The Complainant is Hoffmann-La Roche Inc. of New Jersey, United States of America, internally represented.
The Respondent is Whois Privacy Protection Service of Xiamen, Fujian, China. 2. The Domain Name and Registrar
The Domain Name is registered with B, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 11, 2013. On April 11, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 12, 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.
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 16, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 6, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 8, 2013.
The Center appointed Gonçalo M. C. Da Cunha Ferreira as the sole panelist in this matter on May 15, 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 has a trade mark registration for ACCUTANE in the United States dated August 28, 1973.
The Domain Name was registered on April 3, 2013. Prior to the filed Complaint the Respondent was using the Domain Name to redirect Internet users to an on line pharmacy offering generic drugs including “Generic Accutane”. 5. Parties’ Contentions A. Complainant
The Complainant has a trade mark registration for ACCUTANE in the United States dated August 28, 1973. ACCUTANE is a brand for a dermatological preparation in the form of a product indicated for the treatment and prevention of acne.
The Domain Name incorporates the Complainant’s ACCUTANE trade mark in its entirety and the brand name is followed by the words “onlinesale” used in the commerce to indicate the proper channel to buy through the Internet. With this structure the Respondent suggest that there is a place to obtain the Complainant’s product cheaply. Therefore the Domain Name is confusingly similar to the trade mark of the Complainant.
No license has been given for the brand ACCUTANE to be used in the Domain Name. The Respondent is using the Domain Name for commercial gain and to capitalize on the Complainant’s brand ACCUTANE. The Respondent has no rights or legitimate interests in the Domain Name.
The Respondent registered the Domain Name on April 3, 2013. It is using the Domain Name to redirect Internet users to an on line pharmacy offering generic drugs not of the Complainant’s manufacture including “Generic Accutane” which directly competes with the Complainant’s product Accutane.
The Domain Name was registered in bad faith. The Respondent is intentionally attempting (for commercial purposes) to attract Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant’s trade mark as to the source, affiliation or endorsement of the Respondent’s web site or of the products or services posted on or linked to from the site. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In order to obtain the transfer of a disputed domain name, a complainant must prove three elements, regardless of whether the respondent files a response to the complaint. The first element is 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). The second element a complainant must prove is that the respondent has “no rights or legitimate interests in respect of the domain name.” Policy, paragraph 4(a)(ii). The third element for a complainant to establish is that the “domain name has been registered and is being used in bad faith.” Policy, paragraph 4(a)(iii). A. Identical or Confusingly Similar
The Domain Name is confusingly similar to the Complainant’s trade mark consisting of the Complainant’s ACCUTANE trademark and the generic words together “onlinesale”. The distinctive part of the Domain Name and also the first word is the ACCUTANE name. The addition of the non-distinctive words “onlinesale” does nothing to prevent the confusing similarity of the Domain Name with the Complainant’s ACCUTANE trade mark. On the contrary the composition and the order of the words create on the Internet users an assumption that the Domain Name is linked to an online pharmacy offering the product of the Complainant’s manufacture. B. Rights or Legitimate Interests
Following Terroni Inc. v. Gioacchino Zerbo,WIPO Case No. D2008-0666 “In order for a complainant to prove that a respondent has no rights or legitimate interests in the Disputed Domain Name, UDRP case law has consistently held that it is sufficient for a complainant to prove a prima facie case. (see amongst others, Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455, Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110). Once a prima facie case is shown the burden of proof then shifts to the Respondent who must demonstrate its rights or legitimate interests to the panel.”
In this case it is more than easy for the Complainant to prove a prima facie case, the Respondent is using the Complainant’s mark entirely and the brand name is followed by the indication of the commercial channel “onlinesale” to lead Internet users to a website that sells generic products exactly with the same Complainant’s mark. See Compagnie Générale des Etablissements Michelin v. PrivacyP and Kim Bum LLC,WIPO Case No. D2013-0181 (“[…] Neither of 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
The UDRP states that one way for a complainant to prove bad-faith registration and use is to show the respondent has “intentionally attempted to attract, for commercial gain, Internet users to [the] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [the] web site or location or of a product or service on [the] web site or location.” Policy, paragraph 4(b)(iv). The Complainant has clearly made this showing.
As argued by the Complainant, it is obvious since when viewing the Internet website from the Respondent (annex 6 of the Complaint) one realizes (we must say easily) that the 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 soured, affiliation and endorsement of the Respondent’s website.
With these facts, the Panel finds that the Respondent intentionally registered and is using the Domain Name 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 Domain Name be transferred to the Complainant.
Gonçalo M. C. Da Cunha Ferreira
Sole Panelist
Date: May 29, 2013
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