The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, internally represented.
The Respondent is Nina Adler of Garfield Heights, Ohio, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Hosting Concepts B.V. d/b/a Openprovider (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 22, 2015. On May 22, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 26, 2015 and May 29, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 1, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on June 1, 2015.
The Center verified that the Complaint together with the amendment to 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 June 2, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was June 22, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 23, 2015.
On June 4, 2015, the Registrar informed the Center that "'Whois Privacy Protection Foundation' is not party in this complaint at all. This whois privacy service address is used by the actual registrant, being Nina Adler." In light of this Informative Filing from the Registrar, the Panel will address this Complaint in relation to the Respondent only.
The Center appointed James McNeish Innes as the sole panelist in this matter on June 29, 2015. 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 together with its affiliated companies is one of the world's leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics. It has global operations in more than 100 countries. Its ownership of its marks ACCUTANE, ROACCUTAN and ROACCUTANE are confirmed by the record. The Respondent first registered the disputed domain name on April 16, 2015. 5. Parties' Contentions A. Complainant
The Complainant's contentions include the following:
(i) The Complainant's mark, ACCUTANE, is protected as International Registration No. 840371. Its mark ROACCUTAN is also protected by International Registration.
The mark ROACCUTAN is registered in an alternative form under ROACCUTANE in many countries such as Malaysia, Singapore, Ireland and United Kingdom of Great Britain and Northern Ireland ("UK") by the Complainant's UK subsidiary Roche Products Ltd.
The marks ACCUTANE, ROACCUTAN and ROACCUTANE designate a drug indicated for the treatment of severe nodular and/or inflammatory acne conglobate or recalcitrant acne.
The disputed domain name is confusingly similar to the Complainant's mark seeing that it incorporates the Complainant's mark, ACCUTANE, in its entirety. The addition of the generic term "buy" and "fr" (probably an abbreviation for France) does not sufficiently distinguish the disputed domain name from the trademark. According to Lilly ICOS LLC v. John Hopking / Neo net Ltd.,WIPO Case No. D2005-0694, "generally, a user of a mark may not avoid likely confusion by appropriating another's entire mark and adding descriptive of non-distinctive matter to it".
(ii) The Complainant's use and registration of ACCUTANE does predate the Respondent's registration of the disputed domain name.
(iii) The disputed domain name is confusingly similar to the trademark of the Complainant.
(iv) The Complainant has exclusive rights for ACCUTANE, as mentioned above and no license/permission/authorization 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 on the fame of the Complainant's mark, ACCUTANE.
(v) The disputed domain name clearly alludes to the Complainant. The disputed domain name directs to a web page and pharmacy online offering/selling the Complainant's products. According to Hoffmann-La Roche Inc. v. #1 Viagra Propecia Xenical & More Online Pharmacy,WIPO Case No. D2003-0793, "it is evident that the Respondent is not making a legitimate noncommercial or fair use of the Domain Name under Policy, paragraph 4(c)(iii). The Respondent's use is manifestly commercial. It sells pharmaceuticals on the website associated with the challenged Domain Name". The Respondent's only reason in registering and using the disputed domain name is to benefit from the reputation of the trademark ACCUTANE and illegitimately trade on its fame for commercial gain and profit. There is no reason why the Respondent should have any right or interest in such domain name.
(vi) The disputed domain name was registered in bad faith. Since the time of the registration on April 16, 2015, the Respondent had, no doubt, knowledge of the Complainant's product/mark ACCUTANE.
(vii) The disputed domain name is also being used in bad faith. This is obvious when viewing the Internet web site from the Respondent as one realizes that the Respondent is intentionally attempting (for commercial purposes) to attract Internet users to the Respondent's web site, by creating a likelihood of confusion with the Complainant's well-known mark as to the source, affiliation and endorsement of the Respondent's web site or of the products of services posted on or linked to the Respondent's web site.
According to Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784, bad faith is established when the "[r]espondent is using the domain name as a forwarding address to a for-profit on-line pharmacy". B. Respondent
The Respondent did not reply to the Complainant's contentions 6. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide a complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Paragraph 4(a) of the Policy directs that a complainant must prove each of the following:
(a) That the disputed domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights.
(b) That the respondent has no rights or legitimate interests in respect of the disputed domain name.
(c) That the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Two separate issues fall for consideration. Does the Complainant have rights in the marks and is the disputed domain name identical or confusingly similar to any such marks. On the record the Complainant has established rights in its marks and registrations.
The Complainant argues that the disputed domain name is identical or confusingly similar to its mark for the following reasons:
(a) The disputed domain name incorporates the Complainant's trademark, ACCUTANE, in its entirety.
(b) The addition of the generic terms "buy" and "fr" does not sufficiently distinguish the disputed domain name from the trademark.
The Panel accepts the Complainant's contentions. The disputed domain name is confusingly similar to the Complainant's mark. The Panel finds that paragraph 4(a)(i) of the Policy has been satisfied. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that any of the following circumstances in particular but without limitation if found by the Panel to be proved based upon its evaluation of the evidence presented shall demonstrate a Respondent's rights or legitimate interests in the disputed domain name for the purpose of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you [the Respondent] of the dispute, your [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) you [the Respondent] (as an individual, business, or other organization) have been commonly known by the disputed domain name, even if [the Respondent has]you have acquired no trademark or service mark rights; or
(iii) you [the Respondent is] are 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 Respondent has not submitted a response and has failed to invoke any circumstance which could have demonstrated any rights or legitimate interests. The Panel has noted the use of the website at the disputed domain name as described by the Complainant and further notes that there is no independent evidence of any circumstances which could have demonstrated any rights or legitimate interests on the part of the Respondent. The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that the Policy, paragraph 4(a)(ii) has been satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy contains the following provisions under the heading "Evidence of Registration and Use in Bad Faith". For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that [the Respondent has]you have registered or you[the Respondent has]have acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your [the Respondent's] documented out-of-pocket costs directly related to the disputed domain name; or
(ii) you have[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 you have the Respondent has] engaged in a pattern of such conduct; or
(iii) you have[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, you [the Respondent has]have intentionally attempted to attract, for commercial gain, Internet users to your [the Respondent's] 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 Respondent's] your web site or location or of a product or service on [the Respondent's] your web site or location.
The Complainant has made contentions that would lead to situations mentioned in paragraph 4(b)(iv) of the Policy. The Panel accepts the Complainant's assertion that the Respondent has attempted to attract users to its web site by creating confusion with the Complainant's mark. The Panel finds that the disputed domain name has been registered and is being used in bad faith. The Panel finds that the Policy, paragraph 4(a)(iii) has been satisfied. 7. Decision
For all 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.
James McNeish Innes
Sole Panelist
Date: July 6, 2015
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