The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, internally represented.
The Respondent is Domain Admin, Whois Privacy Corp. of New Providence, Bahamas. 2. The Domain Name and Registrar
The disputed domain names and are registered with Internet Domain Service BS Corp and Internet Domain Service BS Corp (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 22, 2016. On February 22, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 23, 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 March 3, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 23, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 24, 2016.
The Center appointed Piotr Nowaczyk as the sole panelist in this matter on April 12, 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 (“UK”) 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.
Furthermore, the Complainant owns the XENICAL mark (International Trademark registration No. 612,908 for goods in class 5), registered on December 14, 1993 with the priority date of August 5, 1993.
The mark XENICAL is a prescription medicine used with a low calorie diet to increase weight loss in people with obesity.
The disputed domain names were both registered on January 28, 2016.
On February 1, 2016, the Complainant sent the Respondent 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 and XENICAL marks since they incorporate the Complainant’s marks in their entirety. It further asserts that the addition of generic terms such as “buy” and “cheap” and “online” does not eliminate the likelihood of confusion between the disputed domain names and the ACCUTANE and XENICAL marks. 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 and XENICAL 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’s answer “Hey, I regret. How can I help you” to its cease and desist letter proves that the Respondent obviously was not interested in presenting any case of legitimate interest that it might have with no longer reply to the follow-up writing (and final deadline) given by the Complainant.
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 28, 2016 is well after the Complainant’s registration of its ACCUTANE and XENICAL marks. Moreover, the Complainant contends that the disputed domain names contain the words “Accutane” and “Xenical” and display an online pharmacy webpage in order to attract Internet users searching for the Complainant’s ACCUTANE and XENICAL marks 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 asserts the Respondent is deliberately using the disputed domain names with a connection to the Complainant's ACCUTANE and XENICAL marks in order to mislead the consumers and confuse them by making them believe that the websites behind those links are associated or recommended by Complainant. 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 three elements for each of the disputed domain names:
(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. A. Identical or Confusingly Similar
The Complainant has proven that the disputed domain names and are confusingly similar to the ACCUTANE and XENICAL marks.
The Complainant owns the ACCUTANE and XENICAL marks which are protected internationally through their registrations. 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 “cheap” and “online” 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, Alexey Gavrilo,WIPO Case No. D2008-0716). The Panel also approves the common view that generic Top-Level Domains (“gTLDs”) can be generally 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 and XENICAL branded drugs and drugs from competitors.
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 disputed domain names were registered in bad faith. The Respondent’s registration of the disputed domain names on January 28, 2016 is well after the Complainant’s registration of the ACCUTANE and XENICAL marks which are internationally known.
The disputed domain names are being used in bad faith. Firstly, the disputed domain names contain the words “accutane” and “xenical” display an online pharmacy webpage. This way they attract Internet users searching for the ACCUTANE and XENICAL marks 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).
To sum up, the Respondent is deliberately using the disputed domain names with a connection to the ACCUTANE and XENICAL marks to promote competing goods 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 26, 2016
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