WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. Mironov Vladimir Vladimirovich
Case No. D2015-1351
1. The Parties
The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally.
The Respondent is Mironov Vladimir Vladimirovich of “Minsk”, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <accutanewithoutprescription.com> (the Domain Name”) is registered with CJSC Registrar R01 (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 31, 2015. On July 31, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 4, 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.
According to information the Center received from the Registrar, the language of the Registration Agreement for the Domain Name is Russian. The Complainant was therefore requested to provide at least one of the following: 1) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English; or 2) submit the Complaint translated into Russian; or 3) submit a request for English to be the language of the administrative proceedings. Such request shall include arguments and supporting material (to the extent not already provided in the Complaint) as to why the proceedings should be conducted in English. The Complainant submitted a request that English be the language of the proceedings, to which the Respondent did not reply.
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 and 4, the Center formally notified the Respondent of the Complaint in English and Russian, and the proceedings commenced on August 21, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 10, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 11, 2015.
The Center appointed Olga Zalomiy as the sole panelist in this matter on September 22, 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.
4. Factual Background
Based on the written evidence submitted by the Complainant, the Panel finds the following to be the facts of this case:
The Complainant is a pharmaceutical company domiciled in Switzerland. The Complainant owns numerous trademark registrations in the ACCUTANE mark for pharmaceutical products, such as International Trademark Registration No. 840 371 dated December 6, 2004.
The Respondent is the Registrant of the Domain Name <accutanewithoutprescription.com>, registered on May 4, 2014. The Domain Name has been used to direct users to an online pharmacy that sells ACCUTANE acne medication and other drugs. The content of the website is entirely in English. On July 24, 2015, the Complainant sent a cease and desist letter to the Respondent asking him to transfer the Domain Name to the Complainant. The Respondent did not respond to the letter.
5. Parties’ Contentions
A. Complainant
The Complainant claims that with its affiliated companies, it is one of the world’s leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics and that it has global operations in over 100 countries. The Complainant claims that the Domain Name is confusingly similar to its ACCUTANE trademark. The Complainant claims that it owns an international trademark registration No. 840 371 in the ACCUTANE mark for a prescription drug for treatment of acne. The Complainant argues that the Domain Name is similar to the ACCUTANE trademark because it incorporates the mark in its entirety and because adding the descriptive words “without” and “prescription” does not sufficiently distinguish the Domain Name from the Complainant’s mark.
The Complainant claims that the Respondent has no rights or legitimate interests in the Domain Name because the Complainant has exclusive rights in the ACCUTANE mark, which predate the Respondent’s registration of the Domain Name. The Complainant alleges that the Respondent has no connection or affiliation with the Complainant and that the Complainant has not licensed the mark to the Respondent or consented to the Respondent’s use of the ACCUTANE mark. The Complainant argues that the Respondent is using the Domain name with the purpose of trading on the Complainant’s goodwill by falsely implying that the ACCUTANE drugs sold in the online pharmacy associated with the Domain Name are related or similar to those of the Complainant.
The Complainant asserts that the Domain Name was registered in bad faith because the Respondent knew about the Complainant’s ACCUTANE mark prior to its registration of the Domain Name. The Complainant claims that the Domain Name is being used in bad faith because the Domain Name is used to direct to an online pharmacy which sells ACCUTANE drugs and products of the Complainant’s competitors. The Complainant argues that the Respondent has been using the Domain Name to attract Internet users to its online pharmacy, by creating likelihood of confusion with the Complainant’s ACCUTANE mark.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Language of the Proceeding
The Panel finds English to be an appropriate language for this proceeding based on the Respondent’s apparent ability to understand the English language, the absence of any prejudice to the Respondent or any objection from the Respondent to the use of English as the language of the proceeding.
Under paragraph 11 of the Rules, unless otherwise agreed to by the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, which in this case is Russian. Because there is no agreement between the parties on the use of a different language in this proceeding, the language of the proceeding would typically be Russian. However, the Complainant submitted its Complaint in English and requested that English be the language of the proceeding. The Respondent did not object to, or comment on that request.
The Panel finds that the Complainant presented sufficient evidence to conclude that the Respondent would not be prejudiced if this proceeding is conducted in English. First, the Domain Name is an English language domain name registered in Latin characters, which shows the Respondent’s familiarity and comprehension of the English language. Second, the content of the Respondent’s website is entirely in English, which shows the Respondent’s good command of English language. Third, the website associated with the Domain Name claims to be a Canadian online pharmacy and English is one of the official languages in Canada. Fourth, the Center notified the Respondent about the Complaint and communicated all other case-related matters to the Respondent in both Russian and English languages. The Center advised the Respondent about the Complainant’s request for English as the official language of the proceeding and invited the Respondent to comment on the Complainant’s request to use English as the language of the proceedings. Finally, the Complainant is not familiar with the Russian language. To force the Complainant to translate the Complaint and accompanying documents into Russian will cause significant delay and expense for the Complainant.
Considering the circumstances of this case, the Panel determines in accordance with paragraph 11(a) of the Rules, English to be the language of the proceeding.
6.2. Analysis under the three UDRP elements
In this UDRP proceeding, the Complainant must prove, by a preponderance of the evidence1 each of the following UDRP elements2 :
(i) the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
As the Respondent has not filed a Response, the Panel may decide the dispute based on the Complaint and may accept all reasonable factual allegations as true. The Panel may also draw inferences from the Respondent’s default. Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009.
A. Identical or Confusingly Similar
To satisfy the first UDRP element, a domain name must be “identical or confusingly similar” to a trademark, in which a complainant has rights. The evidence on record shows that the Complainant owns numerous trademark registrations in the ACCUTANE mark.
The Domain Name, which comprises the ACCUTANE trademark, the words “without” and “prescription”, and the generic Top-Level Domain (“gTLD”) “.com”, is confusingly similar to the Complainant’s mark. Where the distinctive and prominent element of a disputed domain name is the complainant’s mark and the only deviation is the inclusion of a generic term or the gTLD, as prefix or suffix, such prefix or suffix does not typically negate the confusing similarity between the domain name and the mark. The Panel, therefore, finds that the Domain Name is confusingly similar to the Complainant’s ACCUTANE trademark.
The Panel therefore finds that the Complainant satisfied the first UDRP element.
B. Rights or Legitimate Interests
To satisfy the second UDRP element, the Complainant may make out an unrebutted prima facie showing that the Respondent has no rights or legitimate interests in the Domain Name.
The Panel finds that the Complainant made out a prima facie showing that the Respondent lacks any rights or legitimate interests in the Domain Name for three reasons. First, the Respondent does not use the Domain Name in connection with a bona fide offering of goods. Second, the Respondent has been using the Domain Name for commercial gain and to misleadingly divert consumers to its website. Third, the Respondent has not been commonly known by the Domain Name.
The evidence submitted by the Complainant shows that the Respondent has been using the Domain Name for an online pharmacy, which sells ACCUTANE and other drugs. The submitted printouts of the Respondent’s website reveal no disclaimers concerning the relationship between the parties. The Respondent, however, is neither a licensee of the Complainant, nor has he obtained any authorization to use the Complainant’s trademarks or sell the Complainant’s goods. Finally, based on the Respondent’s name, it has not been commonly known by the Domain Name.
Therefore, the Panel finds that the Complainant established a prima facie case. Without contrary evidence from the Respondent, this Panel finds that the second element of the UDRP has been established.
C. Registered and Used in Bad Faith
To satisfy the third UDRP element, the Complainant must prove that the Domain Name was registered and is being used in bad faith.
Paragraph 4(b) of the UDRP provides an open list of the circumstances that “shall be evidence of the registration and use of a domain name in bad faith.” The Panel finds that present circumstances correspond to those described in paragraph 4(b)(iv) of the UDRP. The Panel finds that by using the Domain Name, the Respondent intentionally attempted to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s mark “as to the source, sponsorship, affiliation, or endorsement of [his] website or location or of a product or service on [his] website or location.”
The Panel finds it is likely that the Respondent knew about the Complainant’s ACCUTANE mark and registered the <accutanewithoutprescription.com> Domain Name in bad faith. The Domain Name, which contains the Complainant’s mark and generic words describing the Respondent’s activity indicate the Respondent’s knowledge of, and desire to, capitalize on the goodwill and reputation of the ACCUTANE drug. It is also likely that an Internet user seeking to purchase the ACCUTANE drug would perceive words ACCUTANE, “without” and “prescription” in the Domain Name as an indication that the website used in connection with the Domain Name is affiliated with, or endorsed by, the Complainant. The Panel finds it inconceivable that the Respondent registered the Domain Name in good faith.
The Panel finds that the Respondent is using the Domain Name in bad faith. The printout of the Respondent’s website features the Complainant’s ACCUTANE drug and drugs of the Complainant’s competitors. The Domain Name directs to an online pharmacy, which sells the Complainant’s ACCUTANE medication and drugs of the Complainant’s competitors. There can be no other reasonable interpretation of the Respondent’s purpose in registering and using the Domain Name than to trade on the goodwill of the Complainant’s ACCUTANE trademark for commercial gain.
The Panel concludes that the Domain Name was registered and is being used in bad faith, and that the Complainant has therefore established the third element of paragraph 4(a) of the UDRP.
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 <accutanewithoutprescription.com> be transferred to the Complainant.
Olga Zalomiy
Sole Panelist
Date: October 6, 2015
1 Paragraph 4.7 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
2 Paragraph 4(a) of the UDRP.