The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, internally represented.
The Respondent is Jason Barnes, ecnopt of Advance, North Carolina, United States of America ("United States"). 2. The Domain Name and Registrar
The disputed domain name is registered with D, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 28, 2015. On July 28, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 28, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 5, 2015. In accordance with the Rules, paragraph 5, the due date for Response was August 25, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 26, 2015.
The Center appointed Tobias Malte Müller as the sole panelist in this matter on September 18, 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 registered owner of the international trademark number 840371 ACCUTANE (word), registered on September 21, 2004 for pharmaceutical products in class 5 and international trademark number 450092 ROACCUTAN (figurative), registered on August 21, 1979 for goods in class 5.
Furthermore the Complainant's subsidiary in the United Kingdom of Great Britain and Northern Ireland Roche Products Ltd. is the registered owner of various trademarks ROACCUTANE.
The disputed domain name was registered by the Respondent on February 24, 2010. 5. Parties' Contentions A. Complainant
It results from the Complainant's undisputed allegations that the Complainant is together with its affiliated companies one of the world's leading research-focused healthcare groups in the field of pharmaceuticals and diagnostics.
The Complainant contends that the disputed domain name is confusingly similar to its trademarks ACCUTANE, ROACCUTAN and ROACCUTANE. Especially, the trademark ACCUTANE is wholly incorporated in the disputed domain name. The addition of the geographical indication "Canada" is not enough to distinguish the disputed domain name from the trademark ACCUTANE.
It further results from the Complainant's undisputed contentions that the Respondent has no prior rights or legitimate interests in the disputed domain name. In particular, the Respondent has no connection or affiliation with the Complainant and has not received any license or consent to use the Complainant's mark ACCUTANE.
The Complainant contends that on the website accessible under the disputed domain name, the Respondent advertises the sale of ACCUTANE drugs. In addition, the disputed domain name is used to redirect Internet users to an online pharmacy.
Furthermore, the Complainant contends that the Respondent registered and used the disputed domain name in bad faith. According to the Complainant's allegations, by using the identical sign ACCUTANE in its Internet presence as well as in the disputed domain name, the Respondent deliberately created a likelihood of confusion with the Complainant's trademarks. Furthermore the Complainant alleges that the Respondent had knowledge of the Complainant's product/mark ACCUTANE at the time of the disputed domain name's registration. The Complainant further contends that the Respondent also intends to mislead consumers about the background of its services. Consumers have the impression that there must be a commercial relationship between the Respondent and the Complainant. According to the Complainant, the Respondent further tries to benefit from the good reputation of the Complainant. Finally, so the Complainant, by using the disputed domain name , the Respondent intentionally attempts to attract Internet users to its website, by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, and endorsement of its website or of the products or services posted on or linked to the Respondent's website. In fact, the disputed domain name leads to an online pharmacy which advertises and sells some of the Complainant's competitors' products.
Finally, according to the Complainant, the Respondent misleadingly promises on its website that prescription is not needed to buy ACCUTANE and provides a link to an online pharmacy which sells pharmaceuticals without requiring proof of a physical examination by a physician. This behavior might cause harm to potential Internet users buying and taking ACCUTANE under the erroneous impression that they are dealing with the Complainant. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable".
Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements in order to obtain an order that the disputed domain name should be transferred or cancelled:
(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.
The Panel is satisfied that the registrant of record for the disputed domain name is the Respondent and will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied. A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must first of all establish rights in a trademark or service mark and secondly establish that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
It results from the evidence provided that the Complainant is the registered owner of various trademark registrations for and/or including the verbal element "Accutane". Reference is made in particular to international wordmark 840371 ACCUTANE, registered on September 21, 2004. This trademark predates the creation date of the disputed domain name which is February 24, 2010.
Many UDRP panels have found that a disputed domain name is confusingly similar to a complainant's trademark where the disputed domain name incorporates the complainant's trademark in its entirety (e.g., Compagnie Générale des Etablissements Michelin v. Christian Viola,WIPO Case No. D2012-2102; Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack,WIPO Case No. D2015-0070; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies,WIPO Case No. D2015-0812; Rhino Entertainment Company v. DomainS,WIPO Case No. D2006-0968; SurePayroll, Inc. v. Texas International Property Associates,WIPO Case No. D2007-0464). This Panel shares this view and notes that the Complainant's registered trademark ACCUTANE is fully included in the disputed domain name. Furthermore and according to prior UDRP-decisions, the applicable top-level suffix ".org" in the disputed domain name is typically disregarded under the confusing similarity/identity test.
Finally, it is the view of this Panel that the addition of the geographic indication "Canada" does not add distinctive matter so as to distinguish it from the Complainant's trademark. In numerous UDRP Decisions, panels have found that the addition of a geographic indication to a distinctive trademark does not diminish the distinctiveness of the trademark (see AT&T Corp. v. WorldclassM,WIPO Case No. D2000-0553, and Sanofi-Aventis v. Andrey Volkovich,WIPO Case No. D2010-1230; see also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.9). In this particular case, this term rather leads to confusing the Internet users who will think that the website triggered through the disputed domain name may represent the Canadian branch of the Complainant's business.
Hence, this Panel finds that the disputed domain name is confusingly similar to the Complainant's trademark ACCUTANE pursuant to the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must secondly establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
With respect to this requirement, a complainant is generally required to make a prima facie case that a respondent lacks rights or legitimate interests and, once such prima facie case is made, the burden of production shifts to the respondent to submit appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name (WIPO Overview 2.0, paragraph 2.1).
According to paragraph 4(c) of the Policy the following circumstances, if proved, demonstrate a respondent's rights or legitimate interests in a domain name:
(i) the respondent used or demonstrably prepared to use the domain name or corresponding name in connection with a bona fide offering of goods or services prior to notice of the dispute;
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the complainant's marks.
Considering the facts at hand, the Panel finds that the Complainant has made a prima facie case and the Respondent, which has not responded to the merits of the Complaint, has failed to demonstrate any rights or legitimate interests in the disputed domain name. The mere registration of a domain name does not give rise to a "legitimate interest" (Sanofi-Aventis v. Domain Admin/ Andrey Volkovich,WIPO Case No. D2010‑2009).
According to the Complaint, which has thus remained unchallenged, the Complainant has not authorized the Respondent's use of the trademark ACCUTANE, e.g. by registering the disputed domain name comprising said mark entirely.
The website under the disputed domain name contains neither any disclaimer as to the lack of association with the Complainant nor is the Respondent's name and contact information published anywhere. Furthermore, that website contains a link that directs users to an online pharmacy which advertises and sells some of the Complainant's competitors' products. Such use of the disputed domain name can clearly not be qualified as bona fide offering of goods or services since it rather has a high propensity to mislead and divert consumers. A registrant has no legitimate interest in a domain name that is similar to a pharmaceutical manufacturer's mark and that is being used to direct consumers to an online pharmacy (Pfizer Inc. v. jg a/k/a Josh Green,WIPO Case No. D2004-0784).
Furthermore, the Panel notes that there is no evidence showing that the Respondent might be commonly known by the disputed domain name.
In view of the above, it also follows that the disputed domain name is not being used in connection with a legitimate, noncommercial or fair use. Indeed, in light of the Complainant's trademark's well-known character and the fact that it relates to pharmaceutical products, the Panel finds that said mark could not legitimately be adopted for purpose other than creating the impression of an association with the Complainant.
The Panel therefore finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the disputed domain name according to paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, "in particular but without limitation", be evidence of the disputed domain name's registration and use in bad faith. One of these circumstances is that the Respondent by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location or of a product or service on its website or location (paragraph 4(b)(iv) of the Policy).
It is the view of this Panel that the Respondent has used the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the ACCUTANE-trademark as to the source, sponsorship, affiliation or endorsement of its website. According to the Complainant's non-contested allegations, the Respondent's website advertises the sale of ACCUTANE drugs redirecting Internet users to an online pharmacy and did therefore benefit from the confusion arising from the similarities in the disputed domain name and services offered by the Complainant and purported to be offered by the Respondent (see Hoffmann-La Roche Inc. v. Domain Admin / Michael Carillo,WIPO Case No. D2015-0160).
Therefore, it is highly likely that the Respondent received revenue from Internet users who came across the Respondent's website by means of confusion with the ACCUTANE trademark (see The Chancellor, Masters and Scholars of the University of Oxford v. Almutasem Alshaikhissa,WIPO Case No. D2014-2100; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies, supra). In view of the distinctive quality possessed by the mark ACCUTANE, which is the Complainant's well-known trademark, the Respondent's registration of a domain name consisting of this word combined with a geographical term is a clear indication of the Respondent's bad faith (see Hoffmann-La Roche Inc. v. home, Konstantin Kovalevski,WIPO Case No. D2012-2243).
In the light of the above the Panel finds that the disputed domain name has been registered and is being used in bad faith pursuant to paragraph 4(b)(iv) 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.
Tobias Malte Müller
Sole Panelist
Date: October 2, 2015
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