WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. Aleksey Ivanov / Miroslav Kurshinin/PrivacyProtect.org
Case No. D2013-1244
1. The Parties
The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally.
The Respondent is Aleksey Ivanov, Miroslav Kurshinin of Moskva, Russian Federation, and PrivacyProtect.org of Nobby Beach, Australia.
2. The Domain Names and Registrar
The disputed domain names <acheter-roaccutane.com>, <xenicalpascher.com> are registered with DomainContext, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 10, 2013. On July 10, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 11, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 19, 2013 providing the registrant and contact information disclosed by the Registrar, and requesting the Complainant to submit an amendment to the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on July 22, 2013.
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 July 25, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was August 14, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 15, 2013.
The Center appointed Gaynell Methvin as the sole panelist in this matter on August 22, 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
The Complainant in this administrative proceeding is F. Hoffmann-La Roche AG, a company duly organized under the law of Switzerland, having its principal place of business at Basel, Switzerland.
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 trademarks XENICAL and ROACCUTAN are protected as trademarks in a multitude of countries worldwide. As an example, reference is made to the International Registration No. 612908 & 699154 (in connection with XENICAL), and to the International Registration No. 450 092, (in connection with ROACCUTAN), certificates of which have been submitted as Annexes 3 & 4 to the Complaint. The priority date for the trademark XENICAL is August 5, 1993. The priority date for the trademark ROACCUTAN is August 21, 1979.
The trademark ROACCUTAN is registered in an alternative form under ROACCUTANE in many countries such as Malaysia, Singapore, Ireland and Great Britain by the Complainant’s UK subsidiary Roche Products Ltd. (see Annex 5 to the Complaint) and under ACCUTANE by the US branch of the Complainant (Annex 6 to the Complaint).
The trademark XENICAL designates an oral prescription weight loss medication used to help obese people lose weight and keep this weight off. For the trademark XENICAL, the Complainant holds registrations in over hundred countries on a world-wide basis.
The trademarks ROACCUTAN, ROACCUTANE and ACCUTANE designate a drug indicated for the treatment of severe nodular and/or inflammatory acne conglobata or recalcitrant acne.
5. Parties’ Contentions
Complainant contends as follows:
The disputed domain names of the Respondent are confusingly similar to the Complainant’s trademarks, seeing that they incorporate the Complainant’s trademarks in their entirety. The addition of the term “acheter” (a French term meaning “to buy”) and the term “pascher” (a French term “pas cher” meaning “not expensive”) does not sufficiently distinguish the disputed domain names from the trademarks. According to Lilly ICOS LLC v. John 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” (see Annex 7 to the Complaint).
Furthermore, the Complainant’s use and registration of the trademarks XENICAL and ROACCUTAN(E) do predate the Respondent’s registration of the disputed domain names.
The disputed domain names are identical or confusingly similar to the trademarks of the Complainant.
As to the Respondent’s rights with respect to the disputed domain names, the Complainant also contends as follows:
The Complainant has exclusive rights for XENICAL and ROACCUTANE, as mentioned above and no license/permission/authorization respectively consent was granted to use XENICAL and ROACCUTANE in the disputed domain names. Furthermore it is obvious that the Respondent uses the disputed domain names for commercial gain and with the purpose of capitalizing on the fame of the Complainant’s trademarks XENICAL and ROACCUTANE.
The disputed domain names in question clearly allude to the Complainant.
According to Hoffmann-La Roche Inc. v. Viagra Propecia Xenical & More Online Pharmacy, WIPO Case No. D2003-0793, “it is evident that Respondent is not making a legitimate noncommercial or fair use of the Domain Name under Policy 4(c)(iii). The Respondent’s use is manifestly commercial. It sells pharmaceuticals on the website associated with the challenged Domain Name” (see Annex 8 ).
The Respondent’s only reason in registering and using the disputed domain names is to benefit from the reputation of the trademarks XENICAL and ROACCUTANE and illegitimately trade on their fame for commercial gain and profit.
There is no reason why the Respondent should have any rights or interests in such disputed domain names.
Finally, the Complainant contends that the disputed domain names were registered and are being used in bad faith and provides the following statements in support of this contention:
The disputed domain names were registered in bad faith since at the time of the registrations, i.e. on June 29, 2013 (for <xenicalpascher.com>) and on June 30, 2013 (for <acheter-roaccutane.com>), the Respondent had, no doubt, knowledge of the Complainant’s well-known products/trademarks XENICAL and ROACCUTANE.
The disputed domains are also being used in bad faith. This is obvious since when viewing the websites from the Respondent (see Annex 9) one realizes that the Respondent is intentionally attempting (for commercial purpose) to attract Internet users to the Respondent’s websites, by creating a likelihood of confusion with the Complainant’s well-known trademarks as to the source, affiliation and endorsement of the Respondent’s website.
And according to Pfizer Inc. v. jg a/k/a Josh Green , WIPO Case No. D2004-0784, bad faith is established when “Respondent is using the domain names as a forwarding address to a for-profit on-line pharmacy” (Annex 10 ).
The Respondent, by using the disputed domain names, is intentionally misleading the consumers and confusing them by making them believe that the websites behind those links are associated or recommended by the Complainant.
As a result, the Respondent may generate unjustified revenues and therefore is illegitimately capitalizing on the XENICAL and ROACCUTANE trademarks’ fame.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Panel is satisfied on the evidence provided, especially in light of the fact that the websites of the disputed domain names are identical, that the disputed domain names are under common control and thus consolidation is proper. (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.16.
B. Identical or Confusingly Similar
The Complainants’ use and registration of its trademarks XENICAL and ROACCUTAN(E) predate the Respondent’s registration of the Domain Names. Further, the disputed domain names incorporate not only the Complainant’s trademarks, but also add merely descriptive French terms to the trademarks. Such additions do not serve to avoid likely confusion with the Complainant’s trademarks. (See Lilly ICOS LLC v. John Hopking / Neo net Ltd., WIPO Case No. D2005-0694, cited by the Complainant above).
In brief, it is clear that the disputed domain names are confusingly similar to the Complainant’s trademarks.
C. Rights or Legitimate Interests
As stated, the disputed domain names are confusingly similar to the registered trademarks of the Complainant. The Respondent has demonstrated, and the record reveals, no rights or legitimate interests in the disputed domain names. The Complainant has provided ample evidence to demonstrate conclusively that the Respondent uses the disputed domains names for commercial gain with its sole purpose of capitalizing on the fame of the Complainants’ trademarks XENICAL AND ROACCUTANE.
The Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain names.
D. Registered and Used in Bad Faith
The evidence presented by the Complainant establishes that the Respondent falls clearly within the examples of bad faith set out in paragraph 4(b)(iv) of the Policy. There is no question to the Panel that the Respondent both registered and used the disputed domain names in bad faith.
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 <acheter-roaccutane.com> and <xenicalpascher.com> be transferred to the Complainant.
Date: September 4, 2013