The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally.
The Respondent is Domain Administrator, See PrivacyG of Phoenix, Arizona, United States of America ("USA") and Dmitry Petroff of Samara, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name is registered with NameSilo, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 12, 2015. On June 12, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 13, 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 16, 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 16, 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 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, together with its affiliated companies, one of the world's leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics and having global operations 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 Dmitry Petroff, of Samara, Russian Federation.
The disputed domain name was registered on May 28, 2015. 5. Parties' Contentions A. Complainant
The Complainant claims that the disputed domain name incorporates its trademark ACCUTANE with the addition of the generic term "ok." The Complainant cites a WIPO decision (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 predates the Respondent's registration of the disputed domain name and that the disputed domain name is 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 name, and that it uses it in bad faith. It argues that the Respondent is using the disputed domain name for commercial gain to direct to an online pharmacy offering pharmaceutical products, including medical products named ACCUTANE.
Finally, the Complainant requests the transfer of the disputed domain name. 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 name is 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 name; and
(iii) the disputed domain name has been registered and is 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 name comprises the Complainant's trademark ACCUTANE with the addition of a generic term.
The main element of the disputed domain name is "accutane", which is identical to the Complainant's trademark ACCUTANE and similar to the Complainant's trademarks ROACCUTAN and ROACCUTANE.
The expression "ok" and the "hyphen" are not enough to avoid confusion by Internet users. The expression "ok" refers to "correct/satisfactory" and the "hyphen" does not provide the mark with any distinctive character.
The Panel finds that paragraph 4(a)(i) of the Policy has been proved by the Complainant, i.e., the disputed domain name is 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 name. C. Registered and Used in Bad Faith
The trademark ACCUTANE is registered by the Complainant in several countries for pharmaceutical products.
The disputed domain name uses the trademark ACCUTANE with the addition of a hyphen and the expression "ok," which do not avoid confusion with the Complainant's trademark.
The Respondent has no rights or legitimate interests in using the trademark ACCUTANE.
The website at the disputed domain name displays products named Accutane for the treatment of acne, with description similar to 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 name in connection with an online pharmacy, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, 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 name has 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 name be transferred to the Complainant.
Mario Soerensen Garcia
Sole Panelist
Date: July 24, 2015
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