The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, internally represented.
The Respondents are James Cole of Freeport, United States of America ("United States"), Bruce R. Collins of New York, Burundi, and Guillermo Briany of New York, United States and Serge Goerts of "Kingali, Netherlands" (sic). 2. The Domain Names and Registrars
The disputed domain name is registered with Afriregister S.A., and the disputed domain name is registered with Hosting Concepts B.V. d/b/a Openprovider ("Openprovider") (collectively, the registrars will hereinafter be referred to as the "Registrars"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 2, 2018. On March 2, 2018, the Center transmitted by email to the Registrar Afriregister S.A. a request for registrar verification in connection with the disputed domain names. On March 8, 2018, the Registrar Afriregister S.A. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the originally-named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 9, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on March 12, 2018.
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 the Respondents of the Complaint, and the proceedings commenced on March 15, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 4, 2018. The Respondents did not submit any response. Accordingly, the Center notified the Respondents' default on April 5, 2018.
On April 16, 2018, the Complainant emailed the Center indicating that the domain name had transferred to another Registrar, Openprovider, on or about April 14, 2018.
On April 17, 2018, the Center emailed the Registrar Afriregister S.A. expressing concern that an apparent registrar change had occurred, despite Afriregister S.A. having previously indicated that the disputed domain name would remain under registrar lock during the pendency of this proceeding.
On April 18, 2018, the Registar Afriregister S.A. replied stating that, a few days previously, it had written to holders of domain names "which are mostly used for Rogue Pharmacies" requesting them to transfer the domain names away from the management of Afriregister S.A. and that, "by mistake", it had allowed the domain name to be transferred to a new Registrar as part of this process. On April 20, 2018, the Center emailed both Registrars Afriregister S.A. and Openprovider inviting them to consider restoration of the disputed domain name to Afriregister S.A. On April 26, 2018, the Center sent a chasing email to both Registrars, indicating that the Center would continue administration of the proceeding in the meantime.
The Center appointed Adam Taylor as the sole panelist in this matter on May 1, 2018. 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.
In the absence of any response from the Registrars to the Center's email of April 20, 2018, on May 24, 2018, the Center transmitted by email to the Registrar Openprovider a request for registrar verification in connection with the disputed domain name .
On May 30, 2018, the Registrar Openprovider transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the Respondents and contact information in the Complaint. On the same date, the Center notified the parties that, due to exceptional circumstances, the Panel had decided to extend the decision due date to June 11, 2018. 4. Factual Background
The Complainant and its affiliated companies form one of the world's largest pharmaceutical groups. Amongst other things, the group produces the well-known drugs Valium and Accutane.
The Complainant owns various registered trade marks for each name including:
- International trademark no. 250784 for VALIUM, registered December 20, 1961, in classes 1, 3 and 5.
- International trademark no. 840371 for ACCUTANE, registered December 6, 2004, in class 5.
The disputed domain names and were registered on July 13, 2017, and July 14, 2017, respectively.
As of March 2, 2018, both disputed domain names were used for online pharmacies branded "Valium" and "Accutane" respectively. 5. Parties' Contentions A. Complainant
The Complainant's marks are well-known.
The disputed domain names are confusingly similar to the Complainant's marks, which they incorporate in their entirety.
The addition of the various descriptive terms does not sufficiently distinguish the disputed domain names from the Complainant's trade marks.
The Complainant has not granted any rights to the Respondents to use its trade mark in the disputed domain names.
There is no legitimate interest in using a disputed domain name similar to a pharmaceutical manufacturer's mark to direct consumers to an online pharmacy.
The Respondents did not respond to the Complainant's cease and desist letter and avail of the opportunity to put forward a case for legitimate interests.
The disputed domain names have been registered and are being used in bad faith.
The Respondents were undoubtedly aware of the Complainant's well-known trade marks when they registered the disputed domain names. The disputed domain names are also being used in bad faith as they are being used intentionally to attract users to the websites of the Respondents by creating a likelihood of confusion with the Complainant's trade marks.
Using domain names to sell generic pharmaceutical products directly competing with the Complainant's genuine products is evidence of bad faith registration and use. B. Respondents
The Respondents did not reply to the Complainant's contentions. 6. Discussion and Findings A. Consolidation / Cyberflight
The principles governing the question of whether a complaint may be brought against multiple respondents are set out in section 4.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0").
The Panel notes that the disputed domain names were registered through the same registrar within one day of each other and that both have been used for online pharmacy websites with a very similar look and feel to. On this basis, the Panel is satisfied that the disputed domain names and corresponding websites are subject to common control and that, in the circumstances, consolidation is fair and equitable to all parties, and also procedurally efficient.
This conclusion is not altered by the registrar and registrant change for the disputed domain name which followed the filing of the Complaint. It appears from the circumstances outlined in section 3 above that the registrar change occurred in response to an invitation by the Registrar Afriregister S.A., which had requested a batch of domain holders to remove their domain names from its management and had mistakenly included the disputed domain name in that process. Furthermore, Afriregister S.A. did not apply, or released, the registrar lock for the disputed domain name which should have been in place during this proceeding. While the registrant name and contact details changed following the registrar switch, the Panel has no reason to believe that this involved a change of control of the disputed domain name although no doubt the change of registrant name / contact details, unexplained by the Respondent, was designed to give this impression; in the Panel's view, the likelihood is that the new registrant name and/or address (e.g., "Kingali, NL") is false.
For convenience, all of the Respondents are collectively referred to below as "the Respondent". B. Identical or Confusingly Similar
The Complainant has rights in the marks "VALIUM" and "ACCUTANE" by virtue of its registered trade marks as well as unregistered trade mark rights deriving from the extensive and worldwide use of those names.
Section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") makes clear that, where the relevant trade mark is recognisable within the disputed domain name, the addition of other terms, whether descriptive or otherwise, would not prevent a finding of confusing similarity under the first element.
Here, the Complainant's distinctive trade marks are readily recognisable within the disputed domain names and, accordingly, the addition of the various descriptive terms is insufficient to avert a finding of confusing similarity.
For the above reasons, the Panel concludes that each of the disputed domain names is confusingly similar to the Complainant's respective trade marks.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy. C. Rights or Legitimate Interests
As explained in section 2.1 of WIPO Overview 3.0, the consensus view is that, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If not, the complainant is deemed to have satisfied the second element.
Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade marks.
As to paragraph 4(c)(i) of the Policy, the Panel has concluded below that the Respondent has used the disputed domain names to intentionally attempt to attract, confuse and profit from Internet users seeking the Complainant's products and services. Such use of the disputed domain names could not be said to be bona fide.
In the often quoted case of Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "M",WIPO Case No. D2000-0847, the panel stated that:
"… use which intentionally trades on the fame of another can not constitute a "bona fide" offering of goods or services. To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy."
Nor is there any evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case.
The Panel finds that the Complainant has established a prima facie case of lack of rights or legitimate interests and there is no rebuttal by the Respondent.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain names and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy. D. Registered and Used in Bad Faith
It is obvious that the Respondent registered the disputed domain names with the Complainant's distinctive and well-known trade marks in mind, not least because the Respondent has used the disputed domain names for online pharmacies focussed on the Complainant's products.
It appears that the Respondent is offering for sale "generic" versions of the Complainant's products which compete directly with the Complainant's products. In fact, the Respondent's websites also give the impression at times that the Respondent is selling the Complainant's own products. For example, each website is branded purely with the name of the Complainant's product and various other references are made to those product names without the addition of the "generic" qualifier.
The Panel has little difficulty in concluding from the foregoing that the Respondent has registered and used the disputed domain names in bad faith in accordance with paragraph 4(b)(iv) of the Policy. The Respondent has intentionally attempted to attract Internet users to its websites for commercial gain by creating a likelihood of confusion with the Complainant's trade marks.
The change of registrant name / contact details for the disputed domain name following the registrar switch, in the circumstances explained in section 6A above, is a further indicator of bad faith.
The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) 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.
Adam Taylor
Sole Panelist
Date: June 3, 2018
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