WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. Viktor Konin
Case No. D2012-1162
1. The Parties
The Complainant is F. Hoffmann-La Roche AG, Basel, Switzerland, internally represented.
The Respondent is Viktor Konin, Ekaterinburg, Russian Federation.
2. The Domain Names and Registrar
The disputed domain names <accutaneonline24x7.com> and <valiumonline24x7.com> are registered with DomainContext, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 7, 2012. On June 7, 2012, the Center transmitted by email to DomainContext, Inc. a request for registrar verification in connection with the disputed domain names. On June 7, 2012, DomainContext, Inc. 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 the Respondent of the Complaint, and the proceedings commenced on June 11, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 1, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 4, 2012.
The Center appointed Amarjit Singh as the sole panelist in this matter on July 24, 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 together with its affiliated companies one of the world’s leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics and having global operations in more than 100 countries.
The Complainant’s mark VALIUM is protected as trademark in a multitude of countries worldwide.
The mark ACCUTANE is an alternative Trademark (US version) for the Trademark ROACCUTAN. ROACCUTAN Trademark is protected in a multitude of countries worldwide.
ACCUTANE is registered on behalf of Hoffmann-La Roche Inc. in the United States Patent and Trademark Offices as of August 28, 1973 under Registration No. 966,924.
The disputed domain names were all registered on May 26, 2012.
5. Parties’ Contentions
The mark VALIUM designates a sedative and anxiolytic drug belonging to the benzodiazepine family, which enables the Complainant to build a world-wide reputation in psychotropic medications. For the mark VALIUM the Complainant holds registration in over hundred countries on a world-wide basis.
ACCUTANE is registered on behalf of Hoffmann-La Roche Inc. in the United States Patent and Trademark Office as of August 28, 1973 under Registration No. 966,924, with a first use in 1982. The same as Complainant, F. Hoffmann-La Roche AG, also Hoffmann-La Roche Inc., New Jersey, United States of America, is owned and controlled by the Complainant, a company organized and doing business under the laws of Basel, Switzerland. The Complainant owns and uses the domain name <accutane.com>.
The mark ACCUTANE designates a dermatological preparation in the form of a product indicated for the treatment and prevention of acne. 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. The sale of the ACCUTANE products in the United States has exceeded hundreds of millions of dollars.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant is a registered proprietor of Trade Mark VALIUM under international classes 1,3 and 5 as per the certificate filed by the Complainant under International Registration No. 250784 dated October 20, 1961. The Complainant is also registered proprietor of Trademark ROACCUTAN in international class 5 as per the certificate filed by the Complainant under International Registration No. 450092.
The Complainant is also registered proprietor of Trademark ACCUTANE in international class 5 as per the certificate filed by the Complainant in US Registration No. 966924.
The disputed domain names are confusingly similar to the Complainant’s trademarks VALIUM and ACCUTANE seeing that they respectively incorporate these marks in their entirety.
The Complainant relies upon (Hoffmann-La Roche Inc. v. Hightech Industries, Andrew Browne, WIPO Case No. D2010-0240), “prior UDRP panels have recognized that the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark”.
The Complainant also relies upon (Lilly ICOS LLC v. Johan Hopking/Neo net Ltd., WIPO Case No. D2005-0694), “generally, a user of a mark may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it”. The additional word “online” “added to Complainant’s (..) mark, may suggest that Respondent’s websites are locations where a consumer may buy (VALIUM or ACCUTANE) brand product”.
The Respondent has not responded to the claims of the Complainant. In the absence of any response on the part of the Respondent, the Panel admits the claim of the Complainant on the basis of the Trademark Certificates provided by the Complainant in the proceedings and finds that the Complainant is successful in proving it has rights in the trademark pursuant to paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has not granted any Licence/permission/authorization to the Respondent to use VALIUM and/or ACCUTANE as the essential feature of the disputed domain names. Furthermore it is obvious that the Respondent uses the disputed domain name for commercial gain and with the purpose of capitalizing on the fame of the Complainant’s mark(s) VALIUM and ACCUTANE.
The Complainant has been successful in proving its trade mark rights in the mark VALIUM and ACCUTANE and the respondent has not disputed the claim of the complainant.
Furthermore, Internet users are directed to an online pharmacy store wherein counterfeit products of the Complainant are being sold.
The disputed domain name <valiumonline24x7.com> offers to order “Accutane” and redirects Internet users to the pharmacy on-line: “www.happypharmacyonline.com”, offering “Valium (Generic)”.
The disputed domain name <accutaneonline24x7.com> offers to order “Accutane” and redirects Internet users to the pharmacy on-line: ”www.fast-pharmacy.net”, offering “Generic Accutane”.
The Panel concludes that the pursuant to paragraph 4(a)(ii) of the Policy, the Respondent has no rights or legitimate interests in respect of the disputed domain names and finds that the Complainant is successful in proving the second element of UDRP.
C. Registered and Used in Bad Faith
The disputed domain names were registered on May 26, 2012, much later than adoption and use of the mark by the Complainant. The document filed by the Complainant with the Complaint clearly establishes that Respondent is intentionally attempting to attract for commercial gain Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s well-known mark as to the source, affiliation and endorsement of Respondent’s website or of the products or services posted on or linked to Respondent’s website.
The Respondent has registered the disputed domain names with false mailing address with intent to encash upon the goodwill of the Complainant. It is pertinent to note that physical mail sent by the Center to the Respondent was not delivered due to the non-availability of correct addresses in the WhoIs record of the Registrar.
It proves that the disputed domain names have been registered and use in bad faith.
The Panel finds that the Complainant is successful in proving the third element of UDRP under 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 disputed domain names <accutaneonline24x7.com> and <valiumonline24x7.com> be transferred to the Complainant.
Dated: August 1, 2012