The Complainant is Hoffmann-La Roche Inc. of Nutley, New Jersey, United States of America, represented internally.
The Respondent is Subie Lawawe of Philadelphia, Pennsylvania, United States of America. 2. The Domain Name and Registrar
The disputed domain name (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 22, 2013. On April 22, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 23, 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 24, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 14, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 15, 2013.
The Center appointed Peter J. Dernbach as the sole panelist in this matter on June 6, 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 facts pertinent to the decision in this case are:
(i) The Complainant is the owner of the trademark ACCUTANE, which is registered with the United States Patent and Trademark Office (“U.S.P.T.O.”) as of August 28, 1973 under Registration Number 966,924, having a first use date of November 27, 1972.
(ii) The Complainant has used the trademark ACCUTANE on which the Complaint is based, on its pharmaceutical products.
(iii) The Disputed Domain Name was registered on March 13, 2013.
(iv) The Disputed Domain Name resolves to a website that includes links to direct Internet users to online pharmacies that offer for sale of pharmaceutical products that include reference to the Complainant’s trademark ACCUTANE. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions can be summarized as follows:
(i) The Disputed Domain Name is identical or confusingly similar to the registered trademark of the Complainant.
The Disputed Domain Name contains the “accutane” element in its entirety, which is identical to the Complainant’s ACCUTANE trademark. The incorporation of additional non-distinctive terms such as “buy”, “generic” and “online” does not assist to distinguish the Disputed Domain Name from the Complainant’s trademark.
(ii) The Respondent has no rights or legitimate interests in the Disputed Domain Name.
The Complainant has never authorized nor otherwise licensed the Respondent to use the Complainant’s trademark ACCUTANE, and yet the Respondent has been using the website to which the Disputed Domain Name resolves to direct Internet users to an online pharmacy where pharmaceutical products by reference to the ACCUTANE mark are offered for sale.
(iii) The Disputed Domain Name was registered and is being used in bad faith.
The Disputed Domain Name was registered and is being used for the purpose of attracting Internet users for commercial gain by creating a likelihood of confusion with the Complainant’s trademark as to the source, affiliation and endorsement of the Respondent’s website. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Preliminary Procedural Issue: Language of Proceedings
The Panel notes the following facts: (i) the language of the Registration Agreement for the Disputed Domain Name is English; (ii) the Complaint was submitted in English. Accordingly, the Panel is satisfied under paragraph 11(a) of the Rules that English shall be the language of proceedings and the Complaint in English is properly submitted. 7. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has established that it is the proprietor of the ACCUTANE trademark, which has been registered with the U.S.P.T.O. as of August 28, 1973.
It is established that incorporation of a complainant’s distinctive trademark in its entirety into a disputed domain name is sufficient to establish that the disputed domain name is identical or confusingly similar to the complainant’s trademark and the addition of a descriptive element to the disputed domain name does not sufficiently differentiate the disputed domain name from the trademark (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662; Time Warner Entertainment Company L.P. v. HarperStephens,WIPO Case No. D2000-1254; eBay Inc. v. ebayMoving / Izik Apo,WIPO Case No. D2006-1307, also see the generally adopted UDRP panel views under paragraph 1.9 of WIPO Overiew of WIPO Panel Views on Selected UDRP Questions, Second Edition, “WIPO Overview 2.0”). Further, it is well-established that in considering whether a disputed domain name is identical or confusingly similar to a registered trademark, the top-level domain (for example, “.com” and “.net”) should be disregarded. (GA Modefine SA v. Yonghui Huang, WIPO Case No. D2008-0355; Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil,WIPO Case No. D2000-1409; Florida Department of Management Services v. Anthony Gorss (or AGCS),WIPO Case No. D2009-1194).
In the present case, the Disputed Domain Name incorporates the Complainant’s distinctive trademark ACCUTANE in its entirety, while adding only the non-distinctive descriptive elements of “buy” and “generic” as prefixes and “online” as a suffix to the Disputed Domain Name. The addition of these non-distinctive and descriptive elements is insufficient to effectively differentiate the Disputed Domain Name from the Complainant’s trademark. Accordingly, the Panel finds that the Disputed Domain Name is identical or confusingly similar to the Complainant’s trademark and the condition of paragraph 4(a)(i) of the Policy has been fulfilled. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the following several circumstances which, without limitation, if found by the Panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the Respondent has] acquired no trademark or service mark rights; or
(iii) [the Respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy, is summarized in paragraph 2.1 of WIPO Overview 2.0, whereby:
“[…] 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. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […]. If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”
In the present case, the Complainant has established that it is the owner of the ACCUTANE trademark. The Complainant states that the Respondent has never received any authorization or license to use the Complainant’s trademark in the Disputed Domain Name.
The Panel notes that the registrant of the Disputed Domain Name is “Subie Lawawe”, and there is no evidence in the record to suggest that the Respondent might be commonly known by a name similar to the Disputed Domain Name. There is no evidence that the Respondent has any trademark or service mark rights in the Disputed Domain Name.
Furthermore, the fact that the Respondent uses the Disputed Domain Name to direct Internet users to a website with links to online pharmacies that offer pharmaceutical products for sale by reference not only to the Complainant’s ACCUTANE trademark but also other competitors’ trademark without accurate disclosure of the relationship between the Respondent and the owners of the said trademarks is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Disputed Domain Name (Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903), rather; it demonstrates the Respondent’s lack of a right or legitimate interest in the Disputed Domain Name (Pfizer, Inc. v. Seocho and Vladimir Snezko,WIPO Case No. D2001-1199; Pfizer, Inc. v. jg a/k/a Josh Green,WIPO Case No. D2004-0784).
Having considered the above, the Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. Thus, the burden of production shifts to the Respondent to provide allegations or evidence demonstrating rights or legitimate interests in the Disputed Domain Name. The Respondent did not respond to the Complaint or give any explanation as to why the Disputed Domain Name was chosen and registered.
Therefore, given the allegations and evidence provided by the Complainant, and in the absence of any reply from the Respondent, the Panel finds it is reasonable to conclude that the Respondent deliberately chose to include the Complainant’s ACCUTANE trademark in the Disputed Domain Name for the purpose of achieving commercial advantage by misleadingly diverting Internet users to the website at the Disputed Domain Name and that such use cannot be considered a legitimate noncommercial or fair use. Therefore, the Panel finds that the Complainant has satisfied the requirement of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides, in relevant part, that if the Panel finds the following circumstances, it shall be evidence of the registration and use of a domain name in bad faith:
(iv) by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the Respondent’s] website or location or of a product or service on [the Respondent’s] website or location.
In relation to bad faith at the time of registration, the Panel notes that the Complainant has established that its ACCUTANE trademark has been registered in the U.S.P.T.O. since 1973, and has acquired an international reputation prior to the date the Disputed Domain Name was registered. The Respondent’s choice to incorporate the identical “accutane” element as the primary distinctive element of the Disputed Domain Name suggests that the Disputed Domain Name was registered in bad faith and the subsequent use of the Complainant’s ACCUTANE trademark in connection with products offered in online pharmacies directed through the website to which the Disputed Domain Name resolves further shows that the Complainant’s ACCUTANE trademark was chosen for the Disputed Domain Name in bad faith. The Respondent did not reply to the Complaint nor submit any evidence to the contrary, and the Panel therefore finds that the Disputed Domain Name was registered in bad faith.
In relation to use in bad faith, the evidence of the content available on the website to which the Disputed Domain Name resolves and the online pharmacies which the website includes links to (as shown on the screen shots provided by the Complainant in Annex 6 to the Complaint), clearly shows that the website includes links to online pharmacies on the purpose of offering for sale of purported Accutane products and other pharmaceutical products with references to other third parties’ trademarks. Based on these facts in the record, the Panel finds that the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of its website. Thus, the Panel finds that the Respondent is using the Disputed Domain Name in bad faith.
Based on the above findings, the Panel finds that the Respondent has registered and is using the Disputed Domain Name in bad faith as provided in paragraph 4(b)(iv) of the Policy, and thus the Complainant fulfills the condition provided in paragraph 4(a)(iii) of the Policy. 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.
Peter J. Dernbach
Sole Panelist
Date: June 14, 2013
Full & Egal Universal Law Academy