The Complainant is Hoffmann-La Roche Inc. of New Jersey, United States of America, represented by F. Hoffmann-La Roche AG, Switzerland.
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 April 8, 2013. On April 8, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 8, 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 April 12, 2013, the Center transmitted an email to the parties in both Chinese and English language regarding the language of proceedings. On April 15, 2013, the Complainant confirmed its request that English be the language of proceedings. The Respondent did not comment on the language of proceedings 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 April 18, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 8, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 10, 2013.
The Center appointed Jonathan Agmon as the sole panelist in this matter on May 27, 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 Hoffmann-La Roche Inc. of New Jersey, United States of America, is a member of the Roche Group, one of the world's leading researches and developers of pharmaceutical and diagnostic products.
The Complainant is the owner of United States Trademark registration No. 966,924 for the mark ACCUTANE as of August 28, 1973.
The disputed domain name was registered on March 5, 2013.
The disputed domain name currently resolves to an online pharmacy offering "Accutane (Generic)" as well as other drugs for sale. 5. Parties’ Contentions A. Complainant
The Complainant argues that the ACCUTANE mark was extensively promoted for many years in print advertisements in medical journals, promotional materials, packaging, medical informational materials, and television advertising and direct mailings.
The Complainant further argues that sales of the Accutane product in the United States have exceeded hundreds of millions of dollars.
The Complainant further argues that the disputed domain name is identical or confusingly similar to the Complainant's mark.
The Complainant further argues that the disputed domain name contains the entire ACCUTANE and that the addition terms “buy”, “online” and "now" does avoid a finding of confusing similarity.
The Complainant further argues it has not licensed or otherwise permitted the Respondent to use its ACCUTANE trademark and is not affiliated or otherwise connected to the Respondent.
The Complainant further argues that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant further argues that the Respondent has registered and used the disputed domain name in bad faith.
The Complainant further argues the Respondent uses the disputed domain name to a generic form of Accutane as well as other third-party pharmaceutical products of the Complainant's competitors.
The Complainant further argues that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services because the Respondent is diverting Internet users seeking the Complainant's Accutane product to third-party websites which offer competing products.
The Complainant further argues that the Respondent's website demonstrates that neither the Respondent nor its website has been commonly known by the disputed domain name. “Accutane” is not a word and has no valid use other than in connection with the Complainant's trademark.
The Complainant further contends that the Respondent lacks a legitimate noncommercial interest in, or fair use of, the disputed domain name as demonstrated by the Respondent's practice of offering for sale generic form of Accutane as well as competing third-party products.
The Complainant further contends that the Respondent's true purpose in registering the disputed domain name is to capitalize on the reputation of the Complainant's ACCUTANE mark by diverting Internet users seeking the Complainant's website(s) to the Respondent's own website, and other third-party websites, which offer for sale competing pharmaceutical products. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant is the owner of United States Trademark registration No. 966,924 for the mark ACCUTANE as of August 28, 1973.
Also, the Complainant’s rights in the ACCUTANE mark have been established in numerous UDRP decisions (see e.g. Hoffman-La Roche Inc. v. Highttech Industries, Andrew Browne,WIPO Case No. D2010-0240, and Hoffman-La Roche Inc. v. Samuel Teodorek,WIPO Case No. D2007-1814).
The disputed domain name differs from the registered ACCUTANE trademark by the additional words “buy”, “online” and "now" and the additional gTLD “.com”. The disputed domain name integrates the Complainant’s ACCUTANE trademark in its entirety, as a dominant element.
The additional words “buy”, “online” and "now" do not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant’s trademark, as they are common terms in the Complainant’s field of business.
Previous UDRP panels have ruled that the mere addition of a non-significant element does not sufficiently differentiate the domain name from the registered trademark: "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"(Hoffman-La Roche Inc. v. Highttech Industries, Andrew Browne, supra).
See also Lilly ICOS LLC v. John Hopking / Neo net Ltd,WIPO Case No. D2005-0694: "The disputed domain names contain the Complainant’s CIALIS mark as well as additional descriptive words. As stated in Microsoft Corporation v. J. Holiday Co.,WIPO Case No. D2000-1493, “generally, a user of a mark may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it”. 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition §23: 50 (4th ed. 1998)”. (See also The Price Company v. Price Club, WIPO Case No. D2000-0664: finding to be confusingly similar to the PRICE CLUB mark). In this case, the additional words are “online”, “best”, “now”, “buy”, “buying”, “in”, “USA”, “instant”, “instantly”, “and”, “more”, “store”, “right”, “get”, “my”, “order”, “sales” and, added to Complainant’s CIALIS mark, may suggest that Respondent’s websites are locations where a consumer may buy CIALIS brand product. Moreover, the systematic use of such descriptive terms by the same Respondent reinforces this impression".
The addition of the gTLD “.com” to the disputed domain name does not avoid confusing similarity (See F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451, and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). Thus, the gTLD “.com” is without legal significance since the use of a gTLD is technically required to operate the domain name.
Consequently, the Panel finds that the Complainant has shown that the disputed domain name is identical or confusingly similar to trademarks in which the Complainant has rights. B. Rights or Legitimate Interests
Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name. Paragraph 2.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
In the present case, the Complainant has demonstrated that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests.
The Panel finds that the Complainant has established a prima facie case in this regard, inter alia, due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the ACCUTANE trademark, or a variation thereof, and the evidence presented indicates that the Respondent is not engaged in a bona fide offering of goods or services, as discussed further below.
The Respondent has not submitted a Response and did not provide any evidence to show any rights or legitimate interests in the disputed domain name that is sufficient to rebut the Complainant’s prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii).
The Complainant submitted evidence, which shows that the Respondent registered the disputed domain name after the Complainant registered its trademark. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant owns a registration for the ACCUTANE trademark at least since the year 1973. It is suggestive of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
Paragraph 4(b)(iv) of the Policy provides that it will be evidence of bad faith registration and use by a respondent, if by using the domain name it had intentionally attempted to attract, for commercial gain, Internet users to the websites or other online locations to which the domain name is resolved to, by creating a likelihood of confusion with a complainant's mark as to the source, sponsorship, affiliation, or endorsement of the websites or locations or of a product or service on the websites or locations to which the domain name resolved to.
The disputed domain name is confusingly similar to the Complainant's trademark. Previous UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainants’ site to the Respondent’s site” (See E, Inc v. Triple E Holdings Limited,WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.
The Complainant submitted evidence, proving that the Respondent was using the disputed domain name to direct Internet users to online pharmacy offering "Accutane (Generic)" as well as other drugs for sale. The Respondent has been utilizing the Complainant's trademark in the disputed domain name for commercial gain by creating Internet user confusion through suggesting that the source of the Respondent’s website is the Complainant.
Such action constitutes bad faith registration and use of the disputed domain name: "Furthermore, the printout of the relevant pages of Respondent’s website “” shows that Respondent has been using the Domain Name to promote and sell, for commercial gain, sildenafil citrate pharmaceutical products as “generic Viagra”, which directly compete with Complainant’s genuine Viagra. This is further evidence of Respondent’s bad faith registration and use of the Domain Name under paragraph 4 (c) (iii) of the Policy" (See Pfizer Inc v. Juan Gonzales, WIPO Case No. D2004-0589).
Finally, based on the evidence presented to the Panel, taking into consideration the Complainant's trademark, the late registration of the disputed domain name and the non-legitimate commercial use of the disputed domain name, the Panel draws the inference that the disputed domain name was registered and has been used in 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 the Complainant.
Jonathan Agmon
Sole Panelist
Date: June 2, 2013
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