The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, internally represented.
The Respondent is Aleh Hriharovich of Minsk, Belarus. 2. The Domain Name and Registrar
The disputed domain name (“Domain Name”) is registered with Hosting Concepts B.V. d/b/a Openprovider (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 15, 2019. On January 15, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 17, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 17, 2019 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 January 17, 2019.
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 Respondent of the Complaint, and the proceedings commenced on January 21, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 10, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 11, 2019.
The Center appointed Marina Perraki as the sole panelist in this matter on February 19, 2019. 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, together with its affiliated companies, one of the world’s leading healthcare groups in the fields of pharmaceuticals and diagnostics with global operations in more than 100 countries.
The Complainant’s group holds numerous trademark registrations for the ACCUTANE mark, and its alternative forms ROACCUTAN and ROACCUTANE, including a) the international registration No. 840371, ACCUTANE (word mark), registered on December 6, 2004, for pharmaceutical products in international class 5, b) the international registration No. 450092, ROACCUTAN (word mark), registered on December 13, 1979, for, inter alia, pharmaceutical products, in international class 5, protected also in Belarus, and c) the United Kingdom trademark registration No 1119969, ROACCUTANE (word mark), filed on September 3, 1979, registered on July 2, 1980 for, inter alia, pharmaceutical products, in international class 5.
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 Domain Name was registered on December 5, 2018 and resolves to an online pharmacy, offering for sale the Complainant’s products and other drugs.
On January 2, 2019, the Complainant sent a cease and desist letter to Respondent, through the Registrar, to which the Respondent did not reply. 5. Parties’ Contentions A. Complainant
The Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which the Complainant must satisfy with respect to the Domain Name:
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has demonstrated its rights through the registration of the ACCUTANE trademark.
The Panel finds that the Domain Name is confusingly similar to the ACCUTANE trademark of the Complainant.
The Domain Name incorporates the trademark of the Complainant in its entirety. This is sufficient to establish confusing similarity (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525).
The letter “e”, short for “electronic” and the word “buy”, which are added to the trademark in the Domain Name, do not avoid a finding of confusing similarity, as they are non-distinctive. Furthermore, their combination “ebuy”, is descriptive, in that it describes the nature of the website to which the Domain Name resolves, namely an online shop (Accenture Global Services Limited v. Jean Jacque / Luck Loic,WIPO Case No. D2016-1315; Wragge Lawrence Graham & Co LLP v. Registration Private, Domains by Proxy LLC / Ian Piggin,WIPO Case No. D2015-0135; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8).
The generic Top-Level Domain (“gTLD”) “.com” is disregarded, as gTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons only (Rexel Developpements SAS v. Zhan Yequn,WIPO Case No. D2017-0275). B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [the Respondent] of the dispute, your 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 of goods or services; or
(ii) you [the Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [the Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel concludes that the Respondent lacks rights or legitimate interests in respect of the Domain Name.
The Respondent has not submitted any response and has not claimed any such rights or legitimate interests with respect to the Domain Name. As per Complainant, the Respondent was not authorized to register the Domain Name.
The Respondent did not demonstrate prior to the notice of the dispute, any use of the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services.
The Complainant demonstrated that the Domain Name resolves to a website which is an online pharmacy offering for sale the Complainant’s products and other drugs. This indicates that the Respondent knew of the Complainant and chose the Domain Name with knowledge of the Complainant and its industry (Pfizer Inc. v. jg a/k/a Josh Green,WIPO Case No. D2004-0784; Safepay Malta Limited v. ICS Inc.,WIPO Case No. D2015-0403).
The Panel finds that these circumstances do not confer upon the Respondent any rights or legitimate interests in respect of the Domain Name.
The Complainant has established Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that the Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that the Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding Domain Name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) that the Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s 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 the Respondent’s website or location.
Because the ACCUTANE trademark is a fictitious word and therefore highly distinctive and it had been widely registered and used by the Complainant at the time of the Domain Name registration, the Panel finds it more likely than not that the Respondent had Complainant’s mark in mind when registering this Domain Name (Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc.,WIPO Case No. D2014-1754; Parfums Christian Dior v. Javier Garcia Quintas and C,WIPO Case No. D2000-0226).
The Respondent could have searched the international trademark registry and found the Complainant’s prior registration in respect of the ACCUTANE trademark (Citrix Online LLC v. Ramalinga Reddy Sanikommu Venkata,WIPO Case No. D2012-1338).
Furthermore, the Domain Name incorporates in whole the Complainant’s mark with the addition of the letter “e”, short for “electronic”, and the non-distinctive term “buy”, in the combination “ebuy”, resembling the Respondent’s website as an online pharmacy, selling, inter alia, drugs under the ACCUTANE trademark of the Complainant.
As the Complainant demonstrated, the website related to the Domain Name is targeting the Complainant’s trademark, as it references the Complainant’s ACCUTANE trademark and offers the Complainant’s drugs for sale, along with other drugs. This further supports registration in bad faith (WIPO Overview 3.0, section 3.1.4).
As regards bad faith use, the fact that the Domain Name was used for the creation of a website which is an online pharmacy offering for sale the Complainant’s drugs as well as various other drugs, as an attempt to attract for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship or affiliation of the website, is a clear indication that the Domain Name is being used in bad faith (F. Hoffmann-La Roche AG v. Pinetree Development, Ltd..,WIPO Case No. D2006-0049; Twitter, Inc. v. Whois Agent, Whois Privacy Protection Service, Inc. / Domain Support,WIPO Case No. D2015-1488; Park Place Entertainment Corporation v. A Ltd.,WIPO Case No. D2002-0530; Revlon Consumer Products Corporation v. Terry Baumer,WIPO Case No. D2011-1051; WIPO Overview 3.0, section 3.2.1).
Under these circumstances and on this record, the Panel finds no good faith basis for the Respondent’s conduct vis-à-vis the Domain Name.
The Complainant has established Policy paragraph 4(a)(iii). 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 Domain Name , be transferred to the Complainant.
Marina Perraki
Sole Panelist
Date: March 5, 2019
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