Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, internally represented.
Respondent is Vitor Gomes Rodrigues of Garden Prairie, Illinois, United States of America (“United States”).
The disputed domain name <accutane.today> (the “Domain Name”) is registered with AlpNames Limited (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 12, 2017. On May 12, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 15, 2017, 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 17, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 6, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 7, 2017.
The Center appointed Dinant T. L. Oosterbaan as the sole panelist in this matter on June 13, 2017. 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.
According to the evidence submitted by Complainant, Complainant holds an International Trademark Registration for ACCUTANE, with No. 840371, a registration date of December 6, 2004 and a priority date of September 21, 2004. In addition, Complainant holds an International Trademark Registration, No. 450092, for the mark ROACCUTAN, with a registration date of December 13, 1979 and a priority date of August 21, 1979. The mark ROACCUTAN is registered in an alternative form as ROACCUTANE in many countries such as United Kingdom of Great Britain and Norther Ireland (“UK”) by Complainant’s UK subsidiary Roche Products Ltd.
Complainant is one of the world’s leading healthcare groups in the field of pharmaceuticals. The Panel takes notice of Complainant’s statement that it has global operations in more than 100 countries worldwide. The trademarks ACCUTANE, ROACCUTAN and ROACCUTANE designate a prescription drug indicated for the treatment of severe acne.
The Domain Name, <accutane.today>, was registered on May 2, 2017.
The trademark registrations of Complainant were issued prior to the registration of the Domain Name.
The Domain Name resolves to an online pharmacy.
Complainant submits that the Second-Level Domain of the Domain Name is identical to Complainant’s ACCUTANE trademark and the Top-Level Domain name consists of a new generic Top-Level Domain (“gTLD”) “.today”. In this case, the new gTLD “.today” does not sufficiently distinguish the Domain Name from ACCUTANE. This new gTLD does not negate the confusing similarity as it is a necessary component of a domain name and does not give any meaning or distinctiveness. It is a well-established principle that a domain name is considered as confusingly similar to a trademark to the extent that it reproduces the entirety of this trademark. Complainant asserts that the Domain Name is confusingly similar to Complainant’s ACCUTANE trademark, making it possible for customers to believe that the Domain Name is related to Complainant.
According to Complainant, Respondent has no rights or legitimate interests in respect of the Domain Name. Complainant has exclusive and prior rights in the trademark ACCUTANE, which precede Respondent’s registration of the Domain Name. Respondent has no connection or affiliation with Complainant and has not received any license or consent, express or implied, to use Complainant’s mark ACCUTANE. By falsely implying that its pharmaceutical products are related or similar to those of Complainant, Respondent is using the Domain Name with the purpose of trading on Complainant’s goodwill. Complainant submits that Respondent operates an online pharmacy which promotes and sells (among others) Accutane drugs. Such activity does not represent a legitimate noncommercial or fair use under the Policy, paragraph 4(c)(iii). According to Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784, “several cases have found that a registrant has no legitimate interest in a domain name that is similar to a pharmaceutical manufacturer’s mark and that is being used to direct consumers to an on-line pharmacy”. Furthermore, Respondent did not reply to Complainant’s cease-and-desist letter and hence has not availed itself of the opportunity to present any case of legitimate interests that it might have. Complainant concludes that there is no reason why Respondent should have any rights or legitimate interests in the Domain Name.
Complainant submits that Respondent has registered and is using the Domain Name in bad faith. There is no doubt that at the time of the registration, i.e., on May 2, 2017, Respondent had knowledge of Complainant’s product or mark ACCUTANE. The Domain Name is being used in bad faith as the Domain Name contains the mark ACCUTANE and displays an online pharmacy webpage in order to attract Internet users searching for Complainant’s ACCUTANE mark via search engines, including users who expect to be led to Complainant’s genuine website or to sites endorsed by Complainant. Complainant submits that Respondent may generate unjustified revenues and is illegitimately capitalizing on Complainant’s mark ACCUTANE. Complainant refers to the decision in F. Hoffmann-La Roche AG vs. Pinetree Development, Ltd., WIPO Case No. D2006-0049, in which the following was stated: “the website resolving to the domain name at issue has been used to provide an online pharmacy which offers (…) as well as various other drugs which directly compete with the Complainant. The use of the disputed domain name thus appears to be an attempt to attract for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark.” Complainant concludes by stating that Respondent is deliberately using the Domain Name with a connection to Complainant’s ACCUTANE mark in order to mislead the consumers.
Respondent did not reply to Complainant’s contentions.
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Paragraph 4(a) of the Policy requires that the complainant proves each of the following three elements to obtain an order that the disputed domain name should be transferred or cancelled:
(i) the disputed domain name 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Panel will proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied in this proceeding.
Pursuant to paragraph 4(a)(i) of the Policy, Complainant must establish rights in a trademark and secondly that the Domain Name is identical or confusingly similar to a trademark in which Complainant has rights.
Complainant has established that it has rights in the trademark registrations for ACCUTANE, ROACCUTAN and ROACCUTANE. Complainant’s registrations predate the creation date of the Domain Name.
The Domain Name, <accutane.today>, incorporates the entirety of the ACCUTANE mark as its distinctive element. Many UDRP decisions have found that a disputed domain name is identical or confusingly similar to a complainant’s trademark where the disputed domain name incorporates the complainant’s mark in its entirety.
The Domain Name also incorporates the essence of the ROCCUTAN and ROCCUTANE trademarks. Deletion of the letters “r” and “o”, and/or the addition of the letter “e” from Complainant’s ROACCUTAN and ROACCUTANE trademarks does not sufficiently alter the mark to distinguish the Domain Name. The addition of the gTLD “.today” is insufficient to avoid a finding of confusing similarity.
The Panel finds that Complainant has proven that the Domain Name is identical and confusingly similar to Complainant’s trademarks.
In the opinion of the Panel, Complainant has made a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name. Complainant has not licensed or otherwise permitted Respondent to use any of its trademarks or to register the Domain Name incorporating its trademarks. Respondent is not making a legitimate noncommercial or fair use of the Domain Name with intent for commercial gain to misleadingly divert consumers or to tarnish the trademarks of Complainant.
Based on the evidence provided by Complainant, the Domain Name resolves to an online pharmacy advertising “our drug prices are 70% less than in your local pharmacy”. The website to which the Domain Name resolves mentions phone numbers in the United States and in the European Union. The website is not limited to selling Accutane products but also mentions a substantial number of other drugs from various manufacturers.
According to a Google search for “accutane.today” the following result is mentioned: “Buy Accutane (Isotretinoin) Online Without Prescription”. According to publicly available Wikipedia information the generic drug “Isotretinoin is primarily used as a treatment for severe acne.… In the United States, a special procedure is required to obtain the pharmaceutical. In most other countries, a consent form is required which explains these risks.” In other words, the generic drug Isotretinoin (sold by Complainant under its ACCUTANE, ROACCUTAN and ROACCUTANE trademarks) is a serious drug only available with a prescription, but advertised by Respondent as available without prescription.
Such use of the Domain Name cannot be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Domain Name. In addition, the website under the Domain Name does not accurately and prominently disclose the relationship between Respondent and Complainant as the holder of the well-known ACCUTANE, ROACCUTAN and ROACCUTANE trademarks, in particular as there has never been any business relationship between Complainant and Respondent. Respondent is also not commonly known by the Domain Name nor has it acquired any trademark or service mark rights.
The Panel also notes that previous UDRP panels have held that a respondent has no legitimate interests in a domain name consisting of a famous pharmaceutical trademark used to divert traffic to an unauthorized online pharmacy. See F. Hoffmann-La Roche AG v. Shop User, WIPO Case No. D2014-1560, and Pfizer Inc. v jg a/k/a Josh Green, WIPO Case No. D2004-0784.
No Response to the Complaint was filed and Respondent has not rebutted Complainant’s prima facie case.
Under these circumstances, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
The Panel finds that the Domain Name has been registered and is being used in bad faith. The trademarks of Complainant are well-known and long existing trademarks and Respondent knew or should have known that the Domain Name included Complainant’s marks.
The Panel further notes that the Domain Name incorporates Complainant’s well-known trademarks in its entirety or variations thereof, which indicates, in the circumstances of this case, that Respondent registered and used the Domain Name with the intention to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the trademarks of Complainant as to the source, sponsorship, affiliation, or endorsement of its website or location or of a service on its website or location, which constitutes registration and use in bad faith pursuant to paragraph 4(b)(iv) of the Policy.
The Panel finds that Complainant has proven that the Domain Name has been registered and is being used in bad faith.
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, <accutane.today>, be transferred to Complainant.
Dinant T. L. Oosterbaan
Date: June 20, 2017