WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hoffmann-La Roche Inc v. Fundacion Private Whois
Case No. D2012-1183
1. The Parties
The Complainant is Hoffmann-La Roche Inc, of Nutley, New Jersey, United States of America (“US”) or (“United States”), represented internally.
The Respondent is Fundacion Private Whois of Panama, Panama.
2. The Domain Names and Registrar
The disputed domain names <buyaccutane-onlineweb.com>, <buyaccutaneonline-web.com>, <buyaccutaneonlineweb.com> and <buyxenicalonlineweb.com> are registered with Internet.bs Corp.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 11, 2012. On June 11, 2012, the Center transmitted by email to Internet.bs Corp a request for registrar verification in connection with the disputed domain names. On June 14, 2012, Internet.bs Corp. 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 June 15, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 5, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 10, 2012.
The Center appointed Amarjit Singh as the sole panelist in this matter on July 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.
On August 17, 2012, the Complaint the annexes to the Complaint were forwarded to additional email addresses of the Respondent and the Respondent was provided an additional twenty (20) days, until September 6, 2012 to file its Response. No communications were received from the Respondent by the specified date.
4. Factual Background
The Complainant is, 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 world’s leading research-focused healthcare groups and having global operations in more than 100 countries.
The disputed domain names <buyaccutane-onlineweb.com>, <buyaccutaneonline-web.com>, <buyaccutaneonlineweb.com> and <buyxenicalonlineweb.com> were registered on May 17, 2012.
5. Parties’ Contentions
The mark XENICAL designates an oral prescription weight loss medication used to help obese people lose weight and keep this weight off. For the mark XENICAL, the Complainant holds registrations in over 100 countries on a world-wide basis.
The mark ACCUTANE designates a dermatological preparation in the form of a product indicated for the treatment and prevention of acne. This 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 Unites States have exceeded hundreds of millions of dollars.
The disputed domain names incorporate the Complainant’s trademarks XENICAL or ACCUTANE in their entirety.
The Complainant has exclusive rights for XENICAL and ACCUTANE and no licence/permission/authorization and consent was not granted to use XENICAL or ACCUTANE in the disputed domain names.
The disputed domain names were registered by the Respondent in bad faith since at the time of the registration, the Respondent had knowledge of the Complainant’s well-known products/marks XENICAL and ACCUTANE.
The disputed domain names are being used in bad faith. The Respondent, by using the disputed domain names is intentionally misleading the consumers and confusing them by making them believe that the websites behind those disputed domain names are associated or recommended by the Complainant. As a result, the Respondent may generate unjustified revenues and therefore is illegitimately capitalizing on the XENICAL and ACCUTANE trademarks’ fame.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Panel is satisfied that the Center took all steps necessary to notify the Respondent of the Complaint and the initiation of these proceedings. The Panel concludes the Center discharges its obligations under paragraph 2(a) of the Rules.
A. Identical or Confusingly Similar
The Complainant’s mark XENICAL is registered on behalf of the Complainant in the United States Patent and Trademark Office as of July 18, 1995 under Registration No. 1,906,281. XENICAL is protected as a trademark in a multitude of countries worldwide.
The mark XENICAL is also registered in International Class 5 under International Registration Nos. 612908 and 699154, certificates of which have been filed by the Complainant with its Complaint.
The Complainant’s mark ACCUTANE is registered on behalf of the Complainant in the United States Patent and Trademark Office as of August 28, 1973 under Registration No. 966,924 with a first use in 1972. Hoffmann-La Roche Inc., also F. Hoffmann-La Roche AG, Basel, Switzerland, is owned and controlled by Roche Holding AG, a company organized and doing business under the laws of Switzerland. Aforesaid F. Hoffmann-La Roche AG owns and uses the domain name <accutane.com>.
ACCUTANE is an alternative Trademark (US version) for the Trademark ROACCUTAN. The ROACCUTAN Trademark is protected in a multitude of countries worldwide. Complainant relies upon Registration of the mark ROACCUTAN in International Class 5 under International Registration No. R450 092. The priority date for the mark ROACCUTAN is August 21, 1979.
The disputed domain names <buyxenicalonlineweb.com>, <buyaccutane-onlineweb.com>, <buyaccutaneonline-web.com> and <buyaccutaneonlineweb.com> incorporate the Complainant’s trademarks XENICAL or ACCUTANE in their entirety.
The Complainant relies upon Hoffman-La Roche Inc. v. Hightech Industries, Andrew Browne, WIPO Case No. D2010-0240, “the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark” and “adding the prefix ‘buy’ to the Mark does nothing to dispel and serves only to reinforce the connection in the public mind between the word ACCUTANE [or XENICAL] and the Complainant, and therefore increases the risk of confusion”.
The complainant further relies upon ICOS LLC v. John Hopking / Neo net Ltd., WIPO Case No. D2005-0694 Lilly, “generally, a user of a mark may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or nondistinctive matter to it”. The additional words “online” and “buy” added to Complainant’s marks, “may suggest that Respondent’s websites are locations where a consumer may buy [respectively XENICAL or ACCUTANE] brand product”.
The Complainant further relies upon F. Hoffmann-La Roche AG v. Ve Patel, WIPO Case No. D2006-0096, “the addition of the suffix “-web” is descriptive and adds no distinctiveness or source of origin elements whatsoever to the domain name at issue, which essentially incorporates the Complainant’s well-known trademark”.
The Respondent has not responded to the claims of the Complainant. In the absence of any denial on the part of the Respondent, the Panel admits the claim of the Complainant on the basis of registration certificates as have been provided by the Complainant in the proceedings and the arguments noted above, and finds that Complainant is successful in proving the first element of the UDRP under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has exclusive rights for XENICAL and ACCUTANE and no licence/permission/authorization or consent was granted to use XENICAL or ACCUTANE in the disputed domain names. The Panel finds that the Respondent is using the disputed domain names for commercial gain and with the purpose of capitalizing on the fame of the Complainant’s mark XENICAL and ACCUTANE.
The disputed domain names are used to direct consumers to two pharmacies on-line: “Pharma Marketonline” offering respectively “Xenical” and “Accutane”, and “Trust Med Online” offering respectively “Generic Xenical” and “Generic Accutane”.
The Complainant relies upon Hoffmann-La Roche Inc. v. Samuel Teodorek, WIPO Case No. D2007-1814, “the Respondent’s use of the disputed domain name to redirect Internet users to an on-line pharmacy demonstrates Respondent’s lack of a legitimate interest in the domain name”.
The Complainant further relies upon 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”.
Based on the above, the Panel concludes that respondent has norights or legitimate interests or rights in the disputed domain names and finds that Complainant is successful in proving the second element of the UDRP under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The disputed domain names were registered by the Respondent on May 17, 2012, much later than the adoption and use of the marks, XENICAL and ACCUTANE by the Complainant in the international market. The evidence filed by the Complainant with the Complaint clearly establishes that the Respondent is intentionally attempting to commercially gain and to attract Internet users to the Respondent’s website by creating likelihood of confusion and deception with the Complainant’s well known marks as to the source, affiliation and endorsements of the Respondent’s website or of the product or services posted on or linked to the Respondent’s website. Furthermore, the Respondent is intentionally misleading the consumers and confusing them by making them believe that the websites behind those links are associated or recommended by Complainant.
As a result, the Respondent may generate unjustified revenues and therefore is illegitimately capitalizing on the XENICAL and ACCUTANE trademark fame.
The Panel finds the Respondent has registered the disputed domain names with false emails and physical addresses with intent to trade upon the goodwill of the Complainant. It is pertinent to note that neither email nor physical mail sent by the Center to the Respondent was delivered due apparently to the non availability of correct addresses in the WhoIs records of the Registrar.
The above proves to the Panel that the disputed domain names have been registered by the Respondent with bad faith intentions and the same have been used to trade upon the goodwill associated with the marks of the Complainant.
The Panel finds that the Complainant is successful in proving third element of the UDRP under paragraph 4(a)(iii) of the Policy.
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 <buyaccutane-onlineweb.com>, <buyaccutaneonline-web.com>, <buyaccutaneonlineweb.com> and <buyxenicalonlineweb.com> be transferred to the Complainant.
Dated: September 17, 2012