WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Roche Products Limited v. Sergey Chernousov
Case No. D2011-1805
1. The Parties
The Complainant is Roche Products Limited of San Francisco, California, United States of America, represented by Lathrop & Gage LLP, United States of America.
The Respondent is Sergey Chernousov of Stavropol, Russian Federation; technical contact: MT Management Group Limited, London, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <purchase-accutane.com> is registered with 1API GmbH.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 21, 2011. On October 21, 2011, the Center transmitted by email to 1API GmbH a request for registrar verification in connection with the disputed domain name. On October 26, 2011, 1API GmbH. 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 November 2, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 22, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 25, 2011.
The Center appointed Rodrigo Velasco Santelices as the sole panelist in this matter on December 1, 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.
The Panel has reviewed the circumstances regarding the administrative proceeding and considers that though paragraph 11 a) of the Rules states that the language of the administrative proceeding shall be the language of the Registration Agreement. The Registrar has confirmed that English is the language of the registration agreement. Further, it is clear with the evidence filed by the Complainant that the Respondent has knowledge of the English language given that the website of the domain name <purchase-accutane.com> effectively offers the goods in English, and therefore trades in such language. The Panel further considers that the Respondent was treated with equality and given a fair opportunity to present its case.
Consequently the language of the administrative proceeding is English and the decision will be issued in the English language.
4. Factual Background
The Complainant is one of the worlds leading research focused healthcare groups in the field of pharmaceuticals.
The Complainant is the owner of the trademark ROACCUTANE and ACCUTANE. Both marks refer to an isotretinoin medicine, an acne skin pharmaceutical product.
The ROACCUTANE trademark is currently registered in various countries around the world.
The ROACCUTANE and ACCUTANE mark has been the subject of hundreds of millions of dollars in sales and has become famous.
The ACCUTANE mark is still in use though on a limited scale.
The disputed domain name was registered on June 30, 2011.
5. Parties’ Contentions
The Complainant states that the disputed domain name contains the entire ACCUTANE trademark of the Complainant. The Complainants registered trademark ROACCUTANE only differs by the addition of the first two letters “RO” with the disputed domain name. The addition of the generic term “purchase” does not prevent the likelihood of confusion. Thus the Respondent’s domain name is confusingly similar to the ACCUTANE and ROACCUTANE trademarks falling within the meaning of the Policy paragraph 4(a)(i).
The Complainant also states that the Respondent has no rights or legitimate interest in the disputed domain name. The Complainant has not given the Respondent authorization or license to use the ACCUTANE trademark. Based on the Respondent’s website it is clear that the Respondent has not been commonly known by the disputed domain name. The domain name resolves to a web site that sells competitive third party products demonstrating lack of legitimate interest in the domain name, falling within the meaning of the Policy paragraph 4(a)(ii).
The Complainant finally states that the disputed domain name is not being used in connection to a bona fide offering of goods or services. The Respondent is using the disputed domain name to divert Internet users to its website, clearly trading on the fame the ACCUTANE mark has gained. The Respondents bad faith is evident from the fact that ACCUTANE is a coined term created by the Complainant. The web site to which it resolves offers competitors products on its website and includes a non-authorized “buy ACCUTANE UK” copyright © 2033-2011 indication which has not been authorized by Complainant. Falling the aforementioned within the meaning of the Policy paragraph 4(a)(iii).
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with Paragraph 4(a) of the Policy, the Complainant must prove that each of the three elements is present:
(i) the domain name registered by the Respondent 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 disputed domain names in question; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
This first element requires that the Complainant demonstrate that (1) it has trademark rights and (2) the disputed domain name is identical or similar to a trademark in which the Complainant has rights.
The Panel finds that the Complainant has established that it is the owner of the registered trademark ROACCUTANE based on the evidence provided by the Complainant (annex 3). It has also demonstrated that it is the owner of the trademark ACCUTANE, mark that is still in use by Complainant consequently existing trademark rights thereto.
The disputed domain name consists of two different words, one consisting of the Complainants trademark and the second of the generic term “purchase”. The issue often turns to the question of whether the addition of the generic terms would change the overall impression of the domain name as being connected to the Complainant or the trade mark owned by the Complainant. The Panel considers that the addition of the generic term, especially when added to the famous trademark is not sufficient to avoid confusion. Especially when the generic word added to the trademark refers specifically to a noun that simply refers to the act or an instance of buying.
The Panel therefore finds that the disputed domain name is confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
The second element requires the Complainant to prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
By the terms used in paragraph 4(a) of the Policy it is clear that the overall burden of proof is on the Complainant, however the Policy provides the Respondent means to demonstrate its rights to and legitimate interests in the domain name in responding to a Complaint. If the Respondent does not make use of these means and the Complainant has established a prima facie case under paragraph 4(a)(ii), the burden is shifted to the Respondent to prove the contrary.
The Complainant asserts that the Respondent does not have rights or legitimate interests in the domain name. The Respondent is not commonly known by the name ACCUTANE. The Complainant has not licensed or otherwise permitted the Respondent to use the trademark ACCUTANE. There is no current relationship between the Complainant and the Respondent.
The Respondent has not provided a response to the allegations set forth by the Complainant, though given the opportunity.
There is no evidence in the case file demonstrating that the Respondent might have rights or legitimate interest in the domain name.
In the absence of a Response this Administrative Panel is satisfied that the Complainant has satisfied the second element, paragraph 4(a) of the Policy and has established a prima facie case that the Respondent has no rights or legitimate interests in said domain name.
C. Registered and Used in Bad Faith
This third element requires that the Complainant demonstrates that (1) the domain name has been registered in bad faith and (2) is being used in bad faith.
Paragraph 4(b) of the Policy sets out a non-exhaustive list of 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.
The disputed domain name is composed of two words, “purchase” and “accutane”. The first is a generic term and the second a registered trademark owned by the Complainant.
From the evidence sent by the Complainant it is clear that the Respondent was selling the pharmaceutical ACCUTANE on its web site, now if this action is legal or not, it is not for the Panel to determine, however, the use of the Complainants trademark as part of the domain name that resolves to the Respondents web site without the authorization of use of such trademark can only be considered as an act of bad faith, since clearly the Respondent had knowledge that the pharmaceutical product that it was selling on its web site pertained to a third party and that by using such mark as its domain name, it would divert Internet users so its website merely for commercial gain. The Panel considers that by registering a domain name corresponding to a well known trademark, and selling such products via the Internet, the Respondent has intentionally tried to divert Internet user’s to its webpage, for commercial gains.
Furthermore, not only has the Respondent made use of the Complainant’s trademark, and sells its products, but it also commercializes the Complainant’s competitors’ products and generic pharmaceuticals. This behavior in this Panel’s view constitutes bad faith use and may tarnish the Complainant’s reputation by, among other things, attracting Internet users to a webpage that does not correspond to what they are looking for.
The above can only lead this Panel to conclude that the Respondent’s attempting to attract, for commercial gain, Internet users to its website, 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 of the services provided on the website in accordance with paragraph 4(b)(iv).
Moreover, the Complainant sent a cease and desist letter to the Respondent requesting the transfer of the domain name and the cease of use of the trademarks on the website. However, to date the Respondent has not removed such mentions, in circumstances in which the Complainant has clearly stated that they have never given the Respondent a license to use such trademarks nor any other type of written authorization.
Therefore, in accordance with paragraph 4(b)(i) and (iii) of the Policy, the above findings lead to the conclusion that the disputed domain name has been registered and used in bad faith.
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 <purchase-accutane.com> be transferred to the Complainant.
Rodrigo Velasco Santelices
Dated: December 7, 2011