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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

F. Hoffmann-La Roche AG v. NicProxy Cusotmer / Oksana Gerasimova

Case No. D2015-0076

1. The Parties

The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally.

The Respondent is NicProxy Cusotmer, Whois Privacy Protection Service of Istanbul, Turkey / Oksana Gerasimova of Tatarstan, the Russian Federation (“Russia”).

2. The Domain Name and Registrar

The disputed domain name <roaccutaneprix.net> is registered with Nics Telekomünikasyon Ticaret Ltd. Sti. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 16, 2015. On January 16, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 19, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

On January 21, 2015, the Center transmitted an email in both English and Turkish regarding the language of proceeding. On January 22, 2015, the Center received the Complainant’s request for English to be the language of proceeding. The Respondent did not reply to this request.

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 NicProxy Cusotmer of the Complaint, and the proceedings commenced on January 28, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 17, 2015. The Respondent NicProxy Cusotmer did not submit any response. Accordingly, the Center notified the Respondent’s default on February 18, 2015. On February 20, 2015 the Center noted that although the disputed domain name should have remained locked during the proceeding, the publicly-available WhoIs information had been changed in the meantime. The Center noted that the disputed domain appears to be registered by the Respondent Oksana Gerasimova.

The Center appointed Kaya Köklü as the sole panelist in this matter on March 3, 2015. 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 Panel noted that the documents entitled “Notification of Complaint and Commencement of Administrative Proceeding” and “Written Notice”, and the Complaint (including annexes) were not notified to the Respondent Oksana Gerasimova. Hence, the Panel issued a Panel Order on March 11, 2015, in English and Turkish, directing the Center to notify the Respondent Oksana Gerasimova of all mentioned documents and allowing the Respondent a period of five days (i.e. by March 16, 2015) in which it may indicate whether it wishes to submit a response. The Respondent Oksana Gerasimova kept silent on this Panel Order and did not provide any reaction.

4. Factual Background

The Complainant, together with its affiliated companies, is a well-known healthcare group in the fields of pharmaceuticals and diagnostics with global operations. The Complainant and its subsidiaries own a large number of ROACCUTANE, ROACCUTAN and ACCUTANE trademarks, registered in a significant number of jurisdictions including Turkey and Russia. The trademarks designate a drug indicated for the treatment of different types of acne.

The first ROACCUTANE trademarks were registered in the late 1970’s, mainly covering protection for drugs as described in class 5 of the International Classification of Goods and Services under the Nice Agreement.

Further to its registered mark ROACCUTANE, the Complainant and its subsidiaries also own a significant number of ACCUTANE and ROACCUTAN trademarks.

The disputed domain name <roaccutaneprix.net> was registered on March 30, 2011.

At the time of the decision, the disputed domain name does not resolve to any active webpage. However, as evidenced in Annex 7 of the Complaint, the disputed domain name recently resolved to an online pharmacy shop offering products from the Complainant as well as from third parties in the French language.

The Respondent NicProxy Cusotmer is a domain name registrar located in Turkey providing privacy protection services by replacing the publicly visible contact details of the registrant with alternate contact information. The newly revealed Respondent Oksana Gerasimova appears to be an individual from Russia. Both Respondents are jointly referred to as “the Respondent” in the following.

5. Parties’ Contentions

A. Complainant

The Complainant requests the transfer of the disputed domain name.

The Complainant is of the opinion that the disputed domain name is confusingly similar to the Complainant’s ROACCUTANE trademark.

Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in the disputed domain name.

Finally, the Complainant asserts that the Respondent must have registered and used the disputed domain name in bad faith.

B. Respondent

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

6. Discussion and Findings

The Panel determines in accordance with the Complainant’s request and the Rules, paragraph 11(a), that the language of this administrative proceeding shall be the English language. Although the language of the Registration Agreement is the Turkish language, the Panel finds that it would be inappropriate, given the circumstances of this case, to conduct the proceeding in Turkish and request a costly Turkish translation of the Complaint while the Respondent has failed to raise any objection or even to respond to the Complaint or respond to the Center’s communication with regard to the language of the proceeding, even though communicated in Turkish and in English. In its decision, the Panel also considers the awareness of the Complainant and the notoriety of its trademarks, which indicates that this is a typical cybersquatting case, which the UDRP was designed to time and cost efficiently stop.

According to paragraph 14(a) and 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the Complaint where no Response has been submitted.

In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:

(i) the disputed domain name is identical or confusingly similar to the trademarks in which the Complainant has rights; and

(ii) the 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.

Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complaint. Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228.

However, concerning the uncontested information provided by the Complainant, the Panel may, where appropriate, accept the provided reasonable factual allegations in the Complaint as true. Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.

It is further noted that the Panel has taken note of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) and, where appropriate, will decide consistent with the WIPO Overview 2.0.

A. Identical or Confusingly Similar

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s ROACCUTAN, ROACCUTANE and ACCUTANE trademarks.

First, the Panel confirms that the Complainant has satisfied the threshold requirement of having respective trademark rights. Since the late 1970’s, the Complainant (respectively its subsidiaries) has been the owner of a large number of ROACCUTAN, ROACCUTANE and ACCUTANE trademarks, all of them claiming protection for drugs as described in class 5 of the International Classification of Goods and Services under the Nice Agreement.

Although not identical, the disputed domain name fully incorporates the Complainant’s ROACCUTAN, ROACCUTANE and ACCUTANE trademarks.

The disputed domain name differs from the Complainant’s trademarks only by the addition of the French term “prix” which means “price” in the English language. In the Panel’s view, this addition does not negate the confusing similarity between the Complainant’s trademarks and the disputed domain name. The Panel finds that this additional incorporation is purely descriptive and does not distinguish the disputed domain name from the Complainant’s trademarks.

The Panel concludes that the disputed domain name is confusingly similar to the trademarks in which the Complainant has rights.

In view of the above, the Panel is satisfied that the Complainant has met the requirements under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Panel further finds that the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name.

While the overall burden of proof remains with the Complainant, the Panel recognizes that this would often result in the impossible task of proving a negative, in particular as the evidence needed to show the Respondent’s lack of rights or legitimate interests is primarily within the knowledge of the Respondent. Therefore, the Panel agrees with prior UDRP panels that the Complainant is required to make out a prima facie case before the burden of production of evidence shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name in order to meet the requirements of paragraph 4(a)(ii) of the Policy. Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.

The Panel finds that the Complainant has satisfied this requirement, while the Respondent has failed to file any evidence or make any convincing argument to demonstrate rights or legitimate interests in the disputed domain name according to the Policy, paragraph 4(a)(ii) and 4(c).

In its Complaint, the Complainant has provided uncontested prima facie evidence that the Respondent has no rights or legitimate interests to use any of the Complainant’s ROACCUTAN, ROACCUTANE or ACCUTANE trademarks in the disputed domain name. In particular, the Complainant affirmed that it never granted a trademark license or any other permission to the Respondent.

In the absence of a response by the Respondent, there is no indication in the current record that the Respondent is commonly known by the disputed domain name. Furthermore, the Respondent has failed to demonstrate any of the non-exclusive circumstances evidencing rights or legitimate interests under the Policy, paragraph 4(c) or other evidence of rights or legitimate interests in the disputed domain name. In particular, the Respondent has failed to show that the disputed domain name has been or is intended to be used in connection with a bona fide offering of goods or services.

Consequently, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel is further convinced that the Respondent has registered and is using the disputed domain name in bad faith.

The Panel believes that the Respondent is deliberately attempting to create confusion among Internet users and/or to illegitimately benefit from the Complainant’s ROACCUTAN, ROACCUTANE and ACCUTANE trademarks for commercial gain.

The Panel is convinced that the Respondent must have been well aware of the Complainant’s trademarks when it registered the disputed domain name in March 2011. At the date of registration of the disputed domain name, the Complainant’s trademarks were already registered and recognized worldwide (including in Turkey and Russia). This assessment is supported by the fact that until recently the Respondent operated an online pharmacy shop linked to the disputed domain name offering the Complainants’ and third parties’ medicinal products.

Furthermore, another indication for bad faith is that the Respondent preferred not to respond to the Complainant’s contentions, although being informed of the pending administrative proceeding in the Turkish and English language.

The fact that, at the time of the decision, the disputed domain name does not resolve to an active webpage does not change the Panel’s overall assessment on the Respondent’s bad faith.

All in all, the Panel cannot conceive of any good faith use of the disputed domain name by the Respondent. The Panel is convinced that the available record provides sufficient evidence to justify an assessment of bad faith registration and use.

The Panel therefore concludes that the disputed domain name was registered and is being used in bad faith and that the Complainant consequently has satisfied the third element of the Policy, namely, paragraph 4(a)(iii) 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 name <roaccutaneprix.net> be transferred to the Complainant.

Kaya Köklü
Sole Panelist
Date: March 20, 2015

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