WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Hoffmann-La Roche Inc. v. Alexey K/ Wilke Harald/ Whois Privacy Protection Service

Case No. D2012-2119

1. The Parties

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

The Respondent is Alexey K of Minsk, Belarus; Wilke Harald of Hamburg, Germany; Whois Privacy Protection Service of Xiamen, Fujian, China.

2. The Domain Names and Registrar

The disputed domain names <buyaccutane-online.com> and <fdaccutane.com> are registered with Bizcn.com, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on October 25, 2012. On October 26, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 30, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 30, 2012 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 October 31, 2012 requesting and providing evidence for consolidation of multiple Respondents in this case.

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 proceedings commenced on November 1, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 21, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 22, 2012.

The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on November 26, 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

The Complainant is the holder of the following trademark registration:

The disputed domain name <buyaccutane-online.com> was registered on August 10, 2012 and the disputed domain name <fdaccutane.com> (the “domain name/names”) was registered on October 4, 2012.

5. Parties’ Contentions

A. Complainant

The Complainant argues the following:

Identical or Confusingly Similar

- That the Complainant is engaged in research and development of pharmaceutical and diagnostic products.

- That the trademark ACCUTANE covers a dermatological preparation. That 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.

- That the domain names are confusingly similar to the Complainant’s mark because they both incorporate said mark in its entirety, which may result in the wrongful association of the domain names with the Complainant’s mark (Hoffmann-La Roche Inc. v. Hightech Industries, Andrew Browne, WIPO Case No. D2010-0240).

- That the domain name <fdaccutane.com> may refer to the “FDA” (Food and Drugs Administration) which is related to the field of activity in which the Complainant operates, thus adding to the likelihood of confusion.

- That the domain name <buyaccutane-online.com> entirely incorporates the mark ACCUTANE, with the additional words “online” and “buy”, which may suggest that the Respondent’s websites are locations where a consumer may buy the Complainant’s brand product (Lilly ICOS LLC v. John Hopking / Neo net Ltd., WIPO Case No. D2005-0694).

- That the Complainant’s use and registration of the trademark ACCUTANE predate the Respondent’s registration of the domain names.

Rights or Legitimate Interests

- That the Complainant has exclusive rights for ACCUTANE, and that no licence/permission/authorization was granted to the Respondent to use ACCUTANE in the domain names.

- That the Respondent uses the domain names for commercial gain and with the purpose of capitalizing on the fame of the Complainant’s mark ACCUTANE.

- That the domain name <buyaccutane-online.com> redirects customers to the Respondent’s domain name and website at <fdaccutane.com>.

- That the domain name <fdaccutane.com> offers for sale ACCUTANE products online. That upon clicking on “buy now” or “buy ACCUTANE”, Internet users are redirected to an online pharmacy: “www.cozanshop.com” offering ACCUTANE as well as other drugs (Hoffmann-La Roche Inc. v. Samuel Teodorek, WIPO Case No. D2007-1814, to argue that the use of a domain name to redirect users to an on-line pharmacy shows lack of legitimate interest).

Registered and Used in Bad Faith

- That the domain names were registered in bad faith since at the time of the registrations the Respondent had knowledge of the Complainant’s well-known product and trademark ACCUTANE.

- That the domain names are also used in bad faith, because the Respondent is intentionally attempting to attract, for commercial purpose, Internet users, by creating a likelihood of confusion with the Complainant’s well-known mark.

- That bad faith is established when the domain name is used to redirect users to a “for profit on-line pharmacy” (Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784).

- That Respondent, by using the domain names, is intentionally misleading consumers by making them believe that the website behind said names is associated or recommended by the Complainant.

- That Respondent may generate unjustified revenues on the ACCUTANE trademark.

B. Respondent

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

6. Discussion and Findings

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

(i) The domain names are identical or confusingly similar to a trademark in which the Complainant has rights;

(ii) The Respondent has no rights or legitimate interests in respect of the domain names; and

(iii) The domain names have been registered and are being used in bad faith.

As the Respondent has failed to submit a Response to the Complainant’s contentions, the Panel may choose to accept as true all of the reasonable allegations of the Complaint (see Encyclopædia Britannica, Inc. v. null John Zuccarini, Country Walk, WIPO Case No. D2002-0487).

A. Consolidation

As a preliminary matter, the Panel considers the Complainant’s request in its amendment to the Complaint of October 31, 2012 to bring a single consolidated complaint against multiple domain name registrants.

The Panel has considered the Complainant’s arguments in this regard, in particular that the named Respondents Alexey K and Wilke Harald share nearly identicial e-mail addresses, identical street addresses (although different city and country details), as well as identical telephone and fax numbers (save for the respective country code). The Panel also notes the domain name <buyaccutane-online.com>, registered by Alexey K, redirects to a website at the domain name <fdaccutane.com>, registered by Wilke Harald. Under the circumstances, the Panel considers the consolidation of these proceedings proper in relation to the Respondents Alexey K and Wilke Harald (see Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.16). The Panel furthermore finds the inclusion of the privacy shield Whois Privacy Protection Service as a Respondent proper in this proceeding (WIPO Overview 2.0, paragraph 4.9).

B. Identical or Confusingly Similar

The domain name <buyaccutane-online.com> entirely incorporates the mark ACCUTANE, with the additional words “online” and “buy”, a hyphen, and the gTLD “.com”.

The domain name <fdaccutane.com> also entirely incorporates the mark ACCUTANE, with the addition of the letters “f” and “d” at the beginning of the name, plus the gTLD “.com”. The Panel agrees with the Complainant that the resulting composition may suggest a possible association between the Complainant’s trademark, and the FDA, which in the mind of the consuming public is closely related to the regulation and authorization of pharmaceutical products.

The addition of the generic words “buy”, “online”, the hyphen, or the letters “f” and “d” to the trademark ACCUTANE does not to this Panel add a distinctive character to the domain names, and it does not eliminate the confusing similarity between said trademark and the two domain names (see CBS Broadcasting Inc. v. Forhart – Michael Engelhart, WIPO Case No. D2010-0284; see also Quixtar Investments, Inc. v. Scott A. Smithberger and QUIXTAR-IBO, WIPO Case No. D2000-0138; GA Modefine S.A. v. Mark O’Flynn, WIPO Case No. D2000-1424; PepsiCo, Inc. v. Diabetes Home Care, Inc. and DHC Services, WIPO Case No. D2001-0174; Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409 and America Online, Inc. v. Chris Hoffman, WIPO Case No. D2001-1184).

The inclusion of the words “online” and “buy”, as well as the likely misleading use of the term “fda” may suggest that the domain names are somehow related to the authorized sales of pharmaceutical products, and may therefore mislead the public. See Lilly ICOS LLC v. John Hopking / Neo net Ltd., WIPO Case No. D2005-0694.

The addition of the gTLD “.com” is typically irrelevant for the purposes of this analysis, as it does not add any distinctiveness to the domain names (see Telecom Personal, S.A., v. NAMEZERO.COM, Inc., WIPO Case No. D2001-0015; Société Générale and Fimat International Banque v. Lebanon Index/La France DN and Elie Khouri, WIPO Case No. D2002-0760).

Therefore, the Panel finds that <buyaccutane-online.com> and <fdaccutane.com> are confusingly similar to the trademark ACCUTANE. The first element of the Policy has been met.

C. Rights or Legitimate Interests

The following are examples of circumstances where a respondent may have rights or legitimate interests in a domain name:

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. (Policy, paragraph 4(c)).

There is no evidence on the record showing any use, or preparations to use the domain names in connection with a bona fide offering of goods or services. The evidence submitted by the Complainant shows that the domain name <buyaccutane-online.com> redirects Internet users to the website at the domain name <fdaccutane.com>. The latter domain name resolves to a website where drugs are apparently offered. In turn, when Internet users click on the “buy now” or “buy Accutane” hyperlinks in the “www.fdaccutane.com” site, they are redirected to “www.cozanshop.com”, an online store. The website to which the domain name <fdaccutane.com> resolves contains phrases like “Buy Accutane without prescription”, or strings like “buy accutane without prescription ccutane cheap acute online now”. The use of these phrases and strings, plus the typosquatting variation “ccutane” of the trademark ACCUTANE, in addition to the use of the term “fda” and the FDA logo on the site associated to the domain name <fdaccutane.com> show that the Respondent is not acting in good faith and do not provide the Respondent with a right or legitimate interest in the domain names.

Because of the nature of these online sales, and given the circumstances of the present case, it is not possible to determine that the offer of “cheap Accutane” or “Accutane without prescription” products is legitimate. The Panel thinks that there are sufficient health risks involved in offering to sell drugs online without minimum controls. See mutatis mutandis, Hoffmann-La Roche Inc. v. Samuel Teodorek, WIPO Case No. D2007-1814.

Thus, the Respondent’s offering of these goods cannot be considered to be in good faith, legitimate or noncommercial.

The case file does not contain evidence showing that the Respondent has been commonly known by the domain names. The domain names fully incorporate the trademark of a known drug which does not coincide with the names of the Respondent.

Thus, the Panel has not found any rights or legitimate interests on the side of the Respondent. The second element of the Policy has been met.

D. Registered and Used in Bad Faith

According to paragraph 4(b) of the Policy, the following circumstances shall be evidence of registration and use in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 website or location or of a product or service on your website or location.”

The case file shows that the Respondent has created a scheme for attracting users to the website at the domain name <buyaccutane-online.com>, which in turn redirects Internet users to the website at the domain name <fdaccutane.com>, which resolves to a site that offers “cheap Accutane” or “Accutane without prescription” (which site is in turn linked to a third party site where drugs are sold). The scheme associates the name of the FDA to the sales of these products. This construction not only creates confusion with the Complainant’s mark ACCUTANE as to the source, sponsorship, affiliation or endorsement of the Respondent’s website, but it can also pose a threat to public health. The use of a domain name to attract users by creating a confusion with the complainant’s mark constitutes bad faith under paragraph 4(b)(iv) of the Policy. See e.g. Alpine Entertainment Group, Inc. v. Walter Alvarez, WIPO Case No. D2007-1082; Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267; Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415 and Owens Corning v. NA, WIPO Case No. D2007-1143.

Therefore, 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 names <buyaccutane-online.com> and <fdaccutane.com> be transferred to the Complainant.

Kiyoshi Tsuru
Sole Panelist
Date: December 11, 2012