The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally.
The Respondent is Ivan Polyakov of Minsk, Belarus. 2. The Domain Names and Registrar
The disputed domain names and are registered with Gandi SAS (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 19, 2016. On the same date, Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 21, 2016, 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 February 25, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 15, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 17, 2016.
The Center appointed Piotr Nowaczyk as the sole panelist in this matter on March 24, 2016. 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 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.
The Complainant owns the ACCUTANE mark (International Trademark registration No. 840,371 for goods in class 5, registered on December 6, 2004) and ROACCUTAN mark (International Trademark registration no. 450,092 for goods in class 5, registered on December 13, 1979). The ROACCUTAN mark is registered in the alternative form ROACCUTANE in many countries such as, Malaysia, Singapore, Ireland and United Kingdom of Great Britain and Northern Ireland by the Complainant’s UK subsidiary Roche Products Ltd.
The ACCUTANE, ROACCUTAN and ROACCUTANE marks designate a prescription drug indicated for the treatment of severe nodular and/or inflammatory acne conglobata or recalcitrant acne.
The disputed domain names were both registered on January 27, 2016.
On February 1, 2016, the Complainant sent the Respondent an email serving as a cease and desist letter. 5. Parties’ Contentions A. Complainant
Firstly, the Complainant contends that the disputed domain names are confusingly similar to its ACCUTANE mark since they incorporate the Complainant’s mark in its entirety. It further asserts that the addition of generic terms such as “buy” and “withoutprescription” does not eliminate the likelihood of confusion between the disputed domain names and the ACCUTANE mark. According to the Complainant the generic Top-Level Domain (“gTLD”) “.top” does not negate their confusing similarity as it is a necessary component of a domain name and does not give any meaning or distinctiveness. As a result, the disputed domain names are confusingly similar to the Complainant’s mark, making it possible for customers to believe that the disputed domain names are related to the Complainant.
Secondly, the Complainant asserts that the Respondent is not affiliated with the Complainant in any way and there is no evidence suggesting that the Respondent has registered the disputed domain names for the bona fide offering of legitimate goods or services. To the contrary, the Respondent operates an online pharmacy which promotes and sells ACCUTANE-branded drugs without a prescription. According to the Complainant, by falsely implying that its pharmaceutical products are related or similar to those of the Complainant, the Respondent is using the disputed domain names with the purpose of trading on the Complainant’s goodwill. Furthermore, the Complainant contends that the Respondent did not reply to its cease and desist letter and hence has not availed itself of the opportunity to present any case of rights or legitimate interest that it might have.
Thirdly, the Complainants states that the disputed domain names were registered and are being used in bad faith. It underlines that the Respondent’s registration of the disputed domain names on January 27, 2016 is well after the Complainant’s registration of its ACCUTANE mark. Moreover, the Complainant contends that the disputed domain names contain the word “Accutane” and display an online pharmacy webpage in order to attract Internet users searching for the Complainant’s ACCUTANE mark via search engines. According to Complainant, the disputed domain names lead to an online pharmacy which advertises and sells products of competitors of the Complainant. The Complainant is also concerned about the Respondent’s statement that prescription is not needed to buy ACCUTANE through its website since one of the disputed domain names contains the words “without prescription” and the claim “buy accutane without prescription” can be found on the online pharmacy associated to the disputed domain names, while genuine ACCUTANE is not available without a prescription. The Complainant asserts that the Internet users would reasonably rely on the website to which the disputed domain name resolves as a legitimate source to purchase ACCUTANE since the online pharmacy associated to the disputed domain names provides standard information about ACCUTANE. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy places a burden on the complainant to prove the presence of three separate elements. The three elements can be summarized as follows:
(a) the domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(b) the respondent has no rights or legitimate interests in the domain name; and
(c) the domain name has been registered and is being used by the respondent in bad faith.
The requested remedy may only be granted if the above criteria are met simultaneously. A. Identical or Confusingly Similar
The Complainant has proven that the disputed domain names and are confusingly similar to the ACCUTANE mark.
The Complainant owns the ACCUTANE mark which is protected internationally. The disputed domain names incorporate the ACCUTANE mark in its entirety. The Panel does not find that the addition of generic terms such as “buy” and “withoutprescription” to eliminate the likelihood of confusion between the disputed domain names. Other UDRP panels have repeatedly held that merely adding a descriptive addition or generic term to a trademark, such as “buy” may not sufficiently distinguish the domain name from the trademark (See e.g. Forest Laboratories, Inc. v. Fra Zero Tech,WIPO Case No. D2008-0716). The Panel also approves the common view that gTLDs can be disregarded for purposes of the first element.
The Panel therefore finds that the Complaint meets the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The overall burden of proof on this element rests with the complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to rebut the complainant’s contentions. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (see Danzas Holding AG, DHL Operations B.V. v. Ma Shikai,WIPO Case No. D2008-0441; see also the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1 and cases cited therein).
The Panel notes the following circumstances presented in the Complaint in relation to the lack of rights or legitimate interests of the Respondent in the disputed domain names: (a) the Respondent is not affiliated or related to the Complainant in any way; (b) there is no evidence suggesting that the Respondent has registered the disputed domain names for the bona fide offering of legitimate goods or services; and (c) the Respondent operates an online pharmacy which promotes and sells ACCUTANE-branded drugs and drugs from competitors without a prescription.
Accordingly, in the absence of any evidence to support a possible basis on which the Respondent may have rights or legitimate interests in respect of the disputed domain name, the Panel accepts the Complainant’s unrebutted prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and concludes that the second element of paragraph 4(a)(ii) of the Policy is satisfied.
Therefore, the Panel considers the requirement of paragraph 4(a)(ii) of the Policy fulfilled. C. Registered and Used in Bad Faith
From the evidence submitted before the Panel, it is clear that the Respondent registered and is using the disputed domain names in bad faith.
The domain names were registered in bad faith. The Respondent’s registration of the disputed domain names on January 27, 2016 is well after the Complainant’s registration of the mark ACCUTANE which is widely known internationally.
The domain names are being used in bad faith. Firstly, the disputed domain names contain the word “accutane” and display an online pharmacy webpage. This way they attract Internet users searching for the 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 (See Pfizer Inc. v. jg a/k/a Josh Green,WIPO Case No. D2004-0784).
Secondly, since the disputed domain names lead to an online pharmacy which advertises and sells products of competitors of the Complainant, they are likely to cause confusion among Internet users as to the source of products or to confusingly suggest sponsorship by the Complainant. (See e.g., Six Continent Hotels, Inc. v. The Omnicorp,WIPO Case No. D2005-1249; Exel Oyj v. KH Trading, Inc.,WIPO Case No. D2004-0433).
Finally, the failure of the Respondent to reply to the Complainant’s cease and desist letter is a further indication of bad faith. A previous panel found “the Respondent’s conduct in failing to reply to the Respondent’s cease and desist letter to be a compounding factor in bad faith (Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163)”. See Pearson Education, Inc v. CTP Internacional; Private Registration at Directi Internet Solutions Pvt. Ltd. and ,WIPO Case No.D2009-0266.
To sum up, the Respondent is deliberately using the disputed domain names with a connection to the ACCUTANE mark in order to mislead the consumers and confuse them by making them believe that the websites behind those links are associated or recommended by the Complainant.
Therefore, the Panel finds that the Complaint satisfies the requirement from 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 names, and be transferred to the Complainant.
Piotr Nowaczyk
Sole Panelist
Date: April 7, 2016
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