The Complainant is Hoffmann-La Roche Inc. of Nutley, New Jersey, United States of America, represented internally.
The Respondent is Irina Kosina of Kaluga, the Russian Federation. 2. The Domain Name and Registrar
The disputed domain name (the "Disputed Domain Name") is registered with PDR Ltd. d/b/a PublicDomainR (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 16, 2015. On November 16, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 20, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 10, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 11, 2015.
The Center appointed Michael D. Cover as the sole panelist in this matter on December 16, 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 Disputed Domain Name was registered on October 28, 2015.
The Complainant is a company duly organized under the laws of the State of New Jersey, United States of America. The Complainant is a member of the Roche Group of companies, one of the world's leading research-based healthcare groups, with operations on a global scale.
The Complainant registered the trademark KLONOPIN in the United States of America in 1986 and 1998, with the earlier registration claiming use since 1986. The Complainant's trademark is registered in the US for anticonvulsant preparations and pharmaceutical preparations for the treatment of panic disorder.
All that is known about the Respondent is that she is the registrant of the Disputed Domain Name and that she has an address in the Russian Federation.
The Complainant sent a cease and desist letter to the Respondent on November 5, 2015 but no response was received.
The Disputed Domain Name was registered on October 28, 2015, and resolves to a website selling "Generic Klonopin Online Without Prescription", as well as other medications. 5. Parties' Contentions A. Complainant
The Complainant submits that the Disputed Domain Name is confusingly similar to the Complainant's trademark. It says that the Disputed Domain Name only differs from the Complainant's trademark by the addition of the non-distinctive elements "buy" and "safe". It states that these additions do not eliminate the confusing similarity between the Disputed Domain Name and the Complainant's trademark. The Complainant notes Hoffmann-La Roche Inc., Roche Products Limited v. Vladimir Ulyanov,WIPO Case No. D2011-1474, where it was stated that "when a domain name wholly incorporates a complainant's registered mark, that may be sufficient to establish confusing similarity for the purpose of the Policy". It also notes that the same decision states that "it is a well-established principle that the addition of generic and/or generic terms to a complaint's trademark in a domain name case does not dispel confusion".
The Complainant contends the Respondent has no rights or legitimate interests in the Disputed Domain Name. It states that the Complainant has the exclusive and prior rights to the trademark KLONOPIN, which was registered well before the Disputed Domain Name. The Complainant also states that "the Respondent has no connection or affiliation with the Complainant and that the Respondent has not received any licence or consent, express or implied, to use the Complainant's mark KLONOPIN". The Complainant notes Pfizer Inc. v. jg a/k/a Josh Green,WIPO Case No. D2004-0784,where it was 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 to an on-line pharmacy".
The Complainant states that the Respondent is using the Disputed Domain Name to direct Internet users to an on-line pharmacy which seems to sell competing products, that is, generic products rather than KLONOPIN and third party products sold under different trademarks.
It submits that the Respondent is not and has never been commonly known by the Disputed Domain Name, whereas the Complainant has used its trademark since 1986. The Claimant also submits that the Respondent is not making legitimate non-commercial or fair use of the Disputed Domain Name.
The Complainant submits that the Disputed Domain Name has been registered and is being used in bad faith. It notes that the Disputed Domain Name contains the Complainant's trademark in its entirety and directs Internet users to an on-line pharmacy website in order to attract Internet users seeking the Complainant's products sold under the Complainant's trademark.
The Complainant requests that the Administrative Panel order 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
According to paragraph 4(a) of the Policy, the Complainant is required to demonstrate, on the balance of probabilities, that the Disputed Domain Name is identical or confusingly similar to the Complainant's trademark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel accepts that the Disputed Domain Name is confusingly similar to the Complainant's trademark KLONOPIN in which it has rights. The Complainant has registered rights in its trademark, having registered the trademark in the US, and the Panel also finds on the balance of probabilities that the Complainant has common law rights in its trademark. The Complainant's US trade mark registrations claim use from 1986 and 1997 respectively and it is a reasonable inference that sales have been substantial in the US over that period, even though the Complainant does not cite any such sales levels, either by value or volume.
The Disputed Domain Name incorporates the Complainant's trademark in its entirety. The Panel finds that the addition of the prefix "buy" and the suffix "safe", both generic and non-distinctive elements, does not alter the fact that the Complainant's trademark is the dominant element of the Disputed Domain Name and finds that the Disputed Domain Name is confusingly similar to the Complainant's trademark.
The Panel therefore finds that the first of the three elements of the Policy is proved. B. Rights or Legitimate Interests
The panel accepts that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Complainant has established that the Respondent has not been authorized or licensed to use the Complainant's trademark in the Disputed Domain Name.
There is no evidence to suggest that the Respondent has, before notice of the dispute, made demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services. There is also no evidence to suggest that the Respondent has been commonly known by the Disputed Domain Name or that the Respondent has been making legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain misleadingly to divert consumers or tarnish the Complainant's trademark. The evidence in fact points in the other direction, with the Disputed Domain Name being used for a website which is an on-line pharmacy which offers, without prescription, "generic Klonopin" and other products which compete with those products sold under the Complainant's trademark. C. Registered and Used in Bad Faith
The Panel also accepts that the Respondent has registered and is using the Disputed Domain Name in bad faith. It is a reasonable inference that the Complainant's trademark is well-known, at least in the US, and that this was known to the Respondent when registering the Disputed Domain Name and then arranging the link to the on-line pharmacy. The Panel finds that, by using the Disputed Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship or affiliation of that website, which sells products that compete with those sold under the Complainant's trademark. 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.
Michael D. Cover
Sole Panelist
Date: January 3, 2016
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