The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented by Jérôme Rhein, Switzerland.
The Respondent is Sergey Popov of Moscow, the Russian Federation / 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 August 26, 2015. On August 27, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 28, 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 September 4, 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 September 7, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 15, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 5, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 6, 2015.
The Center appointed Anders Janson as the sole panelist in this matter on October 26, 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 one of the world's leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics and has global operations in more than 100 countries. The trademarks ACCUTANE, ROACCUTAN and ROACCUTANE designate a prescription drug indicated for the treatment of severe modular and/or inflammatory acne conglobate or recalcitrant acne.
The Complainant's mark ACCUTANE holds protection with the International Registration No. 840,371, registered on December 6, 2004. Furthermore the Complainant has trademark protection according to their International Registration No. 450,092 for the mark ROACCUTAN. Priority date for the mark ROACCUTAN is August 21, 1979. The mark ROACCUTAN is also registered in an alternative form under ROACCUTANE in many countries such as China (by the Complainant), Malaysia, Singapore, Republic of Ireland and United Kingdom of Great Britain and Northern Ireland (by the Complainant's UK subsidiary Roche Products Ltd).
The Disputed Domain Name was registered on August 2, 2013. 5. Parties' Contentions A. Complainant
The Disputed Domain Name is confusingly similar to a trademark or service mark in which the Complainant has rights according to the Policy, paragraph 4(a)(i).
The Disputed Domain Name is confusingly similar to the Complainant's mark seeing that it incorporates the Complainant's trademark ACCUTANE in its entirety. The addition of the descriptive words "buy" and "online" does not sufficiently distinguish the Disputed Domain Name from the Complainant's trademark ACCUTANE. This is according to Wal-Mart Stores, Inc. v. Kuchora, Kal, WIPO Case No. D2006-0033 where the panel held that, "if a domain name incorporates a complainant's mark in its entirety, it is confusingly similar to that mark despite the addition of other words. It is well-established that the addition of a generic term to a trademark does not necessarily eliminate a likelihood of confusion". As a result, the Disputed Domain Name is confusingly similar to the Complainant's ACCUTANE trademark, making it possible for customers to believe that the Disputed Domain Name is related to the Complainant.
The Respondent has no rights of legitimate interests in respect of the Disputed Domain Name according to the Policy, paragraph a(a)(ii).
The Complainant has exclusive and prior rights in the trademark ACCUTANE, which precede the Respondent's registration of the Disputed Domain Name. The Respondent has no connection or affiliation with the Complainant and has not received any license or consent, expressed or implied, to use the Complainant's mark ACCUTANE.
The Respondent promotes and sells ACCUTANE drugs. Furthermore, the Disputed Domain Name redirects to an online pharmacy webpage. Such activity does not represent a legitimate noncommercial or fair use under the Policy, paragraph 4(c)(iii). By falsely implying that its pharmaceutical products are related or similar to those of the Complainant, the Respondent is using the Disputed Domain Name with the purpose of trading on the Complainant's goodwill.
According to Pfizer Inc. v. jg a/k/a Josh Green,WIPO Case No. D2004-0784, "several cases have found that 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 on-line pharmacy."
Furthermore, the Respondent did not reply to the Complainant's cease and desist letter and hence has not availed itself of the opportunity to present any case of legitimate interest that it might have. There is therefore no reason why the Respondent should have any right or interest in the Disputed Domain Name.
The Disputed Domain Name was registered and is being used in bad faith according to the Policy, paragraphs 4(a)(iii) and 4(b). The Disputed Domain Name was registered in bad faith as there is no doubt that at the time of the registration, i.e., on August 2, 2013, the Respondent had knowledge of the Complainant's product/mark ACCUTANE.
The Disputed Domain Name is being used in bad faith. The Disputed Domain Name contains the word "accutane" and displays an online pharmacy webpage in order to attract Internet users searching for the Complainant's ACCUTANE mark via search engines, including users who expect to be led to the Complainant's genuine website or to sites endorsed by the Complainant.
According to the above mentioned Pfizer Inc. v. jg a/k/a Josh Green, supra, bad faith is established when "the Respondent is using the domain names as a forwarding address to a for-profit on-line pharmacy". Therefore, the Respondent may generate unjustified revenues and is illegitimately capitalizing on the Complainant's mark ACCUTANE. The use of the Disputed Domain Name also raises questions of public health and safety as it redirects visitors to an online pharmacy where it is written: "No Prescription Required"; whereas the genuine ACCUTANE products is not available without a prescription.
According to Aventis, Aventis Pharma SA v. VASHA Dukes,WIPO Case No. D2004-0276, by having the possibility to acquire medication without prescription, "to a certain extent, Respondent is encouraging consumers to enter into an irresponsible pattern of conduct in the purchase of drugs and even to self-medication in respect to those that need prescription. Considering that Respondent is trading on the goodwill of Complainant's trademarks, it should be also taken into account that the conditions under which Respondent is offering the sale of 'aventis' may lessen the reputation associated with Complainants' trademarks".
As a result, the Respondent is deliberately using the Disputed Domain Name incorporating the Complainant's ACCUTANE mark in order to mislead the consumers and confuse them by making them believe that the Complainant recommends the websites behind those links.
In accordance with paragraph 4(i) of the Policy, and for the reasons described above, the Complainant requests the Administrative Panel appointed in this administrative proceeding that the Disputed Domain Name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Given the case file and the Respondent's failure to file a response, the Panel accepts as true the contentions of the Complainant. The Respondent's default does not however automatically lead to a transfer of the Disputed Domain Name. On the contrary, the Complainant still must establish that is it entitled to a transfer of the Disputed Domain Name under the Policy.
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) the Disputed Domain Name is identical or confusingly similar to the 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 Panel finds that the Complainant does have trademark rights in the ACCUTANE mark with reference to the trademark registrations.
The Disputed Domain Name, , contains the entire word "accutane", which is the Complainant's registered trademark. The fact that the Disputed Domain Name also contains the terms "buy" and "online" does not diminish the confusing similarity. The Panel therefore finds that the Disputed Domain Name is confusingly similar to the Complainant's trademark.
Accordingly, the Panel finds that the Complainant has satisfied the requirements under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
In this case, the Complainant has offered convincing explanations and enough evidence of its exclusive right concerning the ACCUTANE trademark. The Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name.
Therefore, the burden of production shifts to the Respondent to bring forward appropriate allegations or evidence of its rights or legitimate interests. The Respondent has not replied to the Complainant's contentions. The failure to file a response leaves the Panel to decide the case on the basis of the available record and the evidence provided by the Complainant. Upon consideration of the available record, the Panel is satisfied that the Respondent has no rights or legitimate interests in the Disputed Domain Name.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel finds that the Complainant's trademark is widely known, and, further, that it is highly unlikely that the Respondent was unaware of the Complainant's trademark as the Disputed Domain Name displays an online pharmacy webpage purporting to sell the Complaint's product in order to attract Internet users searching for the Complainant's ACCUTANE mark via search engines, including users who expect to be led to the Complainant's genuine website or to sites endorsed by the Complainant.
The Panel finds that the Disputed Domain Name was registered in bath faith. With respect to the use, the Respondent has used the Disputed Domain Name to divert visitors to the Respondent's website for its own commercial benefit. This constitutes evidence of registration and use of the Disputed Domain Name in bad faith in accordance with paragraph 4(b)(iv) of the Policy. There is no material in the record, which displaces this presumption.
The Panel finds that the Complainant has fulfilled the requirements under paragraph 4(a)(iii) 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.
Anders Janson
Sole Panelist
Date: November 9, 2015
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