The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally.
The Respondent is Robert Xavier of New York, New York, United States of America ("United States"). 2. The Domain Names and Registrar
The disputed domain names , , and are registered with Gal Communications (CommuniGal) Ltd. d/b/a Galcomm (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 10, 2015. On June 10, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 17, 2015, 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 June 18, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 8, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 9, 2015.
The Center appointed Mario Soerensen Garcia as the sole panelist in this matter on July 14, 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 is the Swiss company F. Hoffmann-La Roche AG, with its head offices in Basel, Switzerland. It is known worldwide as a leader in the fields of pharmaceuticals and diagnostics. The Complainant's activities are present in more than 100 countries.
Among other registrations, including for the marks ROACCUTAN and ROACCUTANE, the Complainant is the owner of the International Trademark Registration No. 840371, for ACCUTANE, registered on December 6, 2004, in class 5, covering pharmaceutical products.
The mark ACCUTANE is used to the treatment of severe or inflammatory acne.
The Respondent is Robert Xavier, of New York, United States.
The disputed domain names were registered on May 14, 2015. 5. Parties' Contentions A. Complainant
The Complainant claims that the disputed domain names , , and incorporate its trademark ACCUTANE with the addition of the terms "USA," (for United States of America), "fast" (with and without a hyphen) and "Rx" (which refers to prescription medicines). The Complainant cites Lilly ICOS LLC v. John Hopking / Neo net Ltd,WIPO Case No. D2005-0694, in which it was decided that the addition of a descriptive element to a third party's entire mark does not avoid a likelihood of confusion.
The Complainant claims that its use and registration of the mark ACCUTANE predate the Respondent's registration of the disputed domain names and that the disputed domain names are confusingly similar to the Complainant's mark.
According to the Complainant, no authorization to use the trademark ACCUTANE or to register domain names encompassing it has been granted to the Respondent by the Complainant.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain names, and that it uses them in bad faith. It argues that the Respondent is using the disputed domain names for commercial gain to direct to a web page and online pharmacy offering pharmaceutical products, including medical products named Accutane.
Finally, the Complainant requests the transfer of the disputed domain names. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
As per paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
The evidence presented demonstrates that the Complainant is the owner of the trademark ACCUTANE in several countries for pharmaceutical products.
The disputed domain names comprise the Complainant's trademark ACCUTANE with the addition of generic terms.
The main element of the disputed domain names is "accutane," which is identical to the Complainant's trademark ACCUTANE and similar to the Complainant's trademarks ROACCUTAN and ROACCUTANE.
The expressions "USA", "fast" and "Rx" and the addition of a hyphen in one of the disputed domain names are not enough to avoid confusion by Internet users. The expression "USA" refers to the United States of America and gives the idea of the sale of the Complainant's products in the United States. The word "fast" associated with the mark ACCUTANE seems to refer to a fast result achieved with the use of ACCUTANE product. The hyphen in the disputed domain name does not provide the disputed domain name with any distinctive character from the Complainant's mark. The "Rx" element increases the confusion between the disputed domain name and the Complainant's mark, since it refers to prescription medicines and Accutane is a medicine.
The Panel finds that paragraph 4(a)(i) of the Policy has been proved by the Complainant, i.e., the disputed domain names are confusingly similar to the Complainant's trademark. B. Rights or Legitimate Interests
The Respondent has not submitted a Response to the Complaint, in accordance with paragraph 5 of the Rules.
The Respondent has no authorization to use the Complainant's trademark or to register domain names containing the trademark ACCUTANE.
The Respondent is not known by the trademark ACCUTANE.
For the above reasons, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been satisfied, i.e., the Respondent has no rights or legitimate interests in the disputed domain names. C. Registered a nd Used in Bad Faith
The trademark ACCUTANE is registered by the Complainant in several countries for pharmaceutical products.
The disputed domain names use the trademark ACCUTANE with the addition of generic terms that do not avoid confusion with the Complainant's trademark.
The Respondent has no rights or legitimate interests in using the trademark ACCUTANE.
The websites at the disputed domain names display pharmaceutical products named Accutane for the treatment of acne, with descriptions of the Complainant's Accutane product as well as other well-known pharmaceuticals.
In view of the above reasons, this Panel finds that by using the disputed domain names in connection with online pharmacies, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites, by creating a likelihood of confusion with the Complainant's trademark.
This Panel finds that the Respondent's intention of taking undue advantage of the trademark ACCUTANE as described in paragraph 4(b)(iv) of the Policy has been demonstrated.
For the above reasons, the Panel finds that the condition of paragraph 4(a)(iii) of the Policy has been satisfied, i.e., the disputed domain names have been registered and are being 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 names , , and be transferred to the Complainant.
Mario Soerensen Garcia
Sole Panelist
Date: July 24, 2015
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