WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Hoffmann-La Roche Inc. v. WhoisGuard WhoisGuard Protected and Mike Rochwerger

Case No. D2013-0412

1. The Parties

Complainant is Hoffmann-La Roche Inc. of New Jersey, United States of America represented internally.

Respondent is WhoisGuard Protected. of Los Angeles, United States of America and Mike Rochwerger of Olsztyn, Poland.

2. The Domain Name and Registrar

The disputed domain name is <buyaccutaneonline24h.com> which is registered with eNom, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 28, 2013. On February 28, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 1, 2013, the Registrar 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 Complainant on March 4, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on March 4, 2013.

The Center verified that the Complaint, as amended, 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 March 8, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 28, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 3, 2013.

The Center appointed Ugur G. Yalçiner as a sole panelist in this matter on April 19, 2013. 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

Complainant is a company established in the United States, engaged in research and development of pharmaceutical and diagnostic products. It is a member of the Roche Group, one of the world’s leading research-focused healthcare groups and has global operations in more than 100 countries.

Complainant has rights over the ACCUTANE trademark for which it holds several trademark registrations since 1973 in the United States with first usage in 1982.

Complainant also has registered the domain name <accutane.com>.

Respondent is an individual from Olsztyn, Poland.

The disputed domain name was created on January 31, 2013.

5. Parties’ Contentions

A. Complainants

Complainant’s assertions may be summarized as follows:

Complainant is a member of the Roche Group, one of the world’s leading research-focused healthcare groups and has global operations in more than 100 countries. Complainant’s mark ACCUTANE is registered on behalf of Complainant in the United States Patent and Trademark Office (USPTO) as of August 28, 1973. ACCUTANE is an alternative trademark (US version) for the trademark ROACCUTAN. The ROACCUTAN trademark is protected in a multitude of countries worldwide. Respondent’s domain name <buyaccutaneonline24h.com> incorporates Complainant’s trademark ACCUTANE in its entirety. Furthermore, Complainant’s use and registration of the mark ACCUTANE predate the Respondent’s registration of the disputed domain name. The disputed domain name is confusingly similar to the trademark of Complainant.

Complainant has exclusive rights to ACCUTANE, and no license, permission, authorization or consent was granted to Respondent to use ACCUTANE in the disputed domain name and Respondent has no rights or legitimate interests in the disputed domain name. The disputed domain name clearly alludes to Complainant. Respondent is using the disputed domain name to direct Internet users to a website offering to “buy accutane online”. Upon clicking on the link “buy accutane online no prescription, overnight dellive - click here” on the website resolved to from the disputed domain name, Internet users are redirected to a pharmacy online page: “www.pharmacymedicinehealthcare.net” offering “accutane” as well as other drugs.

The disputed domain name was registered in bad faith since at the time of the registration i.e. on January 31, 2013, Respondent had knowledge of Complainant’s well-known mark ACCUTANE. The disputed domain name is being used in bad faith. Respondent is intentionally attempting to attract 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 for commercial purpose. Respondent, by using the disputed domain name, is intentionally misleading consumers and confusing them by making them believe that the website behind those links found on the website connected to the disputed domain name are associated or recommended by Complainant.

B. Respondent

Respondent did not respond to the complaint and is in default.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to decide the Complaint on the grounds of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

The burden for Complainant, under paragraph 4(a) of the Policy, is to show:¹ (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that 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.

A. Identical or Confusingly Similar

In the Panel’s view, Complainant has rights in the ACCUTANE mark considering the trademark registrations in the USA since 1973.

The disputed domain name entirely incorporates the term “accutane” with other generic words “buy”, “online” “24h”. Considering that the disputed domain name carries the aim of offering Internet users/consumers in purchasing goods online, such words “buy”, “online” and “24 hour” are not distinctive and obviously do not add distinctiveness to disputed domain name.² ACCUTANE is not a commonly used word for consumers. In the Panel’s determination, the trademark ACCUTANE is also well-known in the pharmacy sector.

The Panel considers that, for purposes of a finding under paragraph 4(a)(i) of the Policy, it is irrelevant (i) whether Complainant’s rights over a mark arose before or after registration of the disputed domain name and (ii) Complainant’s registered mark might seem descriptive or a common dictionary word since that issue, in any event, is a matter to be decided by courts of a competent jurisdiction and not by this Panel.

Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark.

B. Rights or Legitimate Interests

The Panel confirms that Complainant did not grant any license, permission, authorization or consent to Respondent to use the disputed domain name.

The Panel also confirms that Respondent does not have a trademark application or a registration for the term “accutane” and is not commonly known by the disputed domain name.

The Panel contends that Complainant has made out a prima facie case that the Respondent does not enjoy a right or legitimate interest in the disputed domain name. Respondent has made no attempt to demonstrate that it does enjoy a right or legitimate interest in the disputed domain name. Accordingly, the Panel concludes that Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Complainant asserts that Respondent registered and is using the disputed domain name in bad faith.

The evidence adduced by Complainant shows that well before the registration date of the disputed domain name (January 31, 2013), Complainant had obtained registration for ACCUTANE in 1972.

Since the trademark ACCUTANE is distinctive and a well-known trademark in the pharmaceturcal sector, the Panel concludes that Respondent was, or should have been, aware of Complainant’s mark at the time of the registration of the disputed domain name, which maybe evidence of bad faith registration.

The Panel has determined that the disputed domain name was not active at the time of this decision. In the light of previous UDRP decisions, passive holding of a domain name may also be an indication of bad faith.³ The Panel also concludes that Respondent’s use of the disputed domain name appears to have been calculated to attract Internet users by creating a likelihood of confusion with Complainant's ACCUTANE mark and then to profit from resulting click-through income arising from visits to its website.

Given the aforesaid, this Panel finds that the disputed domain name was registered and subsequently used in bad faith.

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 disputed domain name <buyaccutaneonline24h.com> be transferred to Complainant.

Ugur G. Yalçiner
Panelist
Dated: May 7, 2013

¹ See Koninklijke Philips Electronics N.V. v. Relson Limited, WIPO Case No. DWS2001-0003: “Each of the three stated elements are made up of a number of facts, each of which has to be proven in order for the Complainants to succeed [...] Facts are proven through evidence [...] Mere “assertions” are nothing more than argument and must in each case be based on facts proved through evidence”.

² See Turkcell Iletisim Hizmetleri A.S. v. Vural Kavak, WIPO Case No. D2010-0010: “As a general expression, “mobile” does not distinguish Complaninant’s mark from the Disputed Domain Name. Additionally, general term “mobile” is related to Complainant’s business area, therefore, it can cause likelihood of confusion .

³ See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003: “the point is that paragraph 4(b) recognises that inaction (e.g. passive holding) in relation to a domain name registration can, in certain circumstances, constitute a domain name being used in bad faith. Furthermore, it must be recalled that the circumstances identified in paragraph 4(b) are "without limitation" - that is, paragraph 4(b) expressly recognises that other circumstances can be evidence that a domain name was registered and is being used in bad faith.”