WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hoffmann-La Roche Inc. v. Viktor Konin
Case No. D2012-0324
1. The Parties
The Complainant is Hoffmann-La Roche Inc. of Nutley, New Jersey, United States of America, internally represented.
The Respondent is Viktor Konin of Ekaterinburg, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <buyaccutanehere.net> is registered with DomainContext, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 16, 2012. On February 16, 2012, the Center transmitted by email to DomainContext, Inc. a request for registrar verification in connection with the disputed domain name. On February 20, 2012, DomainContext, Inc. 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 February 20, 2012, 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 February 21, 2012.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 21, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 12, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 13, 2012.
The Center appointed Zoltán Takács as the sole panelist in this matter on April 5, 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.
The language of this administrative proceeding is English, that being the language of the registration agreement.
4. Factual Background
The Complainant is for more than 110 years, together with its affiliated companies, engaged in research and development of pharmaceutical and diagnostic products. It is a member of the Roche Group; one of the worlds’s leading research-focused healthcare groups and having global operations in more than 100 countries.
The Complainant holds trademark registration No. 966.924 for the mark ACCUTANE in United States, the mark being registered since August 28, 1973 for dermatological preparation. The ACCUTANE branded products have been widely promoted and successfully marketed in the United States for many years.
F. Hoffmann-La Roche AG, Basel, Switzerland owns the domain name registration for <accutane.com> since April 17, 1997. Same as the Complainant, F.Hoffmann-La Roche AG is owned and controlled by Roche Holding AG, a company organized and doing business under the laws of Switzerland.
The disputed domain name was obtained on January 13, 2012 and is being used as a redirection page to an online pharmacy website “www.fast-pharmacy.net”. This website claims to provide generic medicines, among others “Generic Accutane”, shipped directly from stock in the United States.
5. Parties’ Contentions
The Complainant contends that the disputed domain name contains the Complainant’s ACCUTANE trademark in its entirety, which despite of addition of generic terms “buy” before the trademark and “here” after it makes it confusingly similar to its ACCUTANE trademark. The Complainant states to have registered and used its ACCUTANE trademark well before creation of the disputed domain name.
The Complainant submits the Respondent has no rights or legitimate interest in respect of the disputed domain name. The Complainant never authorized the Respondent to use its ACCUTANE trademark in a domain name or otherwise, and the disputed domain name is used to direct consumers to an online pharmacy at “www.fast-pharmacy.net” offering among others “Generic Accutane”, illegitimately capitalizing on notoriety of the ACCUTANE trademark.
The Complainant further submits that the Respondent surely knew of its ACCUTANE branded pharmaceuticals at the time of creating the disputed domain name and is misleading and confusing the consumers making them believe that the website to which the disputed domain name redirects is linked or associated by the Complainant. The Complainant asserts that these facts and circumstances prove the Respondents lack of rights and legitimate interest in the disputed domain name, as well as that the Respondent registered and used the name at issue in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules requires that the Panel’s decision be made “on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
It has been a consensus view in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) that a respondent’s default does not automatically result in a decision in favor of the complainant.
A complainant must establish each of the three elements required by paragraph 4(a) of the Policy in order to succeed with the complaint, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights,
(ii) the respondent and registrant of the disputed domain name has no rights or legitimate interest in respect of the disputed domain name, and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Under this paragraph, there are two requirements which the Complainant must establish, first that it has rights in a trademark or service mark, second that the disputed domain name is identical or confusingly similar to the trademark.
It has been a consensus among the UDRP panels that if the complainant owns a registered trademark, then it generally satisfies the threshold requirement of having trademark rights.
The Complainant produced evidence that it holds legal rights in the trademark ACCUTANE, the mark being registered under No. 966,924 in the United States since August 28, 1973 for dermatological preparation.
Having determined that the Complainant has trademark rights in ACCUTANE, the Panel next assessed whether the disputed domain name <buyaccutanehere.net> is identical or confusingly similar to the trademark.
The disputed domain name <buyaccutanehere.net> comprises of three elements. It begins with a descriptive term “buy”, then fully incorporates the Complainant’s ACCUTANE trademark and ends with another descriptive word “here”.
According to paragraph 1.2 of the WIPO Overview 2.0 in order to satisfy the threshold for confusing similarity under the Policy, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, descriptive terms typically being regarded as insufficient to prevent threshold Internet user confusion.
The trademark ACCUTANE is neither a common, nor descriptive word, it connects to the product of the Complainant to which it is associated. Mere use of promotional type descriptive words “buy” and “here” in the disputed domain name are not capable to eliminate confusing similarity with the Complainant’s trademark, and for all these reasons the Panel finds that the first element of paragraph 4(a) of the Policy is satisfied.
B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, respondents may demonstrate their rights or legitimate interests in a domain name by showing any of the following circumstances, in particular but without limitation:
(i) their use of, or demonstrable preparation to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services before any notice of the dispute;
(ii) they have been commonly known by the domain name;
(iii) they are making a legitimate non-commercial 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.
In the present case, the Complainant submitted uncontested evidence that it holds well established rights in the trademark ACCUTANE, and that the disputed domain name has been used to redirect consumers to an online pharmacy website at “www.fast-pharmacy.net”, offering among others “Generic Accutane”.
The Complainant never gave permission to the Respondent to use its ACCUTANE trademark in any way.
The Complainant’s prior rights in the trademark ACCUTANE long preceded the date of registration of the disputed domain name.
It has been a consensus view in the WIPO Overview 2.0 that, although the burden to prove lack of the respondent’s rights or legitimate interests in respect of the disputed domain name rests with the complainant, this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. If a complainant makes out prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent.
The Respondent defaulted and failed to respond, and by doing so failed to offer to this Panel any of the types of evidence set forth in paragraph 4(c) of the Policy. The above discussed evidence and facts submitted by the Complainant in regard to making out this requirement of the Policy convince the Panel that the Respondent has no rights or legitimate interests in the disputed domain name in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of factors which, if found by the Panel to be present, shall be evidence of registration and use of the disputed domain name in bad faith. This non-exclusive list includes:
“(i) circumstances indicating that you [the Respondent] have registered or you have 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 your documented out-of-pocket costs directly related to the domain name;
(ii) you have 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 you have engaged in a pattern of such conduct;
(iii) you have registered the domain name primarily for the purpose of disrupting the business of the competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location of a product or service on your website or location.”
The disputed domain name has been used to redirect consumers to an online pharmacy website at “www.fast-pharmacy.net”, offering among others “Generic Accutane”. There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain.
On the contrary, the Respondent has been using the disputed domain name for commercial purposes, for its own financial gain, as evidenced by the sales intent. In the view of the Panel this amounts to interference with the legitimate business of the Complainant and is indicative of bad faith registration and use of the disputed domain name.
Also, the fact that the trademark ACCUTANE has been registered and used for almost thirty years prior to the Respondent created the disputed domain name lead the Panel to believe that the Respondent knew of the Complainant’s ACCUTANE trademark and has registered the disputed domain name with intent to misappropriate the trademark’s value, which constitutes bad faith.
For all the above discussed reasons the Panel finds that the domain name at issue 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 disputed domain name <buyaccutanehere.net> be transferred to the Complainant.
Dated: April 17, 2012