WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hoffmann-La Roche Inc. v. Domain Admin / Michael Carrillo
Case No. D2015-0160
1. The Parties
The Complainant is Hoffmann-La Roche Inc. of New Jersey, United States of America, represented by Genentech, Inc., United States of America.
The Respondent is Domain Admin of Praha, Czech Republic / Michael Carrillo of Greensboro, United States of America.
2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) <buyaccutanebuyaccutane.com> is registered with Gransy, s.r.o. d/b/a subreg.cz (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 31, 2015. On February 2, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed Domain Name. On February 3, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 5, 2015 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 amended Complaint on February 9, 2015.
On February 5, 2015, the Center notified the Parties in both English and Czech that the language of the Registration Agreement for the disputed Domain Name was Czech. On February 9, 2015, the Complainant requested for English to be the language of the proceeding, to which the Respondent has not replied.
The Center verified that the Complaint together with the amended 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 February 11, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 3, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 6, 2015.
The Center appointed Ellen B. Shankman as the sole panelist in this matter on March 12, 2015. 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 date of the Domain Name registration was confirmed by the Registrar to be June 11, 2014. The Complainant provided evidence of multiple trademark registrations for the mark ACCUTANE including, inter alia, in the United States of America (registered on August 28, 1973), that predates the date of the Domain Name registration.
The Panel also conducted an independent search to determine that the Domain Name is currently active.
Further, the Complainant claims that it has used the mark in commerce: “This mark is extensively promoted for many years in print advertisements in medical journals, […] television advertising and direct mailings. The sales of the ACCUTANE product in the United States have exceeded hundreds of millions of dollars”. The record does not contain evidence of the use, but does quote from the opinion in Hoffmann-La Roche, Inc. v. Hightech Industries, Andrew Browne, WIPO Case No. D2010-0240, “The Panel finds compelling circumstantial evidence in the record that the Respondent likely knew of the Complainant’s Mark when it registered the Disputed Domain Name. The ACCUTANE mark appears to have been in use for nearly forty years in connection with the sale of voluminous quantities of the ACCUTANE product. Because the ACCUTANE mark is not descriptive of anything and has no other meaning than in connection with the Complainant’s Mark, it is very unlikely that the Respondent would have registered a Domain name incorporating the Mark without knowledge of the Mark”. Since no response was filed, this contention is unrefuted.
Because there is no response, the above facts regarding the use and fame of the mark are taken from the Complaint and are generally accepted as true in the circumstances of this case.
5. Parties’ Contentions
The Complainant has satisfactorily proven that it has registered trademark rights for ACCUTANE.
The Complainant contends, inter alia, the following facts and arguments:
“The mark ACCUTANE designated a dermatological preparation in the form of a product indicated for the treatment and prevention of acne. This mark is extensively promoted for many years in print advertisements in medical journals, promotional materials, packaging, medical informational materials, television advertising and direct mailings. The sales of the ACCUTANE product in the United States have exceeded hundreds of millions of dollars.
The domain name of the Respondent is confusingly similar to the Complainant’s mark seeing that it incorporates the mark ACCUTANE in its entirety. The addition of the term ‘buy’ does not sufficiently distinguish the domain name from the trademark. Anyway and according to [Hoffmann-La Roche, Inc. v. Hightech Industries, Andrew Browne, WIPO Case No. D2010-0240] ‘the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical of confusing similar to the Complainant’s registered mark.”
The Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the Domain Name. The Complainant has not authorized the Respondent to use its trademark ACCUTANE. The Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant.
The Complainant further contends that “Federal law requires conformance with the iPLEDGE program, which is the only permissible method through which ACCUTANE is prescribed and dispensed to patients. As of March 1, 2006, only prescribers registered and active in iPLEDGE can prescribe isotretinoin (generic version of ACCUTANE) and only patients registered and qualified in iPLEDGE can be dispensed isotretinoin. Wholesalers and pharmacies must comply with the manufacturers’ program requirements in order to distribute and dispense the product. ACCUTANE sales outside the iPLEDGE program, which requires a prescription and many additional safeguards, are not permitted. Internet pharmacies are not authorized to participate in iPLEDGE”.
To summarize the Complaint, the Complainant is the owner of the world wide registered trademark ACCUTANE. The Domain Name is confusingly similar to the trademark owned by the Complainant. The addition of the word “buy” does not prevent a finding of confusing similarity. The Domain Name was registered and is being used in bad faith. By utilizing the Complainant’s registered trademark, the Respondent was using the Domain Name to deceive direct Internet users to an on-line pharmacy or to purchase the Complainant’s goods through unauthorized channels. Thus, the Respondent’s use of the Domain Name constitutes bad faith registration and use under the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Language of Proceedings
According to paragraph 11(a) of the Rules, the language of the administrative proceeding shall be the language of the Registration Agreement unless the panel determines otherwise. In the present case, although the Registration Agreement for the disputed domain name is in the Czech language, it is self-evident from the Respondent’s website advertising its goods in English, that the Respondent can communicate in English without apparent difficulties. The Respondent did not raise any objection to the Complaint filed in English and subsequently chose not to file a Response. In consideration of the above circumstances and in the interest of fairness to both parties, the Panel decides, under paragraph 11(a) of the Rules, that English shall be the language of the proceeding.
6.2. Discussion and Findings
The burden for the Complainant under paragraph 4(a) of the Policy is to prove:
(i) That the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) That the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) That the Domain Name has been registered and used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has satisfied the first requirement that the Domain Name <buyaccutanebuyaccutane.com> is identical or confusingly similar to the Complainant’s registered trademark ACCUTANE, under paragraph 4(a)(i) of the Policy.
The Domain Name string contains the trademark of the Complainant. The addition of the word “buy” does not materially change this finding.
“The addition of merely generic, descriptive, or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP. Panels have usually found the incorporated trademark to constitute the dominant or principal component of the domain name.” See Section 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
This very issue was also determined in another WIPO UDRP case regarding the mark ACCUTANE in a domain name string. “Moreover, the addition of the term ‘buy’ as a prefix to the ACCUTANE mark does not mitigate the confusing similarity between the Disputed Domain Name and the Complainant’s trademark. The prefix ‘buy’ is an ordinary descriptive word which is related to the trademark ACCUTANE and may lead Internet users to understand the Disputed Domain Name as hosting a website that offers for sale the Complainant’s product. Adding the prefix ‘buy’ to the Mark does nothing to dispel and serves only to reinforce the connection in the public mind between the ACCUTANE mark and the Complainant, and therefore increases the risk of confusion. Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti, WIPO Case No. D2005-0037 (finding <buylantus.com> confusingly similar to LANTUS).” Hoffmann-La Roche, Inc. vs. Hightech Industries, Andrew Browne, supra.
B. Rights or Legitimate Interests
“Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the disputed domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often-impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270”. See, Natura Cosméticos S/A and Indústria e Comércio de Cosméticos Natura Ltda. v. Angelos Ellinas, WIPO Case No. D2015-0217.
Based on the available record, the Panel finds that the Complainant has established a prima facie case, which was not refuted, that the Respondent lacks rights or legitimate interests in the Domain Name. Therefore, the Complainant has satisfied the second requirement that the Respondent has no rights or legitimate interests in the Domain Name, under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Given the evidence of the rights in the mark, the timing of the registration of the Domain Name, together with evidence of the use of the mark both in the Domain Name as well as in the website by the Respondent, the Panel finds that the Complainant has satisfied the third requirement that the Respondent has registered and is using the Domain Name in bad faith, under paragraph 4(a)(iii) of the Policy.
Similar to the decision in Hoffmann-La Roche, Inc. vs. Hightech Industries, Andrew Browne, supra:
“the Panel finds compelling circumstantial evidence in the record that the Respondent likely knew of the Complainant’s Mark when it registered the Disputed Domain Name. The ACCUTANE mark appears to have been in use for nearly forty years in connection with the sale of voluminous quantities of the ACCUTANE product. Because the ACCUTANE mark is not descriptive of anything and has no other meaning than in connection with the Complainant’s Mark, it is very unlikely that the Respondent would have registered a domain name incorporating the Mark without knowledge of the Mark. Based on the foregoing circumstances, the Panel finds that the Respondent registered the Disputed Domain Name in bad faith. See Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415 (‘It defies common sense to believe that Respondent coincidentally selected these precise Domain names without any knowledge of Complainant and its PROFORCE Trademarks.’).
The Panel also finds that the Respondent used the Disputed Domain Name in bad faith. It is well-established that using a domain name which incorporates a trademark to offer the products of competitors of the trademark owner is likely to cause confusion among Internet users as to the source of products or to confusingly suggest sponsorship by the trademark owner. See e.g., Six Continent Hotels, Inc. v. The Omnicorp, WIPO Case No. D2005-1249; Exel Oyj v. KH Trading, Inc., WIPO Case No. D2004-0433.”
Notwithstanding the language found in the terms and conditions at the bottom of the website of the Domain Name, the Panel finds that the use of the Domain Name, together with the contents of the website are intended to direct individuals to an on-line pharmacy, and thus constitutes registration and use 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 Domain Name <buyaccutanebuyaccutane.com> be transferred to the Complainant.
Ellen B. Shankman
Date: March 19, 2015