The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, internally-represented.
The Respondent is John R. Slaughter, All Inc of Norman Wells, Canada. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 9, 2016. On August 9, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 August 12, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 1, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 2, 2016.
The Center appointed Eva Fiammenghi as the sole panelist in this matter on September 20, 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
According to the Complaint, the Complainant is 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 is the owner of several trademark registrations for ACCUTANE, ROACCUTAN and ROACCUTANE, which have been registered in numerous countries all over the world, before the Respondent’s registration of the disputed domain name. In that context, the Complainant owns inter alia international trademark registration No. 840371 for ACCUTANE, registered on December 6, 2004.
The trademarks ACCUTANE, ROACCUTAN and ROACCUTANE designate a prescription drug indicated for the treatment of severe nodular and/or inflammatory acne conglobate or recalcitrant acne.
The disputed domain name was registered on July 25, 2016.
The website of the disputed domain name is like an online pharmacy for online sale of ACCUTANE products. The homepage of the website has visible advertisements for the online sale of ACCUTANE to use forin the treatment of acne. 5. Parties’ Contentions A. Complainant
The Complainant argues that the disputed domain name is confusingly similar to its ACCUTANE trademark, considering that it reproduces entirely the trademark ACCUTANE. This reproduction in the disputed domain name of the Complainant’s trademark in its entirety is confusingly similar to the Complaint’s trademark despite the addition of the descriptive terms “buy” and “rx” (Forest Laboratories, Inc. v. WhoisGuard Protected,WIPO Case No. D2008-0005).
Actually, the terms “buy” and “rx” enhance the connection with the Complainant’s trademarks since they are commonly used in relation to prescription medicines such as Accutane. These terms have a clear and direct descriptive meaning in respect of medicinal products. These terms lead Internet users to think that they can buy ACCUTANE drugs on the Respondent’s website.
The Complainant states that the Respondent has no rights or legitimate interests in the disputed domain name, having no connection whatsoever with the Complainant.
The Complainant states that the Respondent registered the disputed domain name in bad faith, and uses the disputed domain name in order to illegitimately capitalize on the trademark of the Complainant, by intentionally attracting Internet users to the Respondent’s website for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source of the Respondent’s website.
The Complainant requests that the disputed domain name be transferred to it. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, the Complainant must prove that each of the three following elements is satisfied:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section 6.A.);
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name (see below, section 6.B.); and
(iii) The disputed domain name has been registered and is being used in bad faith (see below, section 6.C.).
Paragraph 4(a) of the Policy clearly states that the burden of proving that all these elements are present lies with the Complainant.
Pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences there from, as it considers appropriate. A. Identical or Confusingly Similar
Based on the above mentioned evidence, the Panel finds that the Complainant has proven that it is the owner of the trademark ACCUTANE.
The disputed domain name consists of the Complainant’s trademark with the addition of the descriptive elements “buy” and “rx”. , The Respondent has created confusing similarity between the disputed domain name and the trademarks of the Complainant.
As numerous prior UDRP panels have held in similar cases, it is clear that the disputed domain name is confusingly similar to the Complainant’s trademark ACCUTANE (noting the panel found similarly in the case regarding the domain name (F. Hoffmann-La Roche AG v. Private Whois Service,WIPO Case No. D2011-1970). B. Rights or Legitimate Interests
In order to determine whether the Respondent has any rights or legitimate interests in respect of the disputed domain name (paragraph 4(c) of the Policy), attention must be paid to any of the following circumstances in particular but without limitation:
(i) whether before any notice to the Respondent of the dispute, there is any evidence of the Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering goods or services;
(ii) whether the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights;
(iii) whether the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence before the Panel to show that the Respondent was acting pursuant to any rights or legitimate interests with respect to registering the disputed domain name.
Neither is there any evidence before the Panel that the Respondent has been authorized or licensed by the Complainant to use the Complainant’s well-known registered trademark.
Also, the Panel finds no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the disputed domain name in connection with a bona fide offering goods or services. The Panel notes in this regard, that there is nothing in the form of a disclaimer or other statement that discloses the nature of the Respondent’s relationship with the Complainant (or lack thereof), of a nature that could potentially give rise to a legitimate interest in the disputed domain name as an unauthorized reseller. Rather, the Panel finds that the Respondent has intentionally registered the disputed domain name in order to capitalize on the ACCUTANE trademark.
Therefore, the Respondent is not making legitimate noncommercial or fair use of the disputed domain name. On the contrary, the Respondent is using the disputed domain name to obtain commercial gain by misleadingly diverting consumers from the Complainant.
The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain name. The Panel therefore finds that the Complaint fulfills the second condition of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
First of all, regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts which constitute evidence of bad faith. However, this list is not exhaustive, but merely illustrative.
Paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:
“(iv) by using the domain name, [the Respondent] has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the Respondent’s] website or location or of a product or service on its website or location.”
Based on the available record, the Panel considers that the Respondent, by registering the disputed domain name, is trading on the Complainant’s valuable goodwill established in its registered trademark ACCUTANE as a well-known pharmaceutical product of the Complainant for the treatment of acne.
Again, by registering and using the disputed domain name incorporating the Complainant’s well-known registered trademark, the effect is to mislead Internet users and consumers into thinking that the Respondent is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business or that the Respondent’s activities are approved or endorsed by the Complainant. None of which, on the basis of the record available, is, in fact, the situation. Such misleading consequences, in the view of the Panel, are indicative of bad faith on the part of the Respondent.
Furthermore, the fact that the disputed domain name includes the Complainant’s well-known trademark ACCUTANE, held and used in commerce by the Complainant for several years prior to the date the Respondent became the registrant of the disputed domain name, the Respondent must have likely known and been aware of the Complainant’s rights in this mark at the time the Respondent registered the disputed domain name, which is a further factor supporting a conclusion of bad faith.
In light of the above, the Panel finds that the disputed domain name has been registered and is being used in bad faith pursuant to the third condition of paragraph 4(a) of the Policy. 7. Decision
For all 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.
Eva Fiammenghi
Sole Panelist
Dated: October 4, 2016
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