Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally.
Respondent is Alexis Uvarovis, Flee Ventures 4 of Belize / 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, 2016. On August 26, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 29, 2016, 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 Complainant on August 30, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on August 31, 2016.
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 Respondent of the Complaint, and the proceedings commenced on September 6, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 26, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 27, 2016.
The Center appointed Richard Tan as the sole panelist in this matter on October 3, 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
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 has global operations in more than 100 countries.
It is the owner of the ACCUTANE trademark registered under International Registration No. 840371, registered on December 6, 2004, the ROACCUTAN trademark registered under International Registration No. 450092, the latter with a priority date of August 21, 1979, and either Complainant or its United Kingdom of Great Britain and Northern Ireland (“UK”) subsidiary owns the ROACCUTANE trademark registered in many countries including China, Malaysia, Singapore, Ireland and UK.
The trademarks ACCUTANE, ROACCUTAN and ROACCUTANE designate a prescription drug indicated for the treatment of severe nodular and/or inflammatory acne conglobata or recalcitrant acne.
The disputed domain name was registered on December 14, 2015.
The disputed domain name resolves to an on-line pharmacy website that promotes and sells, amongst other products, Accutane drugs. 5. Parties’ Contentions A. Complainant
Complainant contends that Respondent has registered and is using the disputed domain name which is confusingly similar to Complainant’s mark and incorporates Complainant’s ACCUTANE trademark in its entirety. The addition of the descriptive words “buy” and “online” as well as the use of a hyphen does not sufficiently distinguish the disputed domain name from the ACCUTANE trademark.
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name. Complainant has exclusive and prior rights in the ACCUTANE trademark, which precede Respondent’s registration of the disputed domain name. Respondent has no connection or affiliation with Complainant and has not received any license or consent, express or implied, to use Complainant’s mark ACCUTANE. Respondent has falsely represented that its pharmaceutical products sold on its website are related or similar to those of Complainant, and by doing so, Respondent is using the disputed domain name with the purpose of trading on Complainant’s goodwill. Respondent’s activities do not represent a legitimate, noncommercial or fair use.
Furthermore, Respondent did not reply to Complainant’s cease and desist letter and has not presented any case of legitimate interest.
Complainant contends that the disputed domain name was registered and is being used in bad faith.
Respondent has intentionally used the disputed domain name with Complainant’s mark without consent from Complainant in order to attract Internet users searching for Complainant’s ACCUTANE mark via search engines, including users who expect to be led to Complainant’s genuine website or to sites endorsed by Complainant. Respondent is generating revenues and illegitimately capitalizing on Complainant’s ACCUTANE trademark. Respondent had actual notice of Complainant’s rights in its ACCUTANE trademark through Complainant’s extensive and long-standing use of the ACCUTANE marks which long predates the registration date of the disputed domain name. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Complainant has the burden of proving each of the following three elements under paragraph 4(a) of the Policy in order to be entitled to a transfer of the disputed domain name:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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
Based on the evidence adduced by Complainant as noted above, this Panel has no hesitation in finding that Complainant has rights in the ACCUTANE mark and the other similar related marks cited by Complainant. These marks have been registered and have been used by Complainant on its pharmaceutical and other products around the world. This Panel is also satisfied that Complainant has established unregistered trademark rights in the marks by its long use and sales.
The threshold test for confusing similarity under the Policy involves a comparison between the relevant marks belonging to Complainant and the disputed domain name to ascertain the presence of the trademark in the disputed domain name. In order to satisfy this test, the relevant marks would generally need to be recognizable as such within the disputed domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent a finding of confusing similarity.
The disputed domain name incorporates Complainant’s ACCUTANE mark in its entirety. The mere inclusion of generic, descriptive or common words as, in this case, “buy” and “online”, is not sufficient to prevent a finding of confusing similarity where the disputed domain name incorporates a well-known mark as in this case. See, for example, Wal-Mart Stores, Inc. v. Kuchora, Kal,WIPO Case No. D2006-0033, Comerica Bank v. Private Registration, WhoisGuardS,WIPO Case No. D2014-0529 and Wal-Mart Stores, Inc. v. Horoshiy, Inc.,WIPO Case No. D2004-0620.
This finding of confusing similarity is also supported by past UDRP decisions involving the ACCUTANE marks, as for example, F. Hoffmann-La Roche AG v. Roman Batalak,WIPO Case No. D2016-0672 (where the panel found to be confusingly similar to the ACCUTANE mark) and F. Hoffmann-La Roche AG v. Marina Kovtun,WIPO Case No. D2016-0852 ( found to be confusingly similar to the ACCUTANE mark).
In this Panel’s view, the test of confusingly similarity is clearly satisfied. This Panel finds that the disputed domain name is confusingly similar to marks in which Complainant has rights, for the purpose of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
As several UDRP panels have found, a complainant is only required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name and once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
This Panel is satisfied on the evidence that Respondent’s actions are not a bona fide offering of goods or services. Respondent is also not commonly known by the disputed domain name or any similar name. Respondent has not been authorized or licensed by Complainant to use the ACCUTANE mark.
On the evidence as furnished by Complainant, the disputed domain name resolves to an active website which is not affiliated with, or authorized by Complainant. By the confusingly similarity of the disputed domain name with the ACCUTANE mark, the false impression has been given that it is so affiliated or authorized by Complainant. The website to which the disputed domain name resolves is that of an on-line pharmacy which features products bearing the ACCUTANE mark (and also third party products) but is not an authorized reseller of Complainant.
There is no evidence that Respondent operates a legitimate business or other organization under this mark or name or that it owns any trademark or service mark rights in the ACCUTANE name.
On the evidence, Respondent is also not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain. Instead its actions show that the use of the disputed domain name was intended to confuse and misleadingly divert consumers to its website.
In all the circumstances, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name and that accordingly, paragraph 4(a)(ii) of the Policy has been satisfied. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that a complainant must, in addition to the matters set out above, demonstrate that the relevant disputed domain name has been registered and is being used in bad faith.
The undisputed evidence establishes that Respondent is not affiliated with Complainant and has no license or other authorization to use Complainant’s marks.
The disputed domain name was registered well after Complainant’s marks were registered and in use. This Panel finds that Respondent must have had actual notice of Complainant’s marks when registering the disputed domain name, as asserted by Complainant. Such conduct is evidence of bad faith in this case. See for example, F. Hoffmann-La Roche AG v. Binero AB, Netfirms AB / Igor Ivanov, Binero AB, Netfirms AB / Tigran Mosisyan, Private Person, Kseniya S Dzhabbarova, Kseniya Dzhabbarova, Wuxi Yilian LLC / Alexis Uvarovis, Flee Ventures 4, Vladimir Kiskov, Konayem Temirtassova, Kravtsov Alexander, Alexander Kravtsov, Domain Admin, Privacy Protection Service INC d/b/a PrivacyP / Danilo Krasko,WIPO Case No. D2016-0517 (“The Complainant has used these [ACCUTANE] trademarks decades before the registration of the Domain Names. The trademarks are also well known.”) and F. Hoffmann-La Roche AG v. Domain Admin, Whois Privacy Corp.,WIPO Case No. D2016-0353 (“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.”).
There is little doubt that Respondent’s registration of the disputed domain name in this case incorporating Complainant’s ACCUTANE mark well after Complainant registered its marks was carried out in bad faith.
Further, as contended by Complainant, bad faith can be found where a respondent, by using a domain name, intentionally attempts to attract, for commercial gain, Internet searchers to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location: see, for example, Pfizer Inc. v. jg a/k/a Josh Green,WIPO Case No. D2004-0784.
In this case, Respondent is obtaining commercial gain from its use of the disputed domain name as Respondent’s website generates sales and profits by selling goods including products from third parties, some of which are similar to those provided by Complainant. Respondent clearly on the evidence intended to unfairly profit from and exploit Complainant’s ACCUTANE mark, which conduct constitutes bad faith.
Taking all these matters and circumstances into consideration, this Panel concludes and finds that the disputed domain name was registered and is being used in bad faith within the meaning of 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 Complainant.
Richard Tan
Sole Panelist
Date: October 16, 2016
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