World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Hoffmann-La Roche Inc. v. Whois Privacy Protection Service, Inc. / Pasilk Geneuq

Case No. D2013-0338

1. The Parties

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

The Respondent is Whois Privacy Protection Service, Inc. of Bellevue, Washington, United States of America / Pasilk Geneuq of Aubervilliers, Ile-de-France, France.

2. The Domain Name and Registrar

The disputed domain name <acheteraccutane.com> (the “Domain Name”) is registered with Name.com LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 20, 2013. On February 20, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 20, 2013, the Registrar 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 21, 2013, 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, 2013.

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 amendment to the Complaint, and the proceedings commenced on February 22, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 14, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 15, 2013.

The Center appointed Chiang Ling Li as the sole panelist in this matter on March 21, 2013. 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’s mark ACCUTANE (the “Trademark”) was registered in the United States Patent and Trademark Office as of August 28, 1973 covering pharmaceuticals.

The disputed domain name <acheteraccutane.com> was created on February 7, 2013. The Respondent did not submit any response to the Complaint.

5. Parties’ Contentions

A. Complainant

(i) The Domain Name is confusingly similar to the Trademark

The Complainant submits that the Domain Name incorporates the Trademark in its entirety and that the additional word “acheter” (meaning “to buy” in French) is a generic word according to F. Hoffman–La Roche AG v. Nexton Limited, Ryabov Sergey, WIPO Case No. D2010-0101 which does not affect the likelihood of confusion with the Trademark. The Complainant adds that the use and registration of the Trademark predates the Respondent’s registration of the Domain Name.

(ii) Respondent’s lack of rights or legitimate interests in the Domain Name

The Complainant claims that it has exclusive rights to the Trademark and that no consent was granted to the Respondent to its use in the Domain Name. The Complainant asserts that the Domain Name clearly alludes to the Complainant and that there is no reason for the Respondent to have any right or legitimate interest in the Domain Name.

(iii) The Domain Name was registered and is being used in bad faith

The Complainant submits that the Domain Name was registered in bad faith because at the time of registration, the Respondent had knowledge of the Trademark. The Complainant adds that the Domain Name is being used in bad faith because the Respondent has attempted to attract Internet users to its website by creating a likelihood of confusion as to the source, affiliation and endorsement of the Respondent’s website, for a commercial purpose. As a result, the Complainant alleges that the Respondent may generate unjustified revenues and is therefore illegally capitalizing on the Trademark.

(iv) Requested Remedy

The Complainant requests that the Domain Name be transferred to the Complainant.

B. Respondent

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

6. Discussion and Findings

(i) The Domain Name is confusingly similar to the Trademark

The only difference between the Domain Name and the Trademark is the addition of the generic term “acheter” which does not distinguish the Domain Name from the Trademark in the opinion of the Panel. Instead it indicates that the Trademark product can be purchased through the website at the Domain Name.

The Panel finds that the first element of the Policy has been met.

(ii) Respondent’s lack of rights or legitimate interests in the Domain Name

The Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. Once such prima facie case is made, the burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. The Respondent has not responded to the allegations of the Complainant. See paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).

The Panel finds that the second element of the Policy has been met.

(iii) The Domain Name was registered and is being used in bad faith

The Respondent would have been aware of the Trademark and/or the Trademark products prior to registration of the Domain Name as it was used to establish a website that directs Internet users to two on-line pharmacies where the Trademark product, or generic form, can be purchased directly. One of the referenced on-line pharmacies even states that the Trademark product is manufactured by the Complainant

Paragraph 4(b)(iv) of the Policy state that “shall be evidence of the registration and use of a domain name in bad faith”: “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 or of a product or service on your web site or location.

The Panel is satisfied that the third element of the Policy has been met.

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 Domain Name <acheteraccutane.com> be transferred to the Complainant.

Chiang Ling Li
Sole Panelist
Date: April 4, 2013

 

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