WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hoffmann-La Roche Inc. v. JoliMari, Joli Marikona / PrivacyProtect.org
Case No. D2012-0361
1. The Parties
The Complainant is Hoffmann-La Roche Inc., Nutley, New Jersey of United States of America, internally represented.
The Respondent is JoliMari, Joli Marikona, New York, New York, United States of America; Privacyprotect.org, Domain Admin, Queensland, Australia.
2. The Domain Name and Registrar
The disputed domain name <accutanealpha.com> (the “Domain Name”) is registered with DomainContext, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 22, 2012. On the same day, the Center transmitted by email to DomainContext, Inc. a request for registrar verification in connection with the Domain Name. On February 24, 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 27, 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 28, 2012.
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 February 28, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 19, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 28, 2012.
The Center appointed Jon Lang as the sole panelist in this matter on May 7, 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.
4. Factual Background
The Complainant, together with its affiliated companies, is engaged in the research and development of pharmaceutical and diagnostic products. It is a member of the Roche Group, one of the world’s leading research-focused healthcare groups, having global operations in more than 100 countries.
The Complainant’s trademark, ACCUTANE is registered in the United States Patent and Trademark Office with a registration date of August 28, 1973, under Registration No. 966,924.
F. Hoffmann-La Roche AG is, like the Complainant, owned and controlled by Roche Holding AG, a company organized and doing business under the laws of Switzerland. F. Hoffmann-La Roche AG owns and uses the domain name <accutane.com>. It is also the registered owner of the ROACCUTAN trademark, which is protected in a variety of countries. The ACCUTANE mark is the US equivalent to the ROACCUTAN mark.
The mark ACCUTANE is registered for dermatological preparation for the treatment and prevention of acne. The mark was extensively promoted for many years in print advertisements in medical journals, promotional materials, packaging, medical informational materials, television advertising and direct mailings. The sales of the ACCUTANE product in the United States have exceeded hundreds of millions of dollars.
The Domain Name was registered on January 11, 2012.
5. Parties’ Contentions
The domain name is confusingly similar to a trademark or service mark in which the Complainant has rights:
The Respondent’s Domain Name <accutanealpha.com> incorporates the Complainant’s trademark ACCUTANE in its entirety. “Alpha” is the first letter of the Greek alphabet and in accordance with F. Hoffmann-La Roche AG v. Bobik Marley, WIPO Case No. D2007-0694, “confusing similarity, for the purposes of the Policy, is established when a domain name wholly incorporates a complainant’s mark and only adds a generic word along with, in this case, the letter “a” or the number “1””.
The Respondent has no rights or legitimate interests in respect of the domain name:
The Complainant has exclusive rights in ACCUTANE and no license or other authorization has been granted to use ACCUTANE in the Domain Name.
The Respondent is using the domain name to redirect Internet users to the Pharmacy online website at ”familyph.com/order-accutane-online-en.html?cur=USD” selling “Generic Accutane”. In accordance with Pfizer Inc v. Juan Gonzales, WIPO Case No. D2004-0589, “no good faith can be assumed in Respondent’s conduct, in view of the fact that the Domain Name is confusingly similar with Complainant’s trademark and is used in connection with the promotion and sale of competing products”.
It is obvious that the Respondent is using the Domain Name for commercial gain and for the purpose of capitalizing on the fame of the Complainant’s mark, ACCUTANE.
The domain name was registered and is being used in bad faith.
The Domain Name was registered in bad faith given that at the time of registration, the Respondent no doubt had knowledge of the Complainant’s well-known mark ACCUTANE and its products sold under that mark.
The Domain Name is also being used in bad faith given that the Respondent is intentionally attempting to attract, for commercial purposes, Internet users to the website to which the Doman Name resolves, by creating a likelihood of confusion with the Complainant’s well-known mark as to the source, affiliation and endorsement of the website.
In Pfizer Inc v. Juan Gonzales, WIPO Case No. D2004-0589 it was said that the “Respondent has been using the Domain Name to promote and sell, for commercial gain, sildenafil citrate pharmaceutical products as “generic Viagra”, which directly compete with Complainant’s genuine Viagra
This is further evidence of Respondent’s bad faith registration and use of the Domain Name under paragraph 4(c)(iii) of the Policy.”
The Respondent, in using the Domain Name, is intentionally misleading consumers and confusing them into believing that the website to which the Domain Name resolves (or any to which links on the website resolve), are associated with or recommended by the Complainant. As a result, the Respondent may generate revenues and is therefore illegitimately capitalizing on the fame of the ACCUTANE trademark.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant of course has rights in its own trademark ACCUTANE for the purposes of the Policy.
The Domain Name incorporates the Complainant’s mark ACCUTANE in its entirety and is very much its dominant element, being a well-known mark and placed first in the Domain Name. It is followed by the term, “alpha” which, in the vernacular, can suggest a superior or “number one” product or offering.
The mark and Domain Name are not therefore identical, and thus the issue of confusing similarity must be considered. Under the UDRP, the test for confusing similarity involves a comparison between the trademark and the domain name to determine likelihood of Internet user confusion. To satisfy the test, the trademark to which the domain name is said to be confusingly similar would generally need to be recognizable as such within the domain name. The addition of common, dictionary, descriptive, or negative terms are usually regarded as insufficient to prevent Internet user confusion. Application of the confusing similarity test under the UDRP typically involves a comparison, on a visual or aural level, between the trademark and the domain name.
Given the distinctive nature of the mark ACCUTANE, which is readily recognizable within the Domain Name (and very much its dominant element), the Panel is satisfied that the Domain Name <accutanealpha.com> is confusingly similar to the Complainant’s trademark, ACCUTANE.
Even if one were to adopt a possibly slightly higher burden and require, as some panels have done, a risk that Internet users may actually believe that there is a real connection between the Domain Name and the Complainant and/or its goods and services, the Complainant would succeed in showing confusing similarity. The impression created by the Domain Name may well give rise to the possibility that Internet users may think that the owner of the Domain Name is in fact the owner of the Complainant’s mark to which it is similar, or that there is some form of association between the Respondent and the Complainant.
Accordingly, the Panel holds that the Domain Name is confusingly similar for the purposes of the Policy and thus this element of paragraph 4(a)(i) of the Policy has been established.
B. Rights or Legitimate Interests
By its allegations in the Complaint, in particular the absence of any relationship between the Complainant and the Respondent, and the use to which the Respondent has put the (confusingly similar) Domain Name, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. Accordingly, the burden of production shifts to the Respondent to come forward with appropriate arguments or evidence demonstrating that it does in fact have such rights or legitimate interests. However, the Respondent has not done so and the Panel is entitled to find, given the prima facie case made out by the Complainant, that the Respondent lacks rights or legitimate interests in the Domain Name.
Nevertheless, it is perhaps appropriate to comment on why there is probably little the Respondent could say in this proceeding that could support a counter argument.
A respondent can show it has rights to or legitimate interests in a domain name in various ways even where, as is the case here, it is not licensed by or affiliated with the complainant. For instance, it can show that it has been commonly known by the domain name or that it is 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.
Here, however, the Respondent is not known by the Domain Name. Moreover, given the nature of the website to which the Domain Name resolves i.e. a site from which goods competing with those of the Complainant can be obtained, the Panel would not accept a), that there is legitimate non-commercial or fair use or b), that the Respondent does not derive a commercial benefit from the use to which the Domain Name has been put or c), that there is no intent to mislead given that, in the absence of any alternative explanation, it is likely that the very purpose in the Respondent choosing the Domain Name it did was to deliberately create a false impression of association with the Complainant. In Drexel University v. David Brouda, WIPO Case No. D2001-0067, the panel stated that “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant”. That seems to be the case here.
A respondent can also show that it is using a domain name in connection with a bona fide offering of goods or services. However, it would be difficult to accept that a website to which a confusingly similar domain name resolves, particularly a domain name which so obviously takes advantage of the fame of the trademark to which it is confusingly similar, could constitute a bona fide offering. Moreover, competing products are found on the website to which the Domain Name resolves and other Panels have held that in these circumstances there can be no bona fide offering. For instance, in Philip Morris USA Inc. v. n/a, WIPO Case No. D2004-0462, it was said: “To offer competing brands for sale using a domain name confusingly similar to the Complainant’s trademark is not a bona fide offering of goods within the meaning of paragraph 4(c)(i) of the Policy: see Pfizer Inc v. The Magic Islands, WIPO Case No. D2003-0870; Nikon, Inc. and Nikon Corporation v. Technilab, Inc., WIPO Case No. D2000-1774”. The fact that in the Philip Morris case the term used is ‘competing brands’ should not be taken as a restriction on the general principle that if competing products are offered on a website to which a confusingly similar domain name resolves, there should be no finding of a bona fide offering of goods in the respondent’s favor.
There is no evidence before this Panel that the Respondent has rights or legitimate interests in the Domain Name. The Respondent has not come forward with a Response or taken any other action to address the Complaint. The contentions of the Complainant by which it has made out a prima facie case that the Respondent has no rights or legitimate interests have not been contradicted or challenged, or cast into doubt by the brief analysis set out above. Accordingly, the Panel finds that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
It seems clear, given the fame of the Complainant’s ACCUTANE trademark and the use to which the Domain Name has been put, that the Respondent must have been aware of the Complainant’s mark when the Domain Name was registered. One way a complainant may demonstrate bad faith registration and use, is to show that a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website or of products or services on it. This appears to be the case here. Accordingly, this Panel finds that, for the purposes of the Policy, there is evidence of both registration and use of the Domain Name 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, <accutanealpha.com> be transferred to the Complainant.
Dated: May 21, 2012