WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. Wuxi Yilian LLC / Kristen Barnes
Case No. D2015-2017
1. The Parties
The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally.
The Respondent is Wuxi Yilian LLC of Xiamen, Fujian, China / Kristen Barnes of Hollington, United Kingdom of Great Britain and Northern Ireland ("United Kingdom").
2. The Domain Name and Registrar
The disputed domain name <accutanegeneric-online.com> is registered with Bizcn.com, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 6, 2015. On November 6, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 11, 2015, 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 the Complainant on November 11, 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 amendment to the Complaint on the same day.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on November 13, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 3, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 4, 2015.
The Center appointed Angela Fox as the sole panelist in this matter on December 11, 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 is a well-known international pharmaceutical company based in Switzerland but with global operations in more than 100 countries. One of its products is a prescription drug for the treatment of severe nodular and/or inflammatory acne conglobata or recalcitrant acne, which it markets under the trademark ACCUTANE.
The Complainant is the proprietor of inter alia International Registration No. 840371 for the trademark ACCUTANE for "pharmaceutical products" in Class 5, registered on December 6, 2004 based on a Swiss registration and extending to the United Kingdom, Germany, Benelux, Egypt, France, Poland, Ukraine and Viet Nam. Details of this registration were annexed to the Complaint.
In some countries the Complainant owns trademark registrations for the mark in a slightly different form, ROACCUTAN or ROACCUTANE, and details of the Complainant's International Registration No. 450092 for ROACCUTAN, with a priority date of August 21, 1979; and numerous national registrations for ROACCUTANE by the Complainant or its subsidiaries in countries including China, Malaysia, Singapore, Ireland and the United Kingdom were also annexed to the Complaint.
The disputed domain name was registered on October 23, 2015. It is in use for an online pharmacy which appears to offer the ACCUTANE product, but also advertises and offers numerous other pharmaceutical products including of competitors of the Complainant.
On October 30, 2015, the Complainant sent a cease and desist demand to the contact details given for the Respondent in the WhoIs details, notifying the Respondent of the Complainant's trademark rights and giving the Respondent the opportunity to transfer the disputed domain name voluntarily to the Complainant. No response to this demand was received.
This administrative proceeding was filed on November 6, 2015.
5. Parties' Contentions
The Complainant submits that the disputed domain name <accutanegeneric-online.com> is confusingly similar to its registered trademark ACCUTANE and to its registered trademarks ROACCUTAN and ROACCUTANE.
The Complainant further submits that the Respondent has no rights or legitimate interests in 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 ACCUTANE mark. The Complainant further submits that the Respondent has been falsely implying that its pharmaceutical products are related or similar to those of the Complainant, and is not therefore using the disputed domain name for a bona fide offering of goods, or for a legitimate noncommercial or fair use.
Finally, the Complainant submits that the disputed domain name was registered and has been used in bad faith. The Respondent was clearly aware of the Complainant's trademark when it registered the disputed domain name. It is moreover using the disputed domain name to attract Internet users searching for the Complainant's ACCUTANE product, and is then offering them multiple different pharmaceutical products, including products of the Complainant's competitors. As a result, the Respondent is deliberately using a domain name with a connection to the Complainant's ACCUTANE mark in order to mislead consumers and confuse them by making them believe that the websites behind the link on the site are related to, recommended or endorsed by the Complainant. The Complainant adds that the Respondent's use of a privacy service is a further indication of bad faith.
The Respondent did not reply to the Complainant's contentions and is in default. No exceptional circumstances explaining the default have been put forward. Therefore, in accordance with paragraphs 14(a) and (b) of the Rules, the Panel will decide the Complaint and shall draw such inferences as it considers appropriate from the Respondent's default.
6. Discussion and Findings
Under paragraph 4 (a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the Panel finds that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
All three elements must be present before a complainant can succeed in an administrative proceeding under the Policy.
A. Identical or Confusingly Similar
The disputed domain name consists of the whole of the Complainant's registered trademark ACCUTANE, followed by the words "generic" and "online" and a non-distinctive hyphen and the generic Top-Level Domain ("gTLD") indicator, ".com". The word "generic" has a clear and direct descriptive meaning in respect of branded pharmaceutical products, for which generic equivalents often exist, and "online" merely denotes a channel through which such goods, or information about them, may be sought or obtained.
Other UDRP panels have typically found that the presence of mere descriptive words in domain names that incorporate a complainant's trademark in its entirety does not avoid confusing similarity, including F. Hoffmann-La Roche AG v. Morell Kontori, supra, concerning <diazepamvaliumonlinepharmacy.com>; F. Hoffmann-La Roche AG v. Private Whois buyvaliumdiazepam.org, WIPO Case No. D2011-1463, concerning <buyvaliumdiazepam.org>; F. Hoffmann-La Roche AG v. Private Whois Service, WIPO Case No. D2011-0355, concerning <valiumdiazepam.net>; and F. Hoffmann-La Roche AG v. Den, WIPO Case No. D2006-0182, concerning <diazepamvaliumonline.net>. While the word "generic" might be understood as denoting products of third parties, the presence of the ACCUTANE mark in the disputed domain name inherently associates it with the Complainant and its product, and the presence of purely descriptive words does not overcome that. The disputed domain name is by its nature likely to attract the attention of Internet users looking for ACCUTANE products.
The Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant has not consented to the Respondent's registration or use of the disputed domain name, and the Respondent has asserted no basis for any claim to a right or legitimate interest in it. Under paragraph 4(c)(i) of the Policy, the Panel may nonetheless infer that a respondent has a right or legitimate interest in a domain name if:
(i) before any notice to the Respondent of the dispute, the Respondent used, or made 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…
In this case, the Respondent has indeed been offering goods for sale through a website linked to the disputed domain name. The screenshots annexed to the Complaint show that the goods are in fact being advertised as genuine ACCUTANE products, although the Complainant has expressed doubt as to whether the products are in fact genuine. The screenshots also show that the website offers multiple other drugs of different manufacturers, including of competitors of the Complainant. The Respondent is therefore using a domain name that is confusingly similar to the Complainant's trademark to attract visitors to a website on which it also offers other, third-party pharmaceutical products for sale. In the Panel's view, such use is inherently misleading and cannot be said to be a bona fide offering of goods within the meaning of paragraph 4(c)(i) of the Policy.
Other UDRP panels have also found that the use of a domain name that is identical or confusingly similar to a complainant's trademark in order to offer competitors' products for sale is not a bona fide offering of goods (see, e.g., F. Hoffmann-La Roche AG v. Web Marketing Limited, WIPO Case No. D2006-0005, concerning the domain name <valium-net.com>). In that case, the panel observed, "there is no such thing as generic VALIUM. There is either VALIUM, a diazepam product, manufactured only by Complainant, or diazepam, a product that can be manufactured by anyone. Thus, while VALIUM is a diazepam product, diazepam is not VALIUM unless it is manufactured by Complainant. It is clear to this Panel that Respondent is using Complainant's famous trademark to sell diazepam - not VALIUM; and this Panel finds that Respondent has no rights or legitimate interests in the disputed domain name."
In the Panel's view, the Respondent's adoption of the disputed domain name was calculated to trade on and benefit from the reputation of the Complainant's mark in order to promote the sale of third-party pharmaceutical products. Such "bait and switch" selling techniques have been described as "objectionable", "misleading" and "unfair" by other UDRP panels (see inter alia Robert Bosch GmbH v. Asia Ventures, Inc., WIPO Case No. D2005-0946), who have declined to find a bona fide offering of goods or services in such circumstances.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain name was registered and has been used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances which, in particular but without limitation, are to be construed as evidence of both. These include inter alia paragraph 4(b)(iv) of the Policy:
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's mark as to source, sponsorship, affiliation, or endorsement of its website or of a product on that site.
It is evident from the content of the disputed domain name and the use of the ACCUTANE trademark on the website linked to it that the Respondent was aware of the Complainant's trademark when it registered the disputed domain name, and that indeed that knowledge is what prompted the registration.
The disputed domain name is confusingly similar to the Complainant's trademark and is inherently likely to attract the attention of Internet users seeking the Complainant's ACCUTANE product. The Respondent has been using the disputed domain name to lure Internet users to a website that displays the ACCUTANE trademark prominently and repeatedly while offering multiple other pharmaceutical products of the Complainant's competitors. In doing so, it has falsely created the impression that the Complainant is in some way connected to, or endorses or recommends, the further products being promoted on the Respondent's website.
It is clear from this that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's mark as to the source of the goods offered through the site.
Similar conduct has been found to manifest bad faith registration and use in other cases, including Pfizer Inc v. Juan Gonzales, WIPO Case No. D2004-0589 and F. Hoffmann-La Roche AG v. Web Marketing Limited, supra. In the latter case, the panel held that use of a domain name that was confusingly similar to the complainant's trademark "for the sole purpose of attracting internet users to Respondent's website in order to sell a product, diazepam, that competes with Complainant's VALIUM product" was evidence of registration and use in bad faith under paragraph 4(b)(iv) of the Policy.
The Panel concludes that the disputed domain name was registered and has been used 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 name <accutanegeneric-online.com> be transferred to the Complainant.
Date: January 10, 2016