World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Hoffmann-La Roche Inc., Roche Products Limited v. Vladimir Ulyanov

Case No. D2011-1474

1. The Parties

The Complainants are Hoffmann-La Roche Inc., New Jersey, United States of America and Roche Products Limited, Welwyn Garden City, United Kingdom of Great Britain and Northern Ireland, represented by Lathrop & Gage LLP, United States of America.

The Respondent is Vladimir Ulyanov, Minsk, Belarus.

2. The Domain Names and Registrar

The disputed domain names <accutanecomprar.info>, <accutanekaufen.info>, <buyaccutaneinaustralia.info>, <buyaccutaneonlinecanada.info>, <buyaccutaneuk.info>, <buyxenicalcanada.info> and <comprareaccutaneitalia.info> are registered with Dynadot, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 31, 2011. On September 1, 2011, the Center transmitted by email to Dynadot, LLC a request for registrar verification in connection with the disputed domain names. On September 1, 2011, Dynadot, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 7, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was September 27, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 29, 2011.

The Center appointed Christiane Féral-Schuhl as the sole panelist in this matter on October 21, 2011. 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.

On November 9, 2011, the administrative Panel issued a procedural Panel Order No. 1, pursuant to paragraphs 10 and 12 of the Rules. The Panel requested the Complainants to submit further documents.

The Complainants submitted further documents on November 9, 2011.

4. Factual Background

According to the documentary evidence and contentions submitted, the Complainants, together with their affiliated companies, are members of a leading healthcare group of companies in the fields of pharmaceuticals and diagnostics and have global operations worldwide.

The Complainants are the owners of several trademark registrations, including:

For Roche Products Limited the trademark ROACCUTANE:

- United Kingdom Trademark registration No. 1119969, filed on September 3, 1979 in class 5 and lawfully renewed on April 9, 2010;

- Ireland Trademark registration No. 96401 filed on September 3, 1979 and lawfully renewed on March 5, 2010;

- Malaysia Trademark registration No. 87/03256 filed on July 27, 1987 in class 5, and lawfully renewed (next renewal date on July 27, 2018) and

- Singapore Trademark Registration No. 83324 filed on December 3, 1979 in class 5 and lawfully renewed (next renewal date on December 3, 2020).

For Hoffman-La Roche Inc., the trademarks XENICAL and XENICAL ORLISTAT 120 MG CAPSULES: XENICAL:

- United States Trademark Registration No. 1.906.281, filed on July 18, 1995 XENICAL ORLISTAT 120 MG CAPSULES;

- United States Trademark Registration No. 3.739.382 filed on January 19, 2010.

According to the documentary evidence and contentions submitted the Complainants’ trademarks ACCUTANE and XENICAL are well known, as a result of an extensive promotion in print advertisements, in medical journals, etc.

The disputed domain names were all created between June 28 and 29, 2011.

All of the disputed domain names are redirected to active websites offering many medicines for sale, including medicines products of the Complainants and competing products.

5. Parties’ Contentions

A. The Complainants

The Complainants state that they are the registered owners of a large scale of trademarks registrations including the names ROACCUTANE and XENICAL and that the disputed domain names are confusingly similar with these trademarks in which the Complainants have rights and continue to have rights. Moreover, the Complainants point out that the registered mark ROACCUTANE adds only “RO” to the word “Accutane” because “RO” are the first two letters of Roche Products Limited, the owner of these trademarks. The Complainants argue that the disputed domain names contain the entire ROACCUTANE or XENICAL trademarks. Thus, the Complainants consider that the Respondent’s domain names containing ACCUTANE or XENICAL are identical or confusingly similar to the Complainants’ ROACCUTANE and XENICAL trademarks. The Complainants state that the Respondent has no rights or legitimate interests in the disputed domain names. The Complainants point out that the Respondent has never been authorized to use the marks ACCUTANE or XENICAL or to incorporate the trademarks into any domain names. The Complainants add that they have never granted the Respondent a license to use the ACCUTANE or XENICAL marks. The Complainants mention that ACCUTANE and XENICAL are not words and have no valid use other than in connection with the Complainants’ trademarks. Such uses by the Respondent may lead consumers to believe that the disputed domain names are operated by the Complainants.

The Complainants consider that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names without intent for commercial gain. The Complainants state that the Respondent’s use and incorporation of the well-known trademarks in the disputed domain names is the evidence of the Respondent’s intent to trade upon the reputation of the ACCUTANE and XENICAL trademarks. The Complainants indicate that the Respondent is trading on the Complainants’ goodwill and is using the Complainants’ trademarks in the disputed domain names of websites on which the Respondent sells the Complainants’ ACCUTANE and XENICAL products without authorization. The Complainants state that the disputed domain names are being used to promote generic Accutane and Xenical and other drugs of competitors of the Complainants.

The Complainants consider that the Respondent registered and is using the disputed domain names in bad faith.

The Complainants point out that the bad faith of the Respondent is clearly evident from the fact that the Respondent has given false contact information to avoid being reached and consider that providing false WhoIs content information is in itself a matter of bad faith.

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:

(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights;

(ii) that the respondent has no rights or legitimate interests in respect of the domain name;

(iii) that the domain name has been registered and is being used in bad faith.

Preliminary Procedural Issue: Consolidation of Multiple Complainants and Domain Names

The Policy and the Rules do not expressly contemplate the consolidation of multiple complainants in a unitary administrative proceeding, and generally speak in singular terms of a “complainant” when referring to proceedings under the Policy. A number of WIPO panels nonetheless have concluded that the use of the singular “complainant” in the Policy and Rules was not meant to preclude multiple legal persons in appropriate circumstances from jointly seeking relief in a single administrative proceeding under the Policy (see Fulham Football Club (1987) Limited, Tottenham Hostpur Public Limited, West Ham United Football Club PLC, Manchester United Limited, The Liverpool Football Club And Athletic Grounds Limited v. Domains by Proxy, Inc./ Official Tickets Ltd, WIPO Case No. D2009-0331; ITT Manufacturing Enterprises, Inc., ITT Corporation v. Douglas Nicoll, Differential Pressure Instruments, Inc., WIPO Case No. D2008-0936 or National Dial A Word Registry Pty Ltd and others v. 1300 Directory Pty Ltd, WIPO Case No. DAU2008-0021).

UDRP WIPO panels have articulated principles governing the question of whether a complaint filed with the Center by multiple complainants may be brought against one respondent.

Consolidated complaints have been accepted by UDRP WIPO panels where multiple complainants are seen to form part of a “single entity” – i.e., individual companies that are part of a larger corporate group or joint venture. In this situation, it has been said that each company has a common legal interest in trademarks held collectively by or within such entity, sufficient to justify a unitary complaint against a single respondent in respect of multiple domain names alleged to contain such marks in whole or part (“a group of related corporate entities” as stated in Media West-CPI, Inc., Media West-DMR, Inc., Media West-GMP, Inc., Media West-GSI, Inc., Media West-PNI, Inc., Media West-PNJ, Inc., Media West-SJC, Inc., Media West-NPP, Inc., Cape Publications, Inc., Des Moines Register and Tribune Co., Gannett Satellite Information Network, Inc., Multimedia Holdings Corp., Phoenix Newspapers, Inc., Gannett Co., Inc. v. Unasi, Inc., WIPO Case No. D2005-1336).

In this instance, the Panel finds that the Complainants have demonstrated that the Respondent has engaged in common conduct that has affected the Complainants’ individual rights in a similar way and that they have a common grievance against the Respondent sufficient to justify consolidation of their claims in a single proceeding. The Panel further concludes in the circumstances of this case that consolidation would be equitable to all the Parties and procedurally efficient.

The Panel finds also appropriate to proceed, based on the relevant UDRP WIPO panel decisions, to the consolidation of multiple domain name disputes based on paragraph 3(c) or 10(e) of the Rules. As stated in Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281, “[…] indicia of common control have been found based on commonalities in registrant information, such as shared administrative or technical contacts and shared postal or email addresses”. In this case, all the disputed domain names have been registered by the same registrant.

Accordingly, the Panel, having regard to all relevant circumstances, concludes that the consolidation of the multiple domain name disputes asserted by the Complainants against the Respondent is consistent with the Policy and Rules, and comports with prior relevant UDRP WIPO panel decisions in this area.

A. Identical or Confusingly Similar

The Panel observes that the Complainants have provided evidence of ownership of several trademark registrations comprising the terms “accutane” and “xenical”. The Panel considers that the Complainants have provided sufficient evidence that they are the owners of the ROACCUTANE and XENICAL trademarks and that their trademarks rights are still in force. The Panel adds that the dominant component of the trademark ROACCUTANE is the word ACCUTANE which fits in with the usual designation of the Complainants’ trademarks and products.

The Panel concurs with the opinion of several prior WIPO panel decisions which have held that, when a domain name wholly incorporates a complainant’s registered mark, that may be sufficient to establish confusing similarity for purposes of the Policy (see, e.g. Hitachi, Ltd. v. Arthur Wrangle, supra. Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Eauto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047; Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615). Furthermore, it is a well-established principle that the addition of generic and/ or geographic terms to a complainant’s trademark in a domain name does not dispel confusion (see Playboy Enterprises International, Inc. v. Zeynel Demirtas, WIPO Case No. D2007-0768).

Regarding the disputed domain names, the Panel finds that the addition of descriptive words are not sufficient to exclude the confusingly similarity. In this case, the addition of geographic terms as “canada”, “australia” or “italia” are not sufficient to exclude the confusingly similarity. The Panel then considers that the terms “accutane” and “xenical” are the dominant component in all disputed domain names despite the addition of geographic terms as suffix.

Last, the practice of adding a general term as a prefix or suffix to a well-known trademark has been the subject of numerous UDRP WIPO panel decisions. In other cases, a UDRP WIPO panel stated that “the prefix ‘buy’ does nothing to dispel and serves only to reinforce the connection in the public mind between [the trademark] and the Complainant, and therefore increases the risk of confusion” (see Aventis, Pharma Deutschland, GmbH v. Jonathan Valicenti, WIPO Case No. D2005-0037). As previously stated, the addition of a descriptive term such as “buy”, or “comprare”, is insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP. For the foregoing reasons, the Panel considers that the addition of general terms as “buy”, “comprar” (buy in Spanish) or “kaufen” (buy in German) suffix are not sufficient to exclude the confusingly similarity.

In view of the above, the Panel considers that the Complainants have proven that the disputed domain names are confusingly similar to the trademarks in which the Complainants have rights and continue to have rights.

B. Rights or Legitimate Interests

The Policy outlines (paragraph 4(c)) circumstances which, if found by the panel to be proved, shall demonstrate the respondent’s rights or legitimate interests in the domain name. These circumstances are:

(i) before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with the bona fide offering of goods or services; or

(ii) the respondent (as an individual, business or other organization) has been commonly known by the 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 domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Accordingly to UDRP WIPO panel precedents, it is sufficient that the Complainants show a prima facie case that the Respondent lack rights or legitimate interests in the disputed domain names in order to shift the burden of evidence on the Respondent (see Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

In the absence of response, the Panel accepts as true the Complainants’ allegations that the Respondent has no authorization or license to use the ACCUTANE and XENICAL trademarks into the disputed domain names and that the Respondent is not commonly known under the disputed domain name.

The Panel also considers that since the Respondent is using the disputed domain names to promote and to sell competitor’s products, there is no bona fide offering of goods and services by the Respondent.

In view of the above, the panel considers that the Respondent does not have rights or legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

The Policy outlines (paragraph 4(b)) circumstances which, if found by the panel to be present, shall be evidence of the registration and use of a domain name in bad faith. These circumstances are:

(i) circumstances indicating that the respondent has registered or 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 complainant, for valuable consideration in excess of respondent’s 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 trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent have 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 respondent’s website or other on-line 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 web site or location.

The Complainants have provided evidence that the disputed domain names which incorporate the dominant component of the Complainants’ trademark ROACCUTANE or the trademark XENICAL, have been registered and used to promote competitor’s products based upon the reputation of the Complainants’ trademarks.

Such intentional use designed to "parasitiz[e] the goodwill of Complainant’s trademark" "is compelling evidence of bad faith in the registration and use of the disputed domain name" (see The Chase Manhattan Corp. et al. v. John Whitely, WIPO Case No. D2000-0346).

In absence of contrary evidence, the Panel finds that the Respondent, who has chosen to register seven domain names, all containing the Complainants’ trademarks, could not have ignored the Complainants’ trademarks when he registered the disputed domain names.

Based on the evidence outlined by the Complainants, it appears that the Respondent registered and is using the domain names in question to attract consumers so that they will access the web sites operated by the Respondent.

Therefore, it appears clear to the Panel that the Respondent has tried to increase the number of visitors on his site by using the dominant component of the trademark ROACCUTANE or the trademark XENICAL as domain names. This is evidence of bad faith in the registration and use of the disputed domain names under paragraph 4(b)(iv) of the Policy.

Last, the Panel considers the banner stating that the medicines may be bought without prescription (“comprar accutane sin receta!”) as additional evidence that the Respondent is using the domain names in bad faith.

For these reasons, the Panel finds that the Respondent has registered and is using the disputed domain names 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 names <buyaccutaneinaustralia.info>, <comprareaccutaneitalia.info>, <accutanekaufen.info>, <accutanecomprar.info>, <buyaccutaneonlinecanada.info>, <buyaccutaneuk.info>, be transferred to Roche Products Limited; and

- the disputed domain name <buyxenicalcanada.info> be transferred to Hoffman-La Roche Inc.

Christiane Féral-Schuhl
Sole Panelist
Dated: November 18, 2011

 

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