The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally.
The Respondent is James Maher, Maher of Lostine, Oregon, United States of America; Wuxi Yilian LLC of Xiamen, Fujian, China. 2. The Domain Name and Registrar
The disputed domain name is registered with B, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 30, 2015. On July 30, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 5, 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 August 5, 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 the same day.
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 August 14, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was September 3, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 4, 2014.
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 – amongst others – 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 United Kingdom of Great Britain and Northern Ireland’s subsidiary Roche Products Ltd. is the registered owner of various trademarks ROACCUTANE.
The disputed domain name was registered by the Respondent on May 13, 2014. 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 descriptive words “buy” and “online” as well as of the geographical indication “usa” is not enough to distinguish the disputed domain name from the trademark ACCUTANE.
The Complainant further contended 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 which promotes and sells ACCUTANE, other Complainant’s products, and the Complainant’s competitors’ products. The website available under the disputed domain name displays a disclaimer that reads as follows: “All product names mentioned herein are the trademarks of their respective owners. All mentioned trademarks and brand names such as Accutane, Isotretinion are the property of the respective trademark holders and are given for informative purposes only as an example of known products based on the same composition that products presented on this site.”
The Complainant furthermore alleges that the Respondent’s disclaimer on the website available under the disputed domain name is not effective because it is written in a very small font size, on the very bottom of the webpage and well below the link leading to the online pharmacy webpage. Besides, this disclaimer does not appear on the according online pharmacy website i.e., the webpage where Internet users can purchase ACCUTANE drugs among others.
Furthermore, the Complainant contends that the Respondent registered and used the disputed domain name in bad faith. According to the Complainant’s allegations the Respondent has deliberately chosen a domain name with a connection to the Complainant’s ACCUTANE mark in order to mislead the consumers, by creating a likelihood of confusion as to the source, affiliation and endorsement of the Respondent’s websites or of the products or services posted on or linked to the Respondent’s website. Moreover, the disputed domain name leads to an online pharmacy which does also advertise and sell Complainant’s competitors’ products. The Complainant further alleges that the Respondent had knowledge of the Complainant’s product/mark ACCUTANE at the time of the disputed domain name’s registration.
According to the Complainant the Respondent may further generate unjustified revenues and is illegitimately capitalizing on the ACCUTANE trademark.
Finally, according to the Complainant, the Respondent misleadingly promises on his website that no prescription is needed to buy ACCUTANE there. Despite this contradiction and despite the disclaimer found on the bottom of the webpage available under the disputed domain name, Internet users would reasonably rely on the Respondent’s website as a legitimate source to purchase ACCUTANE drugs since this website and the on-line pharmacy webpage provide standard information about ACCUTANE. 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 element ACCUTANE. Reference is made in particular to international word mark 840371 ACCUTANE, registered on September 21, 2004. This trademark predates the creation date of the disputed domain name which is May 13, 2014.
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 Inc.,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 the consensus of UDRP panels, the applicable generic Top-Level Domain (gTLD) “.org” in the disputed domain name is normally to be disregarded under the confusing similarity/identity test.
Furthermore, it is the view of this Panel that the addition of the geographic indication “usa” does not add distinctive matter so as to distinguish it from 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 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 US-American branch of the Complainant’s business.
Moreover, the addition of the further generic terms “buy” and “online” to a complainant’s trademark in a domain name is insufficient in to avoid a finding of confusing similarity (see WIPO Overview 2.0, paragraph 1.9). Along these lines were the decisions issued in prior UDRP cases involving the Complainant (see F. Hoffmann-La Roche AG v. Private Whois ,WIPO Case No. D2012-0422; F. Hoffmann-La Roche v. Whois Agent, Whois Privacy Protection Service,WIPO Case No. D2014-0496; F. Hoffmann-La Roche AG v. Aleksandr Bannikov, Ahmad Shefa/na, Alexander Sivkov, Amr Nayel/na, Amy Burke/na, Name Redacted/na, Name Redacted/PRIVATE, Andrew Jun/PRIVATE, Andrey Knish, Name Redacted/na, Angela Rubineau/na, Annette Stokes/na, Arihant Jain/na, Arnold Fong/na, Bennie Johnson/na, Bogdan Orlovskiy, Brenton Smith/na, Bruce Vanhouweling/PRIVATE, Cesar Veloso/na, Chada Ashok/PRIVATE, Daniel Engeberg/na, Daniel Reyes-Villa/PRIVATE, David Dunn/na, David Walls/PRIVATE, Davindra Jailall/na, Debora Meitz/na, Ded Lopytyt/na, Denis Kozenko, Dmitrij Shuvalov, Domain Manager/Deactivated Domains, Domain Manager/Moniker WIPO Disputed/Moniker Privacy Service, Donald Koehler/ PRIVATE, Dred Polk/na, Edward Prince/na, Evgeniy Foloev, Funty Aerok/na, Garrett Chumney/PRIVATE, George Nicoloff/na, Name Redacted/PRIVATE, Hamilton Platt/na, Hauld Timm/na, Heywood Gay/na, Hing Frank/PRIVATE, Irina Shcherban, Ivan/Ivan Pavlov, Ivan Mironov, James Benjamn/PRIVATE, Jill Haltigan/na, John Arnold/na, John Blumer/na, Joon-Seok Jeon/PRIVATE, Kelrko Roman/na, Ken Tashiro/PRIVATE, Kirill Ruzakov, Klaert Alrk/na, Krontak Ladik/Krontak Ladik Koroleva, Lars Van Gaal/ N/A, Name Redacted/PRIVATE, Mamatha Yeturu/na, Martha Severino/na, Name Redacted/na, Natalia Gerdt, Natalia Gerdt, Poloyanskyy Piter/na, Rajaa Zayoud/PRIVATE, Rajan Raj/na, Raymond Briski/na, Rety Mark/na, Richard Williams, Rlnty Rose/na, Rolando Rolandelli/na, Rolko Pouj/na, Ronald Treh/na, Rot Fweds/na, Route Kriss/Na, Rzeczycki Thomas/PRIVATE, Salma Tidda/na, Samma Rogozi/NA, Sara Relit/na, Shan Sivendra/na, Somel Kurter/na, Timur Fartew/na, Timur Hel/na, Tod Aria/na, Tommy Higher/na, Toor Rotmant/na, Name Redacted/na, Torry Solma/na, Tracy Johnston/PRIVATE, Tricia Etheridge/na, Trimer Strimer/na, Vera Guertler/PRIVATE, Vitaliy Romashchuk, vladimir kiskov, Vladimir Kiskov, Uta Beyer, NA/ Whois Agent, Web Domains By Proxy, Yegor Karpovich, Private Registration/WhoisGuardS,WIPO Case No. D2015-0066).
Finally, this Panel is also of the opinion that even the combination of a geographic and a generic term in the Respondent’s domain name with the Complainant’s trademark does not dispel confusion (see Playboy Enterprises International, Inc. v. Zeynel Demirtas,WIPO Case No. D2007-0768). Even if there are two generic and one geographic terms added in the disputed domain name, this cannot lead to a different result due to the fact that the Complainant’s trademark is not descriptive at all. It therefore clearly is and remains the dominant component of the Respondent’s domain name (see WIPO Overview 2.0, paragraph 1.9).
Hence, this Panel finds that the disputed domain name in dispute is confusingly similar to 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. In addition the Panel notes that there is no evidence showing that the Respondent might be commonly known by the disputed domain name.
Furthermore the disputed domain name contains a link that directs users to an online pharmacy on which ACCUTANE drugs as well as the Complainant’s competitors’ products are advertised and sold. Such use of the disputed domain name can clearly not be qualified as bona fide 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). It is true that the website available under the disputed domain name displays a disclaimer. However, this disclaimer is not sufficient to exclude that consumers are misleadingly diverted. Firstly, the disclaimer is written in a very small font size; secondly, it is positioned on the bottom of the webpage and well below the link leading to the online pharmacy webpage. Besides, the disclaimer does not appear on the corresponding online pharmacy website, i.e., the webpage where Internet users can purchase ACCUTANE drugs among others. Against this background and in accordance with other panel decisions, this Panel considers the disclaimer as not sufficient (see Sanofi-aventis v. Shashi c/o Dynadot Privacy,WIPO Case No. D2007-1313; Pliva, Inc. v. Eric Kaiser,WIPO Case No. D2003-0316). Further, by the time Internet users read the disclaimer, the disputed domain name has already diverted them from the Complainant’s legitimate websites (Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic,WIPO Case No. D2000-1698). The fact that users, once so diverted or attracted, are confronted with a disclaimer does not cure the initial and illegitimate diversion (see Estée Lauder Inc. v. , and Jeff Hanna,WIPO Case No. D2000-0869).
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 well-known character of the Complainant’s trademark and the fact that it relates to pharmaceutical products, the Panel finds that said mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant (see F. Hoffmann-La Roche AG v. Aleksandr Bannikov, Ahmad Shefa/na, Alexander Sivkov, Amr Nayel/na, Amy Burke/na, Name Redacted/na, Name Redacted/PRIVATE, Andrew Jun/PRIVATE, Andrey Knish, Name Redacted/na, Angela Rubineau/na, Annette Stokes/na, Arihant Jain/na, Arnold Fong/na, Bennie Johnson/na, Bogdan Orlovskiy, Brenton Smith/na, Bruce Vanhouweling/PRIVATE, Cesar Veloso/na, Chada Ashok/PRIVATE, Daniel Engeberg/na, Daniel Reyes-Villa/PRIVATE, David Dunn/na, David Walls/PRIVATE, Davindra Jailall/na, Debora Meitz/na, Ded Lopytyt/na, Denis Kozenko, Dmitrij Shuvalov, Domain Manager/Deactivated Domains, Domain Manager/Moniker WIPO Disputed/Moniker Privacy Service, Donald Koehler/ PRIVATE, Dred Polk/na, Edward Prince/na, Evgeniy Foloev, Funty Aerok/na, Garrett Chumney/PRIVATE, George Nicoloff/na, Name Redacted/PRIVATE, Hamilton Platt/na, Hauld Timm/na, Heywood Gay/na, Hing Frank/PRIVATE, Irina Shcherban, Ivan/Ivan Pavlov, Ivan Mironov, James Benjamn/PRIVATE, Jill Haltigan/na, John Arnold/na, John Blumer/na, Joon-Seok Jeon/PRIVATE, Kelrko Roman/na, Ken Tashiro/PRIVATE, Kirill Ruzakov, Klaert Alrk/na, Krontak Ladik/Krontak Ladik Koroleva, Lars Van Gaal/ N/A, Name Redacted/PRIVATE, Mamatha Yeturu/na, Martha Severino/na, Name Redacted/na, Natalia Gerdt, Natalia Gerdt, Poloyanskyy Piter/na, Rajaa Zayoud/PRIVATE, Rajan Raj/na, Raymond Briski/na, Rety Mark/na, Richard Williams, Rlnty Rose/na, Rolando Rolandelli/na, Rolko Pouj/na, Ronald Treh/na, Rot Fweds/na, Route Kriss/Na, Rzeczycki Thomas/PRIVATE, Salma Tidda/na, Samma Rogozi/NA, Sara Relit/na, Shan Sivendra/na, Somel Kurter/na, Timur Fartew/na, Timur Hel/na, Tod Aria/na, Tommy Higher/na, Toor Rotmant/na, Name Redacted/na, Torry Solma/na, Tracy Johnston/PRIVATE, Tricia Etheridge/na, Trimer Strimer/na, Vera Guertler/PRIVATE, Vitaliy Romashchuk, vladimir kiskov, Vladimir Kiskov, Uta Beyer, NA/ Whois Agent, Web Domains By Proxy, Yegor Karpovich, Private Registration/WhoisGuardS,WIPO Case No. D2015-0066).
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 web site 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 web site or location or of a product or service on its web site 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 advertising and selling ACCUTANE andcompetitive products 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). It is well-established that using a domain name which incorporates a trademark to offer the products of competitors of the trademark owner is likely to cause confusion among Internet users as to the source of products or to confusingly suggest sponsorship by the trademark owner (see Hoffmann-La Roche, Inc. vs. Hightech Industries, Andrew Browne,WIPO Case No. D2010-0240; Six Continent Hotels, Inc. v. The Omnicorp, WIPO Case No. D2005-1249; Exel Oyj v. KH Trading, Inc.,WIPO Case No. D2004-0433).
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 geographical and generic terms is a clear indication of the Respondent’s bad faith (see Hoffmann-La Roche Inc. v. home, Konstantin Kovalevski,WIPO Case No. D2012-2243).
Finally the disclaimer does not affect the Panel’s conclusion following which the Respondent has registered and used the disputed domain name in bad faith. Indeed, the Panel finds that the misleading choice of the disputed domain name, suggesting that it has some connection with the Complainant, will have already achieved the desired result by the time an Internet user arrives at the Respondent’s website. The disputed domain name will have already successfully “hooked” the Internet user; by the time the user realizes that he has not arrived at a website operated by the Complainant, he will have already been exposed to the promotional material relating to the Respondent (see World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe,WIPO Case No. D2008-0642).
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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