World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Hoffmann-La Roche Inc. v. Guillermo Gonzalez

Case No. D2012-0576

1. The Parties

The Complainant is Hoffmann-La Roche Inc. of Nutley, New Jersey, United States of America, internally represented.

The Respondent is Guillermo Gonzalez of Volente, Texas, United States.

2. The Domain Names and Registrar

The disputed domain names <accutaneassist.com>, <accutanedamages.com>, <accutanelawhelp.com> and <accutanepain.com> are registered with GoDaddy.com, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 20, 2012. On March 20, 2012, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the disputed domain names. On the same date, GoDaddy.com, 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 March 23, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 12, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 13, 2012.

The Center appointed R. Eric Gaum as the sole panelist in this matter on April 24, 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 Center notified the Parties of the Panel Appointment on April 24, 2012 and on the same day the Respondent acknowledged receipt of the same but did not otherwise provide a substantive response.

4. Factual Background

The Complainant Hoffmann-La Roche Inc., is the owner of the trademark ACCUTANE, which is registered in the United States Patent and Trademark Office as of August 28, 1973 under Registration No. 966,924, with a first use in 1972.

ACCUTANE is an alternative trademark (United States version) for the trademark ROACCUTAN, which is protected in a multitude of countries worldwide. The mark ACCUTANE designates a dermatological preparation in the form of a product indicated for the treatment and prevention of acne.

The Respondent is Guillermo Gonzalez, who has a contact address located in Volente, Texas, United States.

The disputed domain names were all registered on March 8, 2012.

5. Parties’ Contentions

A. Complainant

The disputed domain names are confusingly similar to the Complainant’s mark because, inter alia, they all incorporate the ACCUTANE mark in its entirety. Furthermore, the Complainant’s use and registration of the mark ACCUTANE do predate the Respondent’s registration of the disputed domain names. As such, the disputed domain names are confusingly similar to the trademark of the Complainant.

The Complainant has exclusive rights for ACCUTANE, as mentioned above and no license, permission, authorization, or consent respectively was granted to use ACCUTANE in the domain names. Furthermore it is obvious that the Respondent uses the disputed domain names for commercial gain and with the purpose of capitalizing on the fame of the Complainant’s mark ACCUTANE. The disputed domain names clearly allude to the Complainant.

The Respondent is using the disputed domain names to divert Internet users to parking websites of the Internet service provider GoDaddy.com, LLC with links to commercial websites offering various goods or services, especially in the pharmaceutical field of the Complainant (“REHAB 120 gélules”, “Pharmacie en ligne”, “Fini les boutons d’Acné”, “Guérir enfin l’acne”, “Gel hydratant anti-acné”, “Traitement contre l’acné”, “stop acne”). There is no reason why the Respondent should have any rights or interests in the disputed domain names.

The disputed domain names were registered in bad faith since at the time of the registrations, i.e., all on March 8, 2012, the Respondent should have known of the Complainant’s well-known product/mark ACCUTANE.

The disputed domain names are also being used in bad faith. This is obvious since when viewing the websites under the disputed domain name one realizes that the Respondent is intentionally attempting (for commercial purpose) to attract Internet users to the Respondent’s parking websites, by creating a likelihood of confusion with the Complainant’s well-known mark as to the source, affiliation and endorsement of the Respondent’s websites.

The websites are “parked free courtesy of GoDaddy.com” and generate sponsored links especially to commercial websites offering pharmaceuticals and health related products, some of them directly competing with the Complainant’s famous product/trademark (“www.stopacne.nl”, “www.shopunt.com”, “www.pantothen.fr”, “www.fangocur.fr/acne”, and “www.lorenkadi.com”).

The Respondent, by using the disputed domain names, is intentionally misleading consumers and confusing them by making them believe that the websites behind those links are associated or recommended by the Complainant. As a result, the Respondent may generate unjustified revenues and therefore is illegitimately capitalizing on the ACCUTANE trademark fame.

B. Respondent

The Respondent did not formally reply to the Complainant’s contentions.

6. Discussion and Findings

According to paragraph 15(a) of the Rules, a “Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, [the] Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the disputed domain names registered by the Respondent are identical or confusingly similar to a trademark or a service in which the Complainant has rights;

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and,

(iii) that the disputed domain names have been registered and are being used in bad faith.

In accordance with paragraph 14(b) of the Rules, the Panel may draw such inferences as are appropriate from the Respondent’s failure to reply to the Complainant’s assertions and evidence or to otherwise contest the Complaint. The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064. As a result of the Respondent’s default, the Panel may even accept as true all of the allegations of the Complaint. Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009.

A. Identical or Confusingly Similar

The Complainant has provided evidence of ownership of the mark ACCUTANE, which is registered with the United States Patent and Trademark Office and claims first use back to 1972 (see, United States Trademark Registration No. 966,924). Based on the registered trademark and the Complainant’s continuous use of the ACCUTANE mark, the Complainant clearly has rights in the mark.

The Panel finds that the disputed domain names are confusingly similar to the Complainant’s ACCUTANE trademark. The disputed domain names all incorporate the ACCUTANE mark in its entirety, which alone has been held sufficient to support a finding that a domain name is confusingly similar to a complainant’s mark. See Hoffman-La Roche Inc. v. Patsy Hail, WIPO Case No. D2008-1343; Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662. Furthermore, the addition of non-distinctive or generic terms is insufficient to avoid confusion. Diageo Ireland v. Guinnessclaim, WIPO Case No. D2009-0679; Roche Products Limited v. Domains by Proxy, Inc. / Christian Hunter, WIPO Case No. D2010-1892.

The Panel finds that the disputed domain names are confusingly similar to the ACCUTANE trademark, and that the Complainant has established it has rights in the trademarks, pursuant to paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists several circumstances, without limitation, that if found by the Panel to be proved shall demonstrate the Respondent’s rights or legitimate interests to the disputed domain names for purposes of paragraph 4(a)(ii).

The Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names.

Further, there is no evidence in the record that would indicate that the Respondent has any rights or legitimate interests in respect of the disputed domain names. Presumably, the Respondent would have provided a response to the Complaint had it had any rights or legitimate interests.

The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names pursuant to paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, which are set forth in paragraph 4(b) of the Policy, in particular but without limitation, if found by the panel to be present, shall be evidence of the registration and use of the domain name in bad faith:

(i) circumstances indicating that the domain name holder has registered or has 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 the holder’s documented out-of-pocket costs directly related to the domain name; or

(ii) the domain name holder 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 holder has engaged in a pattern of such conduct; or

(iii) the domain name holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

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

The Respondent is using the disputed domain names to divert Internet users to parked websites, which include links to commercial websites offering various goods or services, including those in the pharmaceutical field of the Complainant.

As recognized by a number of UDRP panels, a website that is merely “parked,” can still constitute registration and use of a domain name in bad faith. The use of another’s trademark to generate revenue from Internet advertising can constitute registration and use in bad faith. Such use is capable of disrupting the Complainant’s business and to give rise to consumer confusion. McDonald’s Corporation v. ZusCom, WIPO Case No. D2007-1353; F. Hoffman-La Roche AG v. Rudiger Meissner, WIPO Case No. D2009-1127.

As already mentioned, nothing in the record suggests that the Respondent is making any other legitimate noncommercial use of the disputed domain names. Presumably, the Respondent would have provided a response to the Complaint if he had been.

Accordingly, the Panel finds that the Complainant has established that the Respondent registered and uses the disputed domain names in bad faith, pursuant to paragraph 4(b)(iv) of the Policy.

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 <accutaneassist.com>, <accutanedamages.com>, <accutanelawhelp.com> and <accutanepain.com> be transferred to the Complainant.

R. Eric Gaum
Sole Panelist
Dated: May 8, 2012

 

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