The Complainant is F. Hoffmann-La Roche AG, Switzerland, represented by F. Hoffmann-La Roche AG, Switzerland.
The Respondent is Domain Admin, Whois protection, this company does not own this domain name s.r.o., United States of America / Heather Pollack, Czech Republic. 2. The Domain Name and Registrar
The disputed domain name is registered with Gransy, s.r.o. d/b/a (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 5, 2019. On April 5, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 8, 2019, 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 the Complainant on the same date providing the registrant and contact information disclosed by the Registrar and invited the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on the same date.
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 April 30, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 20, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 22, 2019.
The Center appointed Johan Sjöbeck as the sole panelist in this matter on May 27, 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
The Complainant belongs to one of the world’s leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics with global operations in more than 100 countries. The Complainant has submitted evidence that it is the owner of the international trademark ACCUTANE with registration number 840371 and registration date December 6, 2004.
Furthermore, the Complainant is the owner of the international trademark ROACCUTAN with registration number 450092 and registered on December 13, 1979.
In addition, the Complainant has registered ROACCUTAN in an alternative form under ROACCUTANE in several countries such as Malaysia, Singapore, Ireland and the United Kingdom.
The disputed domain name was registered by the Respondent on December 15, 2018. 5. Parties’ Contentions A. Complainant
The Complainant belongs to one of the world’s leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics with global operations in more than 100 countries. 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 incorporates the Complainant’s trademark ACCUTANE in its entirety. The addition of a hyphen followed by the term “kaufen” which means “buy” in German, does not sufficiently distinguish the disputed domain name from the trademark. As a result, the disputed domain name is confusingly similar to the Complainant’s trademark ACCUTANE, making it possible for consumers to believe that the disputed domain name is related to the Complainant.
The Complainant has exclusive and prior rights in the trademark ACCUTANE, which precede the Respondent’s registration of the disputed domain name. The Respondent has no connection or affiliation with the Complainant and has not received any license or consent, expressed or implied, to use the Complainant’s trademark ACCUTANE. The Respondent operates an online pharmacy which promotes and sells, among others, ACCUTANE drugs. Such an activity does not represent a legitimate noncommercial or fair use under the Policy, paragraph 4(c)(iii). By falsely implying that its pharmaceutical products are related or similar to those of the Complainant, the Respondent is using the disputed domain name with the purpose of trading on the Complainant’s goodwill.
The disputed domain name was registered in bad faith as there is no doubt that the Respondent had knowledge of the Complainant’s ACCUTANE product and trademark at the time of the registration. The Respondent is using the Complainant’s ACCUTANE trademark in order to attract Internet users searching for the Complainant’s trademark via search engines, including users who expect to be led to the Complainant’s genuine website or to sites endorsed by the Complainant.
Given that the Respondent’s website offers Accutane drugs as well as various other drugs which compete with the Complainant, the disputed domain name is used in 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. Consequently, the disputed domain name is being used in bad faith.
In addition, the Respondent did not reply to the Complainant’s cease and desist letter and hence has not availed itself to the opportunity to present any case of legitimate interest that it might have. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant is, according to the submitted evidence, the owner of the registered trademark ACCUTANE.
The disputed domain name incorporates the Complainant’s trademark ACCUTANE in its entirety with the addition of a hyphen and the common term “kaufen” which means “buy” in German. The addition of a common term, such as “kaufen” or “buy”, does not prevent a finding of confusing similarity under the first element test. It is standard practice to disregard the generic Top-Level Domain (“gTLD”) under the confusingly similar test.
Having the above in mind, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark ACCUTANE and that the Complainant has proved the requirement under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests with respect to the disputed domain name. The Respondent may establish rights or legitimate interests in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
(i) that it uses or has made 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 prior to the dispute; or
(ii) that it is commonly known by the disputed domain name, even if it has not acquired any trademark rights; or
(iii) that it 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.
The Complainant’s trademark registration for ACCUTANE predates the Respondent’s registration of the disputed domain name. On the website, to which the disputed domain name resolves, the Respondent is, according to the submitted evidence, offering not only the Complainant’s ACCUTANE products for sale but also competing products of other commercial origin.
Given the above, the Respondent is not making a bona fide offering of goods or services nor 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.
Although given the opportunity, the Respondent has not rebutted the Complainant’s prima facie case. The Respondent has not submitted any evidence in this case to demonstrate that the Respondent is the owner of any trademark rights similar to the disputed domain name or that the Respondent is or has been commonly known by the disputed domain name.
By not submitting a response, the Respondent has failed to invoke any circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in respect of the disputed domain name. Thus, there is no evidence in the case that refutes the Complainant’s submissions, and the Panel concludes that the Complainant has also proved the requirement under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include without limitation:
(i) circumstances indicating the disputed domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the disputed domain name; or
(ii) circumstances indicating that the disputed domain name was registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding disputed domain name, provided there is a pattern of such conduct; or
(iii) circumstances indicating that the disputed domain name was registered primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the disputed domain name has intentionally been used in an 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 trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on that website or location.
The Complainant’s trademark registration for ACCUTANE predates the registration of the disputed domain name. In the absence of any evidence to the contrary, the Panel agrees with the Complainant that the Respondent must have had knowledge of the Complainant’s trademark ACCUTANE when registering the disputed domain name especially since the Respondent is using the disputed domain name to sell not only the Complainant’s ACCUTANE product but also competing products of other commercial origin. Although the Complainant sent a cease and desist letter to the Respondent, the Respondent did not reply and did not cease the use of the disputed domain name.
Thus, the evidence in the case before the Panel indicates that the disputed domain name has intentionally been registered and used in 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, affiliation, or endorsement of the website or of a product or service on the website.
There is no evidence in the case file that refutes the Complainant’s submissions.
The Panel therefore concludes that the Complainant has proved the requirements under paragraph 4(a)(iii) of the Policy and that the disputed domain name has been registered and used in bad faith. 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 shall be transferred to the Complainant.
Johan Sjöbeck
Sole Panelist
Date: June 4, 2019
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