World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Roche Products Limited v. Privacy Protection / Semen Nalivajchenko

Case No. D2011-2095

1. The Parties

The Complainant is Roche Products Limited of Welwyn Garden City, United Kingdom of Great Britain and Northern Ireland, represented by Lathrop & Gage LLP, United States of America.

The Respondent is Privacy Protection of Kiev, Ukraine and Semen Nalivajchenko of Ukraine.

2. The Domain Name and Registrar

The disputed domain name <buyaccutaneonlinenorx.com> is registered with Center of Ukrainian Internet Names (UKRNAMES).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 30, 2011. On November 30, 2011, the Center transmitted by email to Center of Ukrainian Internet Names (UKRNAMES) a request for registrar verification in connection with the disputed domain name. On December 6, 2011, Center of Ukrainian Internet Names (UKRNAMES) 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 December 8, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On December 12, 2011, the Center sent an email communication to the Complainant providing the information concerning the language of the registration agreement and instructions to the Complainant and the Respondent. The Complainant filed an amended Complaint on December 9, 2011 and requested English be the language of the proceeding on December 12, 2011.

The Center verified that the Complaint together with the amended 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 in both English and Russian, and the proceedings commenced on December 23, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 12, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 13, 2012. On January 14, the Center received an email in Russian apparently from the seller stating that the client (likely the Respondent) has been informed about the proceeding though he did not provide any response.

The Center appointed Mr. Ladislav Jakl as the sole panelist in this matter on January 23, 2012. 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 the question of the language of the administrative proceedings, the concerned registrar confirmed that the language of registration agreement is Russian. The Complainant requests the Panel to decide that the language of the administrative proceedings in this case be English. The Respondent did not submit any comments regarding this question. The Panel, taking into account the circumstances of this case and a number of recent UDRP decisions and the reasons cited therein (BrandStrategy, Inc. v. BusinessService Ltd., WIPO Case No. D2007-0749; Laboratoire Biosthétique Kosmetik GmbH & Co. KG and MCE S.A.S. v. BusinessService Ltd., WIPO Case No. D2007-1836); Zappos.com, Inc. v ZUFU aka Huahaotrade, WIPO Case No. D2008-1191; Pandora Jewelry, LLC v. Wang Feng, WIPO Case No. D2009-1533), decides that the language of the administrative proceedings will be English in accordance with paragraph 11(a) of the Rules.

4. Factual Background

The Complainant asserted, and provided evidence in support of the following facts which the Panel finds established:

The Complainant is, together with its affiliated companies (“Roche”), one of the world´s leading research-focused healthcare groups in the field of pharmaceuticals and diagnostics and has global operations in more than 100 countries. The Complainant owns a registered trademark ROACCUTANE in multiple countries, such as in the United Kingdom (reg. No. 1119969, Class 5, filing date September 3, 1979), in Ireland (reg. No. 96401, Class 5, filing date September 3, 1979), in Malaysia (reg. No. 87003256, Class 5, filing date July 27, 1987) and in Singapore (reg. No. T7983324F, Class 5, filing date December 3, 1979).

The disputed domain name <buyaccutaneonlinenorx.com> was registered on November 7, 2011.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or confusingly similar to its trademark ROACCUTANE, that the Respondent has no rights or legitimate interests in respect to the disputed domain name and that the disputed domain name was registered and is being used in bad faith.

The Complainant introduces that the disputed domain name contains the entire ACCUTANE mark of Roche and that the registered trademark ROACCUTANE ads only “RO”, the first two letters of Roche, to the Complainant’s ACCUTANE trademark. In light of this, the Respondent’s registration and use of the disputed domain name creates a strong likelihood of confusion as to source, sponsorship, association or endorsement of the Respondent’s website associated with the disputed domain name. Further the Complainant contends, that the disputed domain name incorporates the whole of the ACCUTANE mark of Roche, so similar to the Complainant’s trademark ROACCUTANE, and adds the terms “buy”, “online”, “no” and “rx” which do not avoid the likelihood of confusion. The Complainant also refers to numerous UDRP decisions which have established that the addition of words, letters or numbers to a mark used in a domain name does not alter the fact that the domain name is confusingly similar to the mark.

As to rights or legitimate interests in respect of the disputed domain name, the Complainant essentially contends neither the Complainant nor any of affiliate Roche companies have authorized the Respondent to use its mark ACCUTANE or to incorporate the “Accutane” portion of its ROACCUTANE trademark into any domain name. Furthermore, the Complainant has never granted the Respondent a license to use its mark ROACCUTANE or part of it in any manner. The Respondent’s use of the ACCUTANE trademark in the disputed domain name, so similar to ROACCUTANE trademark of the Complainant, may lead consumers to believe that the website reached and/or the linked websites are owned and/or operated by the Complainant. In the Complainant’s opinion, by registering and using the disputed domain name, the Respondent seeks to capitalize on the reputation of the Complainant’s trademarks. Furthermore, the Respondent seeks to use that recognition to divert Internet users seeking information on ACCUTANE or ROACCUTANE products to the Respondent’s website, wholly unrelated to Roche. Such use of the mark ACCUTANE of Roche, nearly identical to its trademark ROACCUTANE, is a clear indication of bad faith on the part of the Respondent. The disputed domain name is being used to promote products of the Complainant’s competitors and the Respondent’s use of the disputed domain name demonstrates the Respondent’s lack of a legitimate noncommercial interest in, or fair use of, the disputed domain name. The Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services. It is using the disputed domain name to divert Internet users seeking information on ACCUTANE or ROACCUTANE dermatological preparation products to an unrelated website which, through linked websites, offers ACCUTANE or products competitive with the Complainant’s well-known ACCUTANE isotretinoin products and wide range of other third party pharmaceutical products without license or authorization of any kind. The unauthorized appropriation of another’s trademark in the disputed domain name and the commercial use of the corresponding website cannot confer rights or legitimate interests upon the Respondent.

Furthermore, the Complainant asserts that the disputed domain name was registered and is being used in bad faith. The Respondent registered the disputed domain name <buyaccutaneonlinenorx.com> on November 7, 2011. The Complainant argues that the Respondent’s true purpose in registering the disputed domain name was to capitalize on the reputation of the ACCUTANE mark by diverting Internet users seeking information or Roche group medications to the Respondent’s own website, which contains the ACCUTANE mark without any permission and which is actually selling ACCUTANE brand, as well as multiple third party pharmaceutical products through the linked websites “http://northern-pharmacy.com” and “http://pharmacy-med-pro.com.ua”, as shown in Annex 6 of the Complaint. The Respondent has intentionally attempted to attract for financial gain Internet users to its website by creating a likelihood of confusion with the ACCUTANE mark, so similar to the ROACCUTANE, as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or the goods sold on or through the Respondent’s website.

B. Respondent

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 following elements is satisfied:

(i) the disputed 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 disputed domain name; and

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

Paragraph 4(a) of the Policy states that the burden of proving that all three elements are present lies with the Complainant.

A. Identical or Confusingly Similar

The Complainant states that disputed domain name is confusingly similar to the Complainant’s trademark ROACCUTANE. And that in light of this, the Respondent’s registration and use of the disputed domain name creates a strong likelihood of confusion as to the source, sponsorship, association or endorsement of the Respondent’s website associated with its disputed domain name. Further the Complainant contends, that the disputed domain name incorporates the whole of the ACCUTANE mark of Roche, so similar to the Complainant’s trademark ROACCUTANE. The Complainant also adds that the terms “buy”, “online”, “no” and “rx”, as well as the addition of the top-level domain “.com” do not have any impact on the overall impression of the dominant portion of the disputed domain name and is therefore irrelevant to determine the confusing similarity between the trademark ROACCUTANE and the disputed domain name.

The Panel finds that the test of identical or confusing similarity under the Policy is generally confined to a comparison of the disputed domain name and the trademark alone. See Wal-Mart Stores, Inc. v. Traffic Yoon, WIPO Case No. D2006-0812.

There is no doubt that the disputed domain name incorporates “Accutane” which is the essential part of the Complainant’s trademark ROACCUTANE. The terms “buy”, “online”, “no” and “rx” are common, generic terms that do not give any distinctiveness to the disputed domain name. Mere addition of a descriptive term by way of prefix to a complainant’s mark does not adequately distinguish a domain name from the mark pursuant to the Policy, paragraph 4(a)(i). See Wal -Mart Stores, Inc. v. Gerry Senker, WIPO Case No. D2006-0211; HSBC Holdings Plc v. David H. Gold, WIPO Case No. D2001-0343; F.Hoffmann-La Roche AG v. Whois Defender, Inc., WIPO Case No. D2006-0717; Sanofi-Aventis v. PLUTO DOMAIN SERVICES PRIVATE LIMITED, WIPO Case No. D2008 -1483; Sanofi-0Aventis v. N/A, WIPO Case No. D 2009-0705; America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004.

As well the inclusion of the gTLD suffix “.com” does not avoid confusing similarity between the disputed domain name and trademark. See AT&T Corp. v. William Gormally, WIPO Case No. D 2005-0758; Accor v. Lee Dong Youn, WIPO Case No. D2008-0705; and Sanofi-Aventis v. Brad Hedlund, WIPO Case No. D2007-1310. Omission of “ro” at the beginning of the disputed domain name does not avoid confusing similarity between the domain name and trademark.

For all the above cited reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark, in which the Complainant has rights, and therefore the condition of paragraph 4(a)(i) of the Policy is fulfilled.

B. Rights or Legitimate Interests

The Panel accepts the arguments submitted by the Complainant, unchallenged by the Respondent, that the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or any variations thereof, or to register or use any domain name incorporating any of these marks or any variations thereof. Therefore in the Panel’s view, the Respondent could not legitimately choose this combination or any variation thereof, unless it was seeking to create an association with the Complainant. Apparently, the Respondent has registered the disputed domain name to create the misleading impression of being in some way associated with the Complainant, trying to exploit the fame and reputation of the Complainant’s trademark.

Moreover the Panel finds that the disputed domain name is not used for a bona fide offering of goods or services and the Respondent is not making a legitimate non-commercial or fair use of the disputed domain name. There is a consensus view that such behaviour cannot be considered a bona fide offering of goods or services, or a non commercial or fair use. See The Gap, Inc. v. Deng Youqian, WIPO Panel No. D2009-0113; Bridgestone Corporation v. Horoshiy, Inc., WIPO Case No. D2004-0795; Deutsche Telekom AG v. Dong Wang, WIPO Case No. D2005-0819; PRL USA Holdings, Inc. v. LucasCobb, WIPO Case No. D2006-0162; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No.D2004-0110; Hoffmann-La Roche Inc. v. Samuel Teodorek, WIPO Case No.D2007-1814.

For the above-cited reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that the requirements of paragraph 4(a)(ii) of the Policy are therefore fulfilled.

C. Registered and Used in Bad Faith

Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) sets out certain circumstances which, in particular but without limitation, are to be construed as evidence of both. These include, inter alia, paragraphs 4(b)(ii), (iii) and (iv):

(ii) the Respondent has registered the disputed 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) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of his website or of a product or service on that website or location.

The disputed domain name was registered on November 7, 2011. First ROACCUTANE trademark of the Complaint was filed in the United Kingdom, on September 3, 1979 (reg. No. 1119969, Class 5 for pharmaceutical veterinary and sanitary preparations and substances. This trademark was registered also in Ireland, Malaysia and Singapore. Extracts from the official registers for some of these are included as Annex 3 of the Complaint. The ROACCUTANE trademarks have been extensively used in respect of goods/services covered by these registrations. The Panel finds that the Respondent has registered the disputed domain name in order to prevent the owner of the trademark ROACCUTANE from reflecting the mark in a corresponding domain name, the Complainant’s trademark being very famous at the time the disputed domain name was registered. When considering the numerous marketing activities of the Complainant there can be no serious doubt that the Respondent should have been aware of the Complainant’s trademark when registering the disputed domain name.

There is no doubt to this Panel that the Respondent has also registered the disputed domain name primarily for the purpose of disrupting the business of the Complainant. This Panel finds that the Respondent is interrupting the Complainant’s business by directing potential customers to its competitors and by falsely making customers believe that there is an association between the Respondent and the Complainant (as shown in Annex 6 of the Complaint). The Complainant has submitted evidence, unchallenged by the Respondent, that the Respondent knew or should have known of the Complainant’s trademarks ROACCUTANE at the time it registered the disputed domain name. The disputed domain name used by the Respondent may cause consumers to believe that the disputed domain name is affiliated with or owned by the Complainant.

The Panel further finds that by using the Complainant’s trademark to divert Internet users to an unrelated site the Respondent is attempting, for commercial gain, to attract Internet users and thus to disrupt the Complainant’s business. The Respondent’s registration and use of the disputed domain name are in bad faith because the Respondent intentionally attempts to attract Internet users who have an interest in purchasing or obtaining additional information about ROACCUTANE goods and services, and then forwards them to other websites, which may result in financial benefit to the Respondent. Such conduct has been found to be indicative of bad faith in previous UDRP decisions such as Six Continents Hotels, Inc. v. Ramada Inn, WIPO Case No. D2003-0658.

For the above cited reasons the Panel finds that the disputed domain was registered and used in bad faith and therefore the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.

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 <buyaccutaneonlinenorx.com> be transferred to the Complainant.

Ladislav Jakl
Sole Panelist
Dated: February 5, 2012

 

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