or approved by Complainant. The resulting confusion is grounds for a finding of bad faith use under paragraph 4(b)(iv) of the Policy. See Pandora Jewelery, LLC v. ke ying, no, bing jin, fcgem, Wei Pang, na no and fcg, xiong mao, WIPO Case No. D2001-0642. 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.
Sandra A. Sellers
Sole Panelist
Date: July 3, 2013
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