WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

F. Hoffmann-La Roche AG v. Anatoli M Kernosenko

Case No. D2015-1366

1. The Parties

The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, internally represented.

The Respondent is Anatoli M Kernosenko of Kiev, Ukraine.

2. The Domain Name and Registrar

The disputed domain name <buyaccutaneonline.xyz> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 3, 2015. On August 3, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 4, 2015, the Registrar 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 5, 2015. In accordance with the Rules, paragraph 5, the due date for Response was August 25, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 26, 2015.

The Center appointed Ian Blackshaw as the sole panelist in this matter on August 31, 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 Complainant, together with its affiliated companies, is one of the world’s leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics, having global operations in more than 100 countries.

The Complainant’s mark ACCUTANE is protected as International Registration No. 840 371, details of which have been provided to the Panel.

Reference is also made to International Registration No. 450 092 ROACCUTAN, a copy of the certificate of which has also been provided to the Panel.

The mark ROACCUTAN is registered in an alternative form under ROACCUTANE in many countries such as, for example, Malaysia, Singapore, Ireland and the United Kingdom of Great Britain and Northern Ireland (“UK”) by the Complainant’s UK subsidiary Roche Products Ltd. Again, details have been provided to the Panel.

The trademarks ACCUTANE, ROACCUTAN and ROACCUTANE designate a prescription drug indicated for the treatment of severe nodular and/or inflammatory acne conglobata or recalcitrant acne.

The disputed domain name was registered on July 20, 2015 and resolves to an online pharmacy.

On July 28, 2015, the Complainant sent the Respondent a cease and desist letter requiring the transfer of the disputed domain name to the Complainant, which letter appears to remain unanswered.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following assertions:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights

The disputed domain name is confusingly similar to the Complainant’s mark seeing that it incorporates the Complainant's trademark ACCUTANE in its entirety. The addition of the descriptive words “buy” and“online” does not sufficiently distinguish the disputed domain name from ACCUTANE.

Indeed, according to Wal-Mart Stores, Inc. v. Kuchora, Kal, WIPO Case No. D2006-0033: “A prior panel has held that, if a domain name incorporates a complainant’s mark in its entirety, it is confusingly similar to that mark despite the addition of other words. It is well-established that the addition of a generic term to a trademark does not necessarily eliminate a likelihood of confusion.”

Furthermore, the disputed domain name is composed of a new generic Top-Level Domain (“gTLD”) “.xyz”. This new gTLD does not negate the confusing similarity as it is a necessary component of a domain name and does not give any meaning or distinctiveness.

As a result, the disputed domain name is confusingly similar to the Complainant’s well-known ACCUTANE trademark, making it possible for customers to believe that the disputed domain name is related to the Complainant.

(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name

The Complainant has exclusive and prior rights in the trademark ACCUTANE, which precede the Respondent’s registration of the disputed domain name.

The Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the Complainant’s mark ACCUTANE.

By falsely implying that its pharmaceutical products are related or similar to those of the Complainant, the Respondent is using the disputed domain name for the purpose of trading on the Complainant’s goodwill.

Indeed, as it appears, the Respondent operates an online pharmacy which promotes and sells ACCUTANE branded drugs. Such activity does not represent a legitimate noncommercial or fair use under the Policy, paragraph 4(c)(iii).

According to the Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784: “several cases have found that a registrant has no legitimate interest in a domain name that is similar to a pharmaceutical manufacturer’s mark and that is being used to direct consumers to an on-line pharmacy.”

Furthermore, the Respondent did not reply to the Complainant’s cease and desist letter of July 28, 2015, requiring the transfer of the disputed domain name, and hence has not availed itself of the opportunity to present any case of legitimate interest that it might have.

Therefore, there is no reason why the Respondent should have any right or interest in the disputed domain name.

(iii) The disputed domain name was registered and is being used in bad faith

The disputed domain name was registered in bad faith. There is no doubt that at the time of the registration i.e. on July 20, 2015, the Respondent had knowledge of the Complainant’s product/mark ACCUTANE.

The disputed domain name is being used in bad faith. The disputed domain name contains the word “accutane” and displays an online pharmacy webpage, in order to attract Internet users searching for the Complainant’s ACCUTANE mark via search engines, including users who expect to be led to the Complainant’s genuine website or to sites endorsed by the Complainant.

According to the above-mentioned WIPO Case of Pfizer Inc. v. jg a/k/a Josh Green: bad faith is established when “Respondent is using the domain names as a forwarding address to a for-profit on-line pharmacy.”

Therefore, the Respondent may generate unjustified revenues and is illegitimately capitalizing on the Complainant’s mark ACCUTANE.

Moreover, the Respondent is using the disputed domain name to redirect to an online pharmacy which advertises and sells products of competitors of the Complainant. According to Hoffmann-La Roche Inc. v. Domain Admin / Michael Carrillo, WIPO Case No. D2015-0160, which refers to Hoffmann-La Roche, Inc. v. Hightech Industries, Andrew Browne, WIPO Case No. D2010-0240: “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.”

The use of the disputed domain name also raises questions of public health and safety, as it redirects to a Canadian online pharmacy where it is written on the top of this webpage: “Without Prescription Purchase”. Evidence of this has been provided to the Panel. In fact, the genuine product sold by the Complainant under the mark ACCUTANE is not (emphasis added) available without a prescription.

According to Aventis, Aventis Pharma SA v. VASHA Dukes, WIPO Case No. D2004-0276: by having the possibility to acquire Aventis medication without prescription, “to a certain extent, Respondent is encouraging consumers to enter into an irresponsible pattern of conduct in the purchase of drugs and even to self-medication in respect to those that need prescription. Considering that Respondent is trading on the goodwill of Complainants’ trademarks, it should be also taken into account that the conditions under which Respondent is offering the sale of “aventis” may lessen the reputation associated with Complainants’ trademarks.”

Even if ACCUTANE is a prescription drug, Internet users would reasonably rely on the Respondent’s website as a legitimate source to purchase ACCUTANE drugs since it displays the packaging of ACCUTANE products on which the logo of the Complainant is affixed.

As a result, the Respondent is deliberately using the disputed domain name with a connection to the Complainant’s ACCUTANE mark, in order to mislead the consumers and confuse them by making them believe that the websites behind those links are recommended by the Complainant.

B. Respondent

The Respondent, having been duly notified of the Complaint and of this proceeding, did not reply to the Complainant’s contentions nor take any part in the proceeding.

6. Discussion and Findings

To qualify for cancellation or transfer of the disputed domain name, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:

(i) The disputed 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 disputed domain name; and

(iii) The disputed domain name has been registered and is being used in bad faith.

In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis 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.

In accordance with paragraph 14(a) of the Rules, in the event that a party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the panel, the panel shall proceed to a decision on the complaint; and under paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the panel, the panel shall draw such inferences as it considers appropriate.

In accordance with paragraph 10(d) of the Rules, the panel shall determine the admissibility, relevance, materiality and weight of the evidence.

In previous UDRP cases in which the respondents failed to file a response, the panels’ decisions were based upon the complainants’ reasonable assertions and evidence, as well as inferences drawn from the respondents’ failure to reply. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064; and also Köstritzer Schwarzbierbrauerei v. Macros-Telekom Corp., WIPO Case No. D2001-0936.

Nevertheless, the Panel must not decide in the Complainant’s favor solely based on the Respondent’s default. See Cortefiel, S.A. v. Miguel García Quintas, WIPO Case No. D2000-0140. In the present case, the Panel must decide whether the Complainant has introduced elements of proof, which allow the Panel to conclude that its allegations are true.

A. Identical or Confusingly Similar

It is well established in previous UDRP decisions that, where the disputed domain name incorporates a complainant’s registered trademark, this may be sufficient to establish that the disputed domain name is identical or confusingly similar for the purposes of the Policy. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.

The disputed domain name in the present case incorporates the Complainant’s ACCUTANE mark in its entirety, which makes the disputed domain name confusingly similar to this well-known mark. This, in the view of the Panel, is bound to lead to confusion on the part of consumers and Internet users seeking information about the Complainant and its products marketed under its well-known ACCUTANE mark.

The Panel agrees with the Complainant’s contention that confusing similarity has been found where, as in the present case, the Respondent has added the generic prefix “buy” and the generic suffix “online” to the Complainant’s ACCUTANE mark in the disputed domain name. See Saks & Co. v.saksfifthavenue-sale.com, WIPO Case No. D2013-1644. These additions do nothing to distinguish the disputed domain name from the Complainant’s well-known ACCUTANE mark.

The Panel further agrees with the Complainant’s contention that the addition of the gTLD “.xyz” to the disputed domain name does not avoid confusing similarity for purposes of the Policy. This is a technical requirement typically relevant only for domain name registration purposes. See The Coca-Cola Company v. David Jurkiewicz, WIPO Case No. DME2010-0008; Telecom Personal, S.A., v. NAMEZERO.COM, Inc., WIPO Case No. D2001-0015; F. Hoffmann La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451; and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. See also Aktiebolaget Electrolux v. Jose Manuel, WIPO Case No. D2010-2031.

In view of all of the above, the Panel finds that the disputed domain name is identical or confusingly similar to the Complainant’s well-known ACCUTANE mark, in which the Complainant has demonstrated, to the satisfaction of the Panel, that it has rights.

The first element of the Policy, therefore, has been met.

B. Rights or Legitimate Interests

In order to determine whether the Respondent has any rights or legitimate interests in respect of the disputed domain name (paragraph 4(c) of the Policy), attention must be paid to any of the following circumstances in particular but without limitation:

(i) whether there is any evidence of the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services before any notice to the Respondent of the dispute;

(ii) whether the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights;

(iii) whether the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

There is no evidence before the Panel to show that the Respondent was acting in pursuance of any rights or legitimate interests with respect to registering the disputed domain name. In particular, there is no evidence to show that the Respondent has been authorized or licensed to use the well-known ACCUTANE mark as part of the disputed domain name. On the contrary, if the Respondent had any such rights or legitimate interests, the Respondent would have reasonably been expected to assert them, which the Respondent clearly has not done, by not replying to the Complaint or taking any part in the proceedings. See Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.

In the view of the Panel, the adoption by the Respondent of a domain name identical to the Complainant’s well-known ACCUTANE mark, which the Panel also considers, as asserted above by the Complainant, was not by mere chance but with prior knowledge of the well-known ACCUTANE mark of the Complaint and design, inevitably leads to confusion on the part of Internet users and consumers seeking information about the Complainant and its products.

Further, the Panel finds that, by using the disputed domain name to operate an online pharmacy which promotes and sells ACCUTANE drugs, the Respondent is falsely implying that its pharmaceutical products are related or similar to those of the Complainant with the purpose of trading on the Complainant’s well-known ACCUTANE mark and the valuable goodwill that the Complainant has established in this trademark through prior commercial use. Accordingly, the Panel finds that the above does not constitute a legitimate noncommercial or fair use.

Also, the Panel finds no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.

Likewise, no evidence has been adduced that the Respondent has commonly been known by the disputed domain name; nor, for the reasons mentioned above, is the Respondent making a legitimate noncommercial or fair use of the disputed domain name.

Therefore, for all of the above reasons and also those advanced above by the Complainant, the Panel concludes that the Respondent has neither rights nor legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which evidence bad faith registration and use. However, this list is not exhaustive, but merely illustrative. See Nova Banka v. Iris, WIPO Case No. D2003-0366.

Paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:

“(iv) by using the disputed domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of [the Respondent’s] web site or location or of a product or service on [its] web site or location.”

Based on the evidence provided on the record, the Panel considers that the Respondent, by registering the disputed domain name incorporating therein in its entirety the Complainant’s well-known ACCUTANE mark, is trading unfairly on the Complainant’s valuable goodwill established in such Mark.

Furthermore, see Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-1493, in which it was stated that “consumers expect to find a company on the Internet at a domain name address comprised of the company’s name or trademark”. In the present case, the use by the Respondent of the disputed domain name is confusing and misleading and, in the view of the Panel, this is a further indication that the disputed domain name was registered and is being used in bad faith.

Again, in the absence of any explanation to the contrary by the Respondent, of which none is forthcoming on the record, the Panel agrees with the Complainant’s contention that the Respondent did not register and use the disputed domain name by chance, but, as noted above, on the basis of clearly being aware of the notoriety of the Complainant’s well-known ACCUTANE mark and its prior commercial use.

Also, the Panel finds that the Respondent’s use of the disputed domain name, which has the effect of redirecting Internet users interested in the Complainant’s products and services to the Respondent’s website for presumed commercial gain, not only does not constitute legitimate noncommercial or fair use, but also constitutes bad faith on the part of the Respondent. See Express Scripts, Inc. v. Windgather Investments Ltd. / Mr.Cartwright, WIPO Case No. D2007-0267. This is particularly true in the present case, as the use of the disputed domain name raises questions of public health and safety, as it redirects to a Canadian online pharmacy, where it is written on the top of this webpage: “Without Prescription Purchase”. In fact, the genuine ACCUTANE product of the Complainant is not so available. This, in the view of the Panel, is a further indication of bad faith on the part of the Respondent.

Furthermore, the failure of the Respondent to reply to the Complainant’s cease and desist letter of July 28, 2015 is a further indication of bad faith. See Pearson Education, Inc v. CTP Internacional; Private Registration at Directi Internet Solutions Pvt. Ltd. and <scottforesmanandcompany.com>, WIPO Case No. D2009-0266.

Finally, the failure of the Respondent to answer the Complaint or take any part in the present proceedings, in the view of the Panel, is another indication of bad faith on the part of the Respondent. See Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787.

Therefore, taking all of these particular facts and circumstances into account and for all the above-mentioned reasons, as well as those advanced by the Complainant in its various contentions set out above, the Panel concludes that the Respondent has registered and is using the disputed domain name 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 <buyaccutaneonline.xyz> be transferred to the Complainant.

Ian Blackshaw
Sole Panelist
Date: September 1, 2015