WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hoffmann-La Roche Inc. v. ML, Matt Leavsi / WhoisGuard
Case No. D2012-0587
1. The Parties
The Complainant is Hoffmann-La Roche Inc., New Jersey of United States of America, represented by Jérôme Rhein, Switzerland.
The Respondent is ML, Matt Leavsi, Catanzaro, Italy: WhoisGuard, Los Angeles, California, United States of America (the United States”).
2. The Domain Name and Registrar
The disputed domain name <buyaccutanecheap.com> ("the Domain Name") is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 21, 2012. On March 21, 2012, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On March 22, eNom transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 27, 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 March 27, 2012.
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 March 28, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 17, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 23, 2012.
The Center appointed Dawn Osborne of Palmer Biggs Legal as the sole panelist in this matter on May 30, 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 has a trade mark registration for ACCUTANE in the United States, the first use in commerce of this mark being 1982.
The Respondent registered the Domain Name on March 9, 2012. Prior to the filed Complaint the Respondent was using the Domain Name to redirect Internet users to an on line phamacy offering generic drugs including "Generic Accutane". The website at the Domain Name is currently inactive.
5. Parties’ Contentions
The Complainant has a trade mark registration for ACCUTANE in the United States, the first use in commerce of this mark being 1982. Accutane is a brand for a dermatological preparation in the form of a product indicated for the treatment and prevention of acne.
The Domain Name incorporates the Compainant's ACCUTANE trade mark in its entirety. Adding the prefix "buy" and the additional word "cheap" does nothing to dispel the connection likely to be made by the public between ACCUTANE and the Complainant and suggest that it is a place to obtain the Complainant's product cheaply. The Domain Name is confusingly similar to the trade mark of the Complainant.
No licence has been given for the brand ACCUTANE to be used in the Domain Name. The Respondent is using the Domain Name for commercial gain and to capitalise on the Complainant's brand ACCUTANE. The Respondent has no right or legitimate interest in the Domain Name.
The Respondent registered the Domain Name on March 9, 2012. It is using the Domain Name to redirect Internet users to an on line phamacy offering generic drugs not of the Complainant's manufacture including "Generic Accutane". "Generic Accutane" directly competed with the Complainant's product Accutane.
The Domain Name was registered in bad faith. The Respondent is intentionally attempting (for commercial purposes) to attract Internet users to the Respondent's web site by creating a likelihood of confusion with the Complainant's trade mark as to the source, affiliation or endorsement of Respondent's web site or of the products or services posted on or linked to from the site.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The 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 Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
A. Identical or confusing similarity
The Domain Name is confusingly similar to the Complainant’s trademark consisting of the Complainant’s ACCUTANE trademark and the generic words “buy” and "cheap". The distinctive part of the domain name is the ACCUTANE name. The addition of the non distinctive words “buy” and "cheap" does nothing to prevent the confusing similarity of the Domain Name with the Complainant’s ACCUTANE trademark.
B. Rights or Legitimate Interest of the Respondent
The Respondent has not filed a Response and does not appear to have any rights or legitimate interest in the Domain Name. In the circumstances of this case, and in view of the Panel’s discussion here below, the Panel finds that the second element of the Policy has been established.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Rules sets out four non exclusive criteria which shall be evidence of the registration and use of a Domain Name in bad faith including:
“by using the domain name [the Respondent] has intentionally attempted to attract, for commercial gain, Internet users to [its] website or other on line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, affiliation or endorsement of [its] website or location or of a product or service on [its] website or location.”
The Respondent has not provided any explanation why it would be entitled to register a Domain Name equivalent to the Complainant’s trade mark with only generic words added and sell pharmaceuticals which are not those of the Complainant as and for the same. In the absence of a Response from the Respondent, and considering the material linked to the Domain Name the Panel is satisfied that the Complainant has shown that the Respondent registered the Domain Name in bad faith with an intent to use the Domain Name to attract business to its site for commercial gain by creating a likelihood of confusion with the Complainant's mark and its business and products by using a Domain Name confusingly similar to the Complainant’s mark and selling pharmaceuticals not connected with the Complainant as and for the same.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <buyaccutanecheap.com> be transferred to the Complainant.
Dated: May 8, 2012