The Complainant is Hoffmann-La Roche Inc. of Nutley, New Jersey, United States of America (“US”), internally represented.
The Respondent is Chad Washburn of Topeka, American Samoa, Overseas Territory of the US. 2. The Domain Name and Registrar
The disputed domain name is registered with Gransy, s.r.o. d/b/a (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 10, 2013. On September 10, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 10, 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 September 19, 2013, the Center transmitted the language of proceedings document to the parties in both English and Czech. On September 24, 2013, the Complainant requested English to be the language of the proceedings. The Respondent did not submit its comments.
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 September 27, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 17, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 18, 2013.
The Center appointed Ladislav Jakl as the sole panelist in this matter on November 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 is, together with its affiliated companies, engaged research and development of pharmaceutical and diagnostic products. It is a member of the Roche Group, one of the world’s leading research-focused healthcare groups and having global operations in more than 100 countries.
The Complainant’s trademark ACCUTANE was registered at the United States Patent and Tademark Office on August 23, 1973 under registration No. 966.924 (Annex 3 to the Complaint), with first use in 1972.
ACCUTANE is an alternative trademark (US version) for the trademark ROACCUTAN, which is protected in a multitude of countries worldwide. As an example reference is made to the International Registration No. R450 092, with priority date of August 21, 1979, certificate of which was submitted in copy (Annex 4 to the Complaint).
The trademark ACCUTANE designates a dermatological preparation in the form of a product indicated for the treatment and prevention of acne. This trademark is extensively promoted for many years in print advertisements in medical journals, promotional materials, packaging, medical information materials, television advertising and direct mailings. The sales of the ACCUTANE products in the United States have exceeded hundreds of millions of dollars.
The disputed domain name was registered on July 13, 2013. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name of the Respondent is confusingly similar to the Complainant’s trademark as it incorporates the trademark ACCUTANE in its entirety and that the addition of the terms “what for” and “buy” does not sufficiently distinguish this domain name from the trademark ACCUTANE. The Complainant refers to a UDRP decision (Annex 5 to the Complaint), according to which the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusing similar to the Complainant’s registered mark (Hoffmann-La Roche Inc. v. Hightech Industries, Andrew Browne,WIPO Case No. D2010-0240). Moreover, the Complainant’s registration and use of the trademark predate the Respondent’s registration of the disputed domain name.
The Complainant concludes that the disputed domain name is confusingly similar to the Complainant’s trademark.
As to rights or legitimate interests in respect of the disputed domain name, the Complainant essentially contends that it has exclusive rights for ACCUTANE, and no license, permission, authorization or consent was granted to use ACCUTANE in the disputed domain name. Furthermore, it is obvious that the Respondent uses the disputed domain name for commercial gain and with the purpose of capitalizing off the Complainant’s trademark and that the disputed domain name clearly alludes to the Complainant. As it appears from Annex 6 to the Complaint, the Respondent is using the disputed domain name to direct Internet users to an online pharmacy. The Complainant further refers to a UDRP decision (Annex 7 to the Complaint), according to which the respondent’s use of the domain name to redirect Internet users to an online pharmacy demonstrates the respondent’s lack of legitimate interests in the domain name (Hoffmann-La Roche Inc. v. Samuel Teodorek, WIPO Case No. D2007-1814).
The Complainant concludes that the Respondent has no rights or legitimate interests in the disputed domain name.
Furthermore, the Complainant argues that the disputed domain name was registered and is also being used in bad faith, as the disputed domain name was registered in bad faith since at the time of the registration, i.e. on July 13, 2013, the Respondent had, no doubt, knowledge of the Complainant’s well-known trademark ACCUTANE. Moreover the disputed domain name is also being used in bad faith. This is obvious, since when viewing the Internet-website from the Respondent (Annex 6 to the Complaint), one realizes 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 trademark as to source, affiliation and endorsement of the Respondent’s website. The Complainant further refers to a UDRP decision (Annex 8 to the Complaint), according to which bad faith is established when the respondent is using the domain name as a forwarding address to a for profit online pharmacy (Pfizer Inc. v. jg. a/k/a Josh Green,WIPO Case No. D2004-0784). The Complainant argues that the Respondent, by using the disputed domain name, is intentionally misleading the consumers and confusing them by making them believe that the websites behind those links are associated or recommended by the Complainant. As a result, The Respondent may generate unjustified revenues and therefore is illegitimately capitalizing on the ACCUTANE trademark fame.
For these reasons, the Respondent registered and is using the disputed domain name in bad faith.
In accordance with paragraph 4(i) of the Policy, the Complainant requests the Panel to issue a decision that the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
On the question of the language of the proceedings, the Registrar confirmed that the language of the registration agreement for the disputed domain name is Czech. Paragraph 11(a) of the Rules provides, that in absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise. The Respondent did not comment on the language of the proceeding by the specified due date. The Complainant confirmed that no agreement between the Complainant and the Respondent has been concluded to the effect that the proceedings should be in English. However, the Complainant chose not to submit a complaint in the Czech language but requested English to be the language of the proceeding, and introduced several arguments, inter alia that the English language is commonly known as “connecting” language, which is very often used also in business life as well as in tourism etc. The Panel notes that the website at the disputed domain name is in English. Under these circumstances, the Complainant takes it that the Respondent and Registrar involved are capable of corresponding in the English language.
The Panel, taking in to account all circumstances of this case and a number of UDRP decisions and the reasons cited therein decides that the language of the administrative proceedings be English (BrandStrategy, Inc. v. BusinessService Ltd.,WIPO Case No. D2007-0749; Laboratoire Biosthétique Kosmetik GmbH & Co. KG and MCE S.A.S. v. BusinessService Ltd.,WIPO Case No. D2007-1836; F. Hoffmann-La Roche AG v. Onotole Vasermane,WIPO Case No. D2010-2074; F. Hoffmann-La Roche AG v. Nikolay Fedotov,WIPO Case No. D2011-1636; Groupe Auchan v. xmxzl,WIPO Case No.
DCC2006-0004; Finter Bank Zurich v. Shumin Peng,WIPO Case No. D2006-0432).
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all three elements are present lies with the Complainant. A. Identical or Confusingly Similar
There is no doubt that the disputed domain name incorporates the Complainant’s trademark ACCUTANE with the only difference being the use of the terms “what”, “for” and “buy”, which are common, generic terms that do not give any distinctiveness to the disputed domain name. Mere addition of a generic or descriptive term by way of prefix or suffix to a complainant’s mark does not adequately distinguish a domain name from the mark pursuant to the Policy, paragraph 4(a)(i). Previous UDRP panels have held that domain names are likely to be held confusingly similar to established marks if they incorporate the trademark in its entirety
(Wall-Mart Stores, Inc. v. Gerry Sinker,WIPO Case No. D2006-0211; HSBC Holdings Plc v. David H. Gold,WIPO Case No. D2001-0343; F.Hoffmann-La Roche AG v. Whois Defender, Inc.,WIPO Case No. D2006-0717; Sanofi-Aventis v. PLUTO DOMAIN SERVICES PRIVATE LIMITED, WIPO Case No. D2008 -1483; Sanofi-Aventis v. N/A, WIPO Case No. D2009-0705; America Online, Inc. v. Anson Chan,WIPO Case No. D2001-0004; Lilly ICOS LLC v. John Hopking / Neo net Ltd.,WIPO Case No. D2005-0694; Playboy Enterprises International, Inc. v. Sookwan Park,WIPO Case No. D2001-0778; Merrell Pharmaceuticals Inc. v. Daniel Laforge, NAF Claim No. 420671). Furthermore the inclusion of the gTLD suffix “.com” does not avoid confusing similarity between the domain name and the trademark (AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758; Accor v. Lee Dong Youn, WIPO Case No. D2008-0705; and Sanofi-Aventis v. Brad Hedlund,WIPO Case No. D2007-1310). Moreover, the Complainant’s registration and use of its trademark ACCUTANE predates the Respondent’s registration of the disputed domain name.
For all the above cited reasons, the Panel concludes that disputed domain name is confusingly similar to the Complainant’s trademark and therefore the condition of paragraph 4(a)(i) of the Policy is fulfilled. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the disputed domain name. Any of the following circumstances, as indicated in paragraph 4(c) of the Policy, in particular but without limitation shall demonstrate, if found by the Panel to be proved, the Respondent’s rights or legitimate interests to the disputed domain name:
(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 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 it 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 Panel accepts the arguments of the Complainant that the Respondent cannot establish rights or legitimate interests in the disputed domain name as the Complainant has exclusive rights for ACCUTANE and that no license, authorization or consent to the Respondent was granted to use ACCUTANE in the disputed domain name. Mere registration of the disputed domain name may not of itself confer rights or legitimate interests in the disputed domain name (Terroni Inc. v. Gioacchino Zerbo,WIPO Case No. D2008-0666; Société Nationale des Chemins de Fer Français v. RareNames, Inc., RareNames WebReg and RN WebReg,WIPO Case No. D2008-1849; St Andrews Links Ltd v. Refresh Design,WIPO Case No. D2009-0601; Gibson, LLC v. Jeanette Valencia,WIPO Case No. D2010-0490). Moreover, it is obvious that the Respondent uses the disputed domain name for commercial gain and with the purpose of capitalizing off the Complainant’s trademark and that the disputed domain name clearly alludes to the Complainant. As it appears on Annex 6 to the Complaint, the Respondent is using the disputed domain name to direct Internet users to an online pharmacy. The Panel accepts the arguments of the Complainant that the Respondent’s use of the disputed domain name to misdirect consumers is not a bona fide offering of goods or services, and does not constitute a legitimate noncommercial or fair use of the domain name under the Policy (Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415; Humana Inc. v. Cayman Trademark Trust,WIPO Case No. D2006-0073; Hoffmann-La Roche Inc. v. Samuel Teodorek, WIPO Case No. D2007-1814).
For the above cited reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that the requirements of paragraph 4(a)(ii) of the Policy are therefore fulfilled. C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances which, in particular but without limitation, are to be construed as evidence of both. These include, inter alia, paragraphs 4(b)(ii), (iii) and (iv):
(ii) the Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of his website or of a product or service on that website or location.
The Panel finds that it is necessary to accept the arguments of the Complainant that the disputed domain name was registered and is being used in bad faith, as at the time of the registration the Respondent had unquestioned knowledge of the Complainant’s well-known trademark ACCUTANE. The Respondent registered the disputed domain name in order to attract Internet users seeking for the Complainant’s website, for its own commercial gain. The Complainant has submitted evidence, unchallenged by the Respondent, that the disputed domain name is being used in bad faith, as the Respondent intentionally attempts to attract Internet users to the Respondent’s websites by creating a likelihood of confusion with the Complainant’s well-known mark as to the source, affiliation or endorsement of the Respondent's website and/or of the products and services posted on the Respondent’s website (Pfizer Inc. v. jg a/k/a Josh Green,WIPO Case No. D2004-0784; F. Hoffmann-La Roche AG v. Pinetree Development, Ltd.,WIPO Case No. D2006-0049). The Respondent, by using the disputed domain name, is intentionally misleading Internet consumers by making them believe that the websites behind those links are associated or recommended by the Complainant.
For the above cited reasons, the Panel finds that the disputed domain name was registered and is being used in bad faith. Considering all the facts and evidence, the Panel therefore finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case. 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
Ladislav Jakl
Sole Panelist
Date: November 24, 2013
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