The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally.
The Respondents are Jose D. Gouveia of San Diego, California, United States of America (the "First Respondent") and Carolyn J. Ridgeway of Brainerd, Minnesota, United States of America (the "Second Respondent"). 2. The Domain Names and Registrar
The disputed domain names and are registered with Paknic (Private) Limited (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 27, 2016. On September 28, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 29, 2016 the Registrar transmitted by email to the Center its verification response confirming that:
(a) it is the Registrar of both disputed domain names;
(b) the First Respondent is the registrant of the first disputed domain name, ;
(c) the Second Respondent is the registrant of the second disputed domain name, ;
(d) both disputed domain names were registered at the same time on September 13, 2016;
(e) the billing contact for both disputed domain names is Pavel Smakov of Moscow, Russian Federation; and
(f) English is the language of the registration agreement for each disputed domain name.
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 Respondents of the Complaint, and the proceedings commenced on October 5, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 25, 2016. The Respondents did not submit any response. Accordingly, the Center notified the Respondents' default on October 26, 2016.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on October 27, 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 owns, inter alia, International Trademark Registration Number 840371 ACCUTANE, in respect of pharmaceutical products. The trademark has been registered since December 6, 2004. The Complainant has also provided evidence of other registered trademarks for ROACCUTAN and ROACCUTANE, which date from, respectively, 1979 and 1981. The trademarks ACCUTANE, ROACCUTAN and ROACCUTANE are the trademarks for a prescription drug marketed by the Complainant for the treatment of severe nodular and/or inflammatory acne conglobata or recalcitrant acne.
The disputed domain names were registered on September 13, 2016. They resolve to websites which purport to offer ACCUTANE-branded goods for sale.
In the case of the disputed domain name , the landing page is "/". This page is headed "Buy Accutane". It then has what appears to be information about "Accutane (isotretinoin) or Roaccutane as it is known in parts of the world". The page also has links to "Buy ACCUTANE online". If one clicks on these links, one is taken to a website headed "Canadian Drugstore" at "/product/Accutane.html". This website offers for sale varying strengths of what are described as "Accutane". Also included with each offer is an offer of "free Viagra, Cialis or Levitra pills".
The disputed domain name resolves to a landing page at "/update/". This page has a heading/link "Buy Accutane without prescription". Underneath the heading/link is a table very similar to one of the tables for "Accutane 40mg" appearing on the Canadian Drugstore website referred to in relation to the first disputed domain name. Underneath the table, there is set out the abstract and text of a literature review into the efficacy of various treatments of acne including isotretinoin. If one clicks on the heading/link "Buy Accutane without prescription", one is taken to the website headed "Canadian Drugstore" at "www.awc−/product/Accutane.html" to which the first disputed domain name also resolves. 5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, the complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the 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.
No response has been filed by either Respondent. The Complaint and Written Notice have been served, however, on the electronic and physical coordinates specified in the WhoIs record (and confirmed as correct by the Registrar) in accordance with paragraph 2(a) of the Rules. Accordingly, the Panel finds that the Complaint and Written Notice have been properly served on the Respondents.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable. A. Consolidation of the Complaints against both Respondents
As the registrants of the disputed domain names are different, the Complainant has requested consolidation of its complaints.
Paragraph 3(c) of the Rules expressly permits a complaint to relate to more than one domain name where all the domain names are registered by the same domain name holder. Notwithstanding this express provision, panels have frequently held that the Panel's powers under paragraph 10(e) of the Rules may permit consolidation of multiple domain name disputes, subject to satisfaction of the other requirements of Policy and Rules. In particular, paragraph 10(b) of the Rules requires the Panel to ensure that all parties are treated equally and each is given a fair opportunity to present his, her or its case.
In accordance with those requirements, panels have typically allowed joinder against multiple respondents who have registered different domain names where the domain names in question, or the websites to which they resolve, appear to be under common control and consolidation would be fair and equitable to all parties. The onus of establishing that these requirements have been met falls on the party seeking consolidation. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 4.16.
In the present case, the Complainant points out that both disputed domain name were registered on the same date at effectively the same time. Both also resolve to websites which appear to be related: "" and "". Both also ultimately resolve to the same page on the Canadian Drugstore online pharmacy. According to the Registrar, both disputed domain names have the same billing contact. In these circumstances, the Panel is willing to accept that the Complainant has demonstrated a sufficient basis to find that the two disputed domain names are effectively under common control.
As both disputed domain names have the same distinctive element, the Complainant's trademark ACCUTANE, and essentially engage in the same conduct, offering what purports to be ACCUTANE-branded pills for sale online from Canadian drugstore online pharmacy, it appears to the Panel to be fair and equitable to all Parties, and an efficient use of resources, to consolidate both disputed domain names in the one Complaint. B. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain names are identical with, or confusingly similar to, the Complainant's trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain names must be shown to be identical or confusingly similar to the trademark. The second part of the inquiry simply requires a visual and aural comparison of the disputed domain names to the proven trademarks. See WIPO Overview 2.0, paragraph 1.2.
The Complainant has proven ownership of at least the trademark ACCUTANE.
The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain names to the proven trademark: WIPO Overview 2.0, paragraph 1.2.
The disputed domain names differ from the Complainant's trademark by the addition of the generic Top−Level Domain ("gTLD") ".com" and other descriptive terminology. In the case of the first disputed domain name, "buy" and "here" and in the case of the second disputed domain name, "buy" and "without prescription".
Disregarding the ".com" gTLD, it is well established that the addition of such purely descriptive terminology to the Complainant's trademark qualifies as confusing similarity for the purposes of the Policy. See for example, Forest Laboratories Inc. v Private Whois Service,WIPO Case No. D2011-1207. The Complainant's trademark is clearly the distinctive element of each disputed domain name and is plainly recognizable as such.
Accordingly, the Panel finds that the Complainant has established that the disputed domain names are confusingly similar to the Complainant's trademarks and the requirement under the first limb of the Policy is satisfied. C. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondents have no rights or legitimate interests in the disputed domain names.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the respondent] of the dispute, [the respondent's] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the respondent] has acquired no trademark or service mark rights; or
(iii) [the respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., paragraph 2.1 of the WIPO Overview 2.0.
The Complainant's trademark was registered some 12 years before the disputed domain names were registered. It is not, so far as the Panel is aware, a descriptive term or otherwise in common use apart from its function as a trademark. It is a coined or "fancy" word with no signification other than as a trademark.
The Complainant states that it has not authorised either Respondent to use the respective disputed domain names. Nor is either Respondent affiliated with the Complainant. The disputed domain names are not derived from either Respondent's own name. Each disputed domain name is being used for commercial purposes.
It may be inferred from the Complaint that the Complainant also has not authorised the Canadian Drugstore to use the Complainant's trademark and there is no association between the two.
The Complainant contends that the redirection to an online pharmacy is in itself sufficient to constitute a lack of rights or legitimate interests. In support, the Complainant cites Pfizer Inc. v. jg a/k/a Josh Green,WIPO Case No. D2004-0784.
it is not clear from the website to which both disputed domain names ultimately resolve whether that website is offering for sale genuine Accutane pills. Assuming in the Respondents' favour that it is, there is no clear disclosure on the page in question about the nature of the relationship between the website and the Complainant. The page in question also offers for sale under the heading "Also you may like" other treatments for acne than the treatment the Complainant offers under its trademark.
In these circumstances, the Panel considers that the Complainant has established a prima facie case that neither Respondent has rights or legitimate interests in his or her respective disputed domain name. Neither Respondent has sought to establish to the contrary.
Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also. D. Registered and Used in Bad Faith
Under the third requirement of the Policy, the complainant must establish that the disputed domain name has been both registered and used in bad faith by the respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey LtdWIPO Case No. D2010-0470.
Generally speaking, a finding that a disputed domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
The additional terms the Respondents have associated with the Complainant's trademark in the disputed domain names demonstrates that they were both well aware of the Complainant's trademark when they registered their respective disputed domain names. As already noted, the distinctive element in each disputed domain name is the Complainant's trademark. The trademark has no significance other than as the Complainant's trademark. It is not otherwise an ordinary term in common use or otherwise descriptive. It can hardly be contended that someone would register either disputed domain name without full knowledge that ACCUTANE was the Complainant's trademark. Given that the Complainant has established that neither Respondent has rights or legitimate interests in his or her respective disputed domain name, therefore, the Panel finds that each disputed domain name was registered in bad faith. The use made of the disputed domain names in absence of rights or legitimate interests is also use in bad faith under the Policy as it constitutes a use of the Complainant's trademark for commercial gain without right or authority.
Accordingly, the Panel finds that the Complainant has established that both disputed domain names have registered and are being used in bad faith by the Respondents. 6. 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.
Warwick A. Rothnie
Sole Panelist
Date: November 9, 2016
Full & Egal Universal Law Academy