WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hoffmann-La Roche Inc. v. Fundacion Private Whois
Case No. D2012-1497
1. The Parties
Complainant is Hoffmann-La Roche Inc., of Nutley, New Jersey, United States of America (“USA”), internally represented.
Respondent is Fundacion Private Whois, of Panama, Panama.
2. The Domain Name and Registrar
The disputed domain name <buyaccutanegeneric.net> is registered with Internet.bs Corp. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 24, 2012. On July 24, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 30, 2012, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on August 2, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 22, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 23, 2012.
The Center appointed John Terry as the sole panelist in this matter on September 28, 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
Complainant, together with its affiliated companies, is one of the world’s leading manufacturers of pharmaceutical and diagnostic products and has operations in more than 100 countries. Complainant's trademark ACCUTANE was registered in the USA on August 28, 1973 under registration No. 0966,924 with first use in 1982. Complainant is owned and controlled by Roche Holding AG of Switzerland, as is F. Hoffmann-la Roche AG of Switzerland and this latter company owns and uses the domain name <accutane.com>.
The trademark ACCUTANE has been adopted for the USA market by Complainant and the value of sales exceeds hundreds of millions of dollars. ACCUTANE is an alternative to the trademark ROACCUTAN which has been protected in a multitude of countries and registrations include international registration number R450092 with a priority date of August 21, 1979. The trademarks ACCUTANE and ROACCUTAN have been used in relation to a preparation for treatment and prevention of acne.
5. Parties’ Contentions
Complainant contends that the disputed domain name is confusingly similar to Complainant's trademark ACCUTANE since it incorporates the trademark in its entirety and merely adds generic material, namely “buy” and “generic” which do not sufficiently distinguish the disputed domain name from Complainant’s trademark.
Complainant use and registration of the trademark ACCUTANE predates the registration of the disputed domain name.
Secondly, Complainant contends that Complainant has exclusive rights in ACCUTANE and has given no permission for its use in the disputed domain name, and contends further that Respondent has used the disputed domain name for commercial gain and with the purpose of capitalising on the fame of Complainant's trademark ACCUTANE. Internet users on accessing the disputed domain name are connected to Respondent’s website offering “Generic Accutane (Isotretinoin)”.
Complainant relies on a principle established by the UDRP panel in Hoffmann-La Roche Inc. v. Samuel Teodorek, WIPO Case No. D2007-1814. In that case the panel held “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”.
Complainant further contends that at the time of the registration of the disputed domain name, namely June 22, 2012, Respondent must have had knowledge of Complainant's well-known trademark ACCUTANE and accordingly the disputed domain name was registered in bad faith.
Furthermore, Complainant contends that the disputed domain name is also being used in bad faith by virtue of Respondent’s attempt to attract, for commercial purposes, Internet users to Respondent website, and in so doing is creating a likelihood of confusion by causing such users to believe that the website linked to the disputed domain name is associated with or recommended by Complainant, when this is not the case.
Complainant relies on the principle that bad faith is established when “Respondent is using the domain names as a forwarding address to a for-profit on-line pharmacy”; see Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
The Panel is satisfied that Complainant and the Center have taken all possible steps to serve on Respondent copies of all relevant documents in accordance with the Policy and Rules and given Respondent a reasonable opportunity to respond under the Policy and the Rules. Despite this, there has been no Response. The Panel finds that the proceedings can proceed based on the certified content of the Complaint and documents submitted in accordance with the Policy and the Rules.
The Rules require that the Panel decide a complaint on the basis of the documents submitted, and the Complainant must establish each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) 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.
A. Identical or Confusingly Similar
Hoffmann-la Roche Inc. v. Hightech Industries, Andrew Browne, WIPO Case No. D2010-0240, stated the principle that incorporating a trademark in its entirety may be sufficient to establish that the domain name is confusingly similar to the complainant’s trademark. Furthermore, in Lilly ICOS LLC v. John Hopking / Neo net Ltd., WIPO Case No. D2005-0694, the UDRP panel stated "generally, a user of a mark may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it".
The Panel finds for the circumstances established by the Complainant as detailed in Section 5.A above, that the disputed domain name is confusingly similar to a trademark in which Complainant has rights and the requirements of paragraph 4(a)(i) of the Policy are met.
B. Rights or Legitimate Interests
Annex 6 to the Complaint shows that the disputed domain name has been used to attract Internet users to an on-line pharmacy of Respondent which provides what appears to be the generic version of the Complainant’s product, as well as other drugs, for sale. The Panel accepts that Respondent was using the disputed domain name commercially and using the trademark of Complainant to attract business and this conduct cannot form the basis for a right or legitimate interest in the disputed domain name.
The Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes using a domain name in connection with a bona fide offering of goods and services, or the respondent being commonly known by the domain name or the respondent making a legitimate non-commercial or fair use of a domain name without intent for commercial gain to misleadingly divert consumers; see Policy paragraphs 4(c)(i)-(iii). It has been established that an absence of rights or legitimate interests can properly be found if the complainant makes out a prima facie case and the respondent enters no response; see for example Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
The Panel respectfully follows the Hoffmann-La Roche Inc. v. Samuel Teodorek (supra), finds no other basis for the Respondent to have rights or legitimate interests in the disputed domain name, and finds that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
The Panel also finds that the third element of paragraph 4(a) of the Policy, namely bad faith registration and bad faith use, is also established.
Plainly, Respondent must have known or ought to have known of the well-known trademark of Complainant ACCUTANE when it applied to register the disputed domain name in June 2012. Secondly, the Panel finds that the disputed domain name is being used in bad faith as demonstrated by the Internet website of Respondent as evidenced in Annex 6 of the Complaint. The Panel accepts Complainant's contention that the manner of use of the disputed domain name by Respondent is misleading or has a high propensity to mislead consumers and to confuse them by virtue of the fact that consumers are likely to believe that the website at the disputed domain name is associated with or recommended by Complainant when this is not the case.
It is well-established that a UDRP panel may draw inferences about bad faith registration or use in the light of the circumstances such as a lack of response to the complaint and a lack of conceivable good faith; see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The Panel therefore concludes that the disputed domain name was registered and is being used by Respondent in bad faith in accordance with paragraph 4(b)(iv) of the Policy, and that paragraph 4(a)(iii) of the Policy is met.
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, <buyaccutanegeneric.net> be transferred to Complainant.
Dated: October 8, 2012