WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Roche Products Limited v. Nikolay Fedotov
Case No. D2011-1806
1. The Parties
The Complainant is Roche Products Limited, San Francisco, California, United States of America, represented by Lathrop & Gage LLP, United States of America.
The Respondent is Nikolay Fedotov, Moskva, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <accutanestore.com> is registered with Center of Ukrainian Internet Names (UKRNAMES).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 21, 2011. On October 21, 2011, the Center transmitted by email to Center of Ukrainian Internet Names (UKRNAMES).
a request for registrar verification in connection with the disputed domain name. On October 22, 2011, Center of Ukrainian Internet Names (UKRNAMES) transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On October 25, 2011 the Center notified the Complainant that as the language of the registration agreement for the disputed domain name was Russian (as per information provided by the Registrar), the Complainant would need to either provide satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English; submit the Complaint translated into Russian; or submit a request for English to be the language of the administrative proceedings. On October 26, 2011 the Complainant confirmed that a request had already been submitted for English to be the language of the proceedings in the Complaint ("We refer you to Paragraph 10 of the complaint, wherein the Complainant requests that the proceeding go forward in English.") providing the reasons for such request. The Respondent did not provide any comments in this regard.
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 of the Complaint, and the proceedings commenced on November 3, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 23, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 25, 2011.
The Center appointed Stéphane Lemarchand as the sole panelist in this matter on December 9, 2011. 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 together with its affiliated companies, is a research-focused healthcare group in the fields of pharmaceuticals and diagnostics and has global operations worldwide.
The Complainant is the owner of the registered trademark ROACCUTANE:
- United Kingdom Trademark registration No. 1119969, filed on September 3, 1979 in class 5 and lawfully renewed on April 9, 2010 (next renewal date on September 3, 2020);
- Ireland Trademark registration No. 96401 filed on September 3, 1979 and lawfully renewed on March 5, 2010;
- Malaysia Trademark registration No. 87/03256 filed on July 27, 1987 in class 5, and lawfully renewed (next renewal date on July 27, 2018) and
- Singapore Trademark Registration No. 83324 filed on December 3, 1979 in class 5 and lawfully renewed (next renewal date on December 3, 2020).
According to the Complainant's documentary evidence and contentions submitted, the Complainant also uses the mark ACCUTANE which is well known.
The disputed domain name <accutanestore.com> was registered by the Respondent on September 26, 2011.
5. Parties’ Contentions
The Complainant has submitted copies of registration certificates for the trademark ROACCUTANE from several jurisdictions dating back to 1979. In addition, the Complainant contends that it has been using the mark ACCUTANE since 1972 and that the mark has a strong reputation in North America as supported by filings of unsolicited newspaper articles and a reference to Roche Products Limited v. Andrew Palanich / Merchservice, NAF Claim No. 1354115, where the panel held that “continued public use of the product over more than three decades has provided sufficient evidence of secondary meaning and warrants trademark protection”. The marks of the Complainant designate a drug, namely isotretinoin, indicated for the treatment of severe nodular and/or inflammatory acne conglobata or recalcitrant acne.
The Complainant contends that the disputed domain name which includes the mark ACCUTANE entirely, is confusingly similar to the registered trademark ROACCUTANE, in which the prefix RO refers to the Complainant’s name “Roche”, and to the mark ACCUTANE. According to the Complainant, the addition of the descriptive language "store" at its very end does not prevent the likelihood of confusion.
As regards the Respondent’s rights or legitimate interests, the Complainant states that it has not authorized the Respondent to use the mark ACCUTANE or to incorporate the ACCUTANE portion of ROACCUTANE trademark into any domain name. Furthermore, the Respondent’s use of the disputed domain name indicates that the disputed domain name was selected and is being used because of the goodwill created by the Complainant in its marks. Furthermore, the disputed domain name resolves to a website which displays in a copyright notice "©Buy Accutane Online" and which links to another website "www.canadianselect.net" offering Accutane brand (and a generic isotretinoin) without authorization or permission from the Complainant.
Finally, according to the Complainant, the bad faith of the Respondent is evidenced from the fact that:
(a) “accutane” is not a word.
(b) The Complainant's mark ACCUTANE is an invented and coined mark that has a very strong reputation in North America.
(c) By using the disputed domain name to sell competitive isotretinoin, without permission or license of any kind, under the ACCUTANE mark in a domain name, in a copyright notice and through Respondent’s website with the link "www.canadianselect.net", the Respondent has intentionally attempted to attract for financial gain Internet users to the Respondent's website by creating a likelihood of confusion with the ACCUTANE mark, so similar to the ROACCUTANE trademark of the Complainant, as to the source, sponsorship, affiliation or endorsement of the Respondent's website.
(d) The Respondent's website has no legitimate business connection with the Complainant or the ACCUTANE or ROACCUTANE isotretinoin dermatological preparations.
(e) Use of the disputed domain name to promote sales of competitors’ products through use of the famous ACCUTANE mark of the Complainant, so similar to the ROACCUTANE trademark, demonstrates bad faith use.
(f) The Respondent has done nothing to diminish the likely confusion caused by its adoption and use of the disputed domain name to offer what it purports to be ACCUTANE branded pharmaceutical products without authorization from the Complainant. To the contrary, the Respondent adds to the likely confusion by displaying a misleading copyright notice on its website.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Language of the Proceedings
According to the concerned Registrar the language of the Registration Agreement for the disputed domain name is Russian. However, the Complaint was filed in the English language and the Complainant requests English to be the language of the proceedings. The Respondent did not file any objection to the Complainant request that the language of the proceedings being in English.
(i) The Panel’s discretion under the UDRP
Pursuant to paragraph 11(a) of the Rules, "Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding."
Thus, parties are at liberty to agree on the language of the administrative proceeding. In the absence of such an agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel reserves the right to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case. A large number of UDRP decisions were issued in which a Panel has allowed proceedings to be conducted in a language other than the language of the Registration Agreement if the circumstances showed that the Respondent was capable of responding to the Complainant’s language (e.g., International Data Group, Inc. v. Lingjun, WIPO Case No. D2004-0398).
(ii) The Circumstances of this Case
The Complainant has submitted the Complaint in English and has simultaneously mentioned the reasons why English should be the language of the proceeding, to which the Respondent has not replied. The Complainant has particularly argued that the disputed domain name resolves to a website that uses English as the default language and lists prices in dollars. Accordingly, it appears that the Respondent is able to do business in English. Complainant, on the other hand, claims to be a company conducting business largely in English.
The Respondent has failed to respond to the Complainant’s contentions.
In consideration of the present circumstances, the Panel hereby decides that, in accordance with paragraph 11 of the Rules, English shall be the language of the present administrative proceeding and the decision shall thus be rendered in English.
B. Substantive Elements of the Policy
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain transfer of the disputed domain name, the Complainant must establish that each of the three following elements is satisfied:
1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
2. The Respondent has no rights or legitimate interests in respect of the domain name; and
3. The domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel considers that the Complainant has provided sufficient evidence that it is the owner of ROACCUTANE trademark in several countries and that it is using the mark ACCUTANE for which it has accumulated a certain amount of goodwill.
The disputed domain name consists of the mark ACCUTANE combined with the descriptive word "store" at its very end and contains the generic top-level domain ".com".
A previous panel has held that combining a trademark with the word "store" is not sufficient for avoiding confusing similarity with the trademark (Baccarat SA v. Alain Lim, WIPO Case No. D2009-1446). In this case, the panel considered that the addition of the word "store" to a trademark increased the risk of confusion between the disputed domain name and the complainant's mark as Internet users are likely to think that the domain name is own by the complainant or at least that they are connected.
In addition, previous panels have found that <buy-accutane-online.us>, as well as <accutanecomprar.info>, <accutanekaufen.info>, <buyaccutaneinaustralia.info>, <buyaccutaneonlinecanada.info>, <buyaccutaneuk.info>, <buyxenicalcanada.info> and <comprareaccutaneitalia.info> domain names were confusingly similar to Complainant’s ACCUTANE mark as the disputed domain names fully incorporated Complainant’s mark with a few generic additions (Roche Products Limited v. Andrew Palanich, NAF No. 1354115 and Hoffmann-La Roche Inc., Roche Products Limited v. Vladimir Ulyanov, WIPO Case No. D2011-1474).
As regards the trademark ROACCUTANE and the disputed domain name, it has been held on several occasions that adding or deleting a few letters of a trademark does not remove the confusing similarity (F.Hoffman-La Roche AG v. Shenhong / Lantian Gongsi, WIPO Case No. D2009-0535; Columbia Pictures Industries, Inc. v. Caribbean Online International Ltd., WIPO Case No. D2008-0090).
Hence removing two letters from the Complainant’s trademark ROACCUTANE and combining it with a descriptive word ("store") is not sufficient for excluding confusing similarity with the Complainant’s trademark.
In view of the above, the Panel considers that the Complainant has proven, pursuant to paragraph 4(a)(i) of the Policy, that the disputed domain name is confusingly similar to the marks in which the Complainant has rights and continues to have rights.
B. Rights or Legitimate Interests
The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name and, as stated above, the Respondent did not provide any information to the Panel asserting any right or legitimate interest it may have in the disputed domain name.
It results from the Complaint that there is no connection between the Respondent and the Complainant or its business. Paragraph 4(c) of the Policy lists a number of circumstances which can be taken to demonstrate a respondent's rights or legitimate interests in a domain name. However, there is no evidence before the Panel that any of the situations described in paragraph 4(c) of the Policy apply here.
Therefore, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. Accordingly, the Complainant has proven the second condition required by paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Given the long-standing use and reputation of the Complainant's marks, combined with the fact that ACCUTANE and ROACCUTANE are not words, it is unlikely that the Respondent would not have been aware of the Complainant's marks when registering the disputed domain name. In addition, it results from the evidence provided by the Complainant that the disputed domain name resolves to a website displaying a misleading copyright notice (©Buy Accutane Online).
It thus appears that the disputed domain name was registered to derive commercial value from the Complainant’s marks by way of attracting Internet traffic to the Respondent’s website.
The Respondent has therefore intentionally registered the disputed domain name for the purpose of attracting Internet users to its website by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, and affiliation of the website which is recognized as bad faith registration and use under paragraph 4(b)(iv) of the Policy.
Another allegation made by the Complainant is that the Respondent’s website promotes products of the Complainant’s competitors, through a link to "www.canadianselect.net" included in the website. However, the Panel could not verify whether the disputed domain name resolves to a website linking to such website as the Respondent's website was not accessible.
In any event, the Panel finds that the disputed domain name was registered in bad faith. Accordingly, the Complainant has proven the last condition required by paragraph 4(a)(iii) of the Policy.
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, <accutanestore.com> be transferred to the Complainant.
Dated: December 23, 2011