The Complainant is F. Hoffmann-La Roche AG, Switzerland, internally represented.
The Respondent is Domain Administrator, See PrivacyGuardian.org, United States of America / Joe Junior, Writers, United Republic of Tanzania. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 4, 2021. On June 4, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 4, 2021, 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 June 8, 2021, 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 June 9, 2021. 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 June 9, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 29, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 1, 2021. The Center appointed Nicholas Smith as the sole panelist in this matter on July 7, 2021. 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 is a company located in Switzerland that is involved in the research and manufacture of a large variety of pharmaceutical products. One of the Complainant’s products is a prescription drug indicated for the treatment of severe nodular and/or inflammatory acne conglobate or recalcitrant acne which is offered under the name “Accutane”. The Complainant holds an international trade mark for ACCUTANE (the “ACCUTANE Mark”) registered on December 6, 2004 (registration number 840,371) for pharmaceutical products in class 5, designating various countries including the United Kingdom, Germany, France, and Vietnam. The Domain Name The Complainant makes the following contentions: (i) the Domain Name is identical or confusingly similar to the Complainant’s ACCUTANE Mark; (ii) the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith. The Complainant is the owner of the ACCUTANE Mark having registered the ACCUTANE Mark in various jurisdictions including the United Kingdom, France, and Germany. The Domain Name wholly incorporates the ACCUTANE Mark twice and the “.com” generic Top-Level Domain (“gTLD”). There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Complainant has not granted any license or authorization for the Respondent to use the ACCUTANE Mark. The Respondent does not use the Domain Name for a bona fide purpose or legitimate noncommercial purpose. Rather the Domain Name resolves to a page offering various pharmaceutical products including those in competition with the Complainant, which does not provide the Respondent with rights or legitimate interests. The Domain Name was registered and is being used in bad faith. Given the reputation of the ACCUTANE Mark, which is a coined and distinctive word, the registration of the Domain Name can only be taken as an attempt by the Respondent to gain an unfair benefit from the Complainant’s reputation. The Respondent is using the Domain Name for a competing online pharmacy which amounts to bad faith use. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark. The Complainant is the owner of the ACCUTANE Mark, having registrations for the ACCUTANE Mark as a trade mark in Germany and various other jurisdictions. The Domain Name simply consists of two instances of the ACCUTANE Mark with the addition of the “.com” gTLD. In the absence of any terms that would distinguish the ACCUTANE Mark from the Domain Name, the Panel finds that the Domain Name is confusingly similar to the Complainant’s ACCUTANE Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name. Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name: “Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii): (i) before any notice to you 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 (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 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 Respondent is not affiliated with the Complainant in any way. The Respondent has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the ACCUTANE Mark or a mark similar to the ACCUTANE Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a legitimate noncommercial fair use or a bona fide offering of goods and services; the use of the Domain Name for what appears to be an online pharmacy that offers products that compete directly with the Complainant’s skincare products does not amount to use of the Domain Name for a bona fide offering of goods and services. The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has had the opportunity to put forward evidence of its rights or legitimate interests, including submissions as to why its conduct amounts to a right or legitimate interest in the Domain Name under the Policy. In the absence of such a Response, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a 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 trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or (ii) the Respondent has registered the Domain Name in order to prevent the owner of the trade mark 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) the Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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. (Policy, paragraph 4(b)). The Panel finds that the Respondent must have been aware of the Complainant and its reputation in the ACCUTANE Mark at the time the Respondent acquired the Domain Name. The ACCUTANE Mark consists of a coined word with no ordinary meaning apparent to the Panel. The Respondent has provided no explanation, and none is immediately obvious, why an entity would register a domain name incorporating the ACCUTANE Mark and redirect it to a website that purports to sell both the Accutane product and pharmaceutical products that compete with the Complainant’s skincare products unless there was an awareness of and an intention to create a likelihood of confusion with the Complainant and its ACCUTANE Mark. In these circumstances, the Respondent’s conduct in registering the Domain Name when it was aware of the Complainant’s rights and lacked rights or legitimate interests of its own amounts to registration in bad faith. The Respondent’s Website uses the ACCUTANE Mark to purport to sell pharmaceutical products in direct competition with the Complainant. In these circumstances where the Respondent has offered no plausible explanation for the registration of the Domain Name, the Panel finds that that the Respondent has used the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the ACCUTANE Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s Website. As such the Panel finds that the Domain Name is being used in bad faith. Accordingly, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith under 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 Domain Name Nicholas Smith
Sole Panelist
Date: July 9, 2021
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