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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Roche Products Limited v. Private Whois

Case No. D2011-2097

1. The Parties

Complainant is Roche Products Limited of Welwyn Garden City, United Kingdom of Great Britain and Northern Ireland (“U.K.”), represented by Lathrop & Gage LLP, United States of America (“U.S.”).

Respondent is Private Whois of Nassau, Bahamas.

2. The Domain Name and Registrar

The disputed domain name <buyaccutanenorx.com> (the “Domain Name”) is registered with Internet.bs Corp (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 30, 2011. On November 30, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 1, 2011, 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.

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 Respondent of the Complaint, and the proceedings commenced on December 1, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 21, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 22, 2011.

The Center appointed Dinant T. L. Oosterbaan as the sole panelist in this matter on January 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

According to the evidence submitted by Complainant, there are multiple trademark registrations for ROACCUTANE in various countries while the mark ACCUTANE has been used by affiliated companies of the Complainant since 1972 and has become well-known.

The Domain Name <buyaccutanenorx.com> was registered on November 10, 2011.

5. Parties’ Contentions

A. Complainant

Complainant submits that the Domain Name is confusingly similar to the well-known ROACCUTANE trademark and the ACCUTANE mark. According to Complainant the ROACCUTANE trademark consists of the ACCUTANE mark and the two letters RO, which is an abbreviation for the well-known company name Roche. According to Complainant, Respondent has no rights or legitimate interests in respect of the Domain Name in view of its trademark and mark. Complainant submits that Respondent has registered and is using the Domain Name in bad faith to advertise and sell competitive third party products, including generic isotretinoin drugs.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this 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 Complainant proves each of the following three elements to obtain an order that the Domain Name should be transferred:

(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) 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.

The Panel is satisfied that the Domain Name is subject to the control of Respondent and will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied by the Complainant in this proceeding.

A. Identical or Confusingly Similar

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 is the owner of various trademark registrations for ROACCUTANE. Complainant’s registrations predate the creation date of the Domain Name. Complainant has also demonstrated that the unregistered mark ACCUTANE has been widely used for several decades, is well-known and thus warrants trademark protection.

The Domain Name <buyaccutanenorx.com> incorporates the entirety of the ACCUTANE mark as its distinctive element. Many UDRP decisions have found that a disputed domain name is confusingly similar to a complainant’s trademark where the disputed domain name incorporates the complainant’s mark in its entirety. The addition of common, dictionary, descriptive or other elements is irrelevant.

In addition the Domain Name <buyaccutanenorx.com> incorporates the essence of the ROCCUTANE trademark. Deleting the letters “r” and “o” from Complainant’s trademark does not sufficiently alter the mark to distinguish the Domain Name under the Policy. See Roche Products Limited v. alex shvako/qudi, NAF Claim No. FA1417951 (<buyaccutane.us>).

The Panel finds that Complainant has proven that the Domain Name is confusingly similar to Complainant’s trademarks.

B. Rights or Legitimate Interests

In the opinion of the Panel Complainant has made a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name. This is particularly true as Respondent is not making a legitimate noncommercial or fair use of the Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademarks of Complainant. Based on the evidence provided by Complainant Respondent promotes and sells generic drugs competing with the products of Complainant. Respondent makes use of the likelihood of confusion with the trademarks of Complainant, which cannot be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Domain Name. In addition, Respondent is not commonly known by the Domain Name nor has it acquired trademark rights. Under these circumstances the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.

C. Registered and Used in Bad Faith

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 finds that the above elements mean that Respondent intentionally attempts 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 product on its website or location.

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 <buyaccutanenorx.com> be transferred to Complainant.

Dinant T. L. Oosterbaan
Sole Panelist
Dated: February 3, 2012

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