WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. Mark / Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org
Case No. D2016-0617
1. The Parties
The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, internally-represented.
The Respondent is Mark of Kiev, Ukraine / Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org of Nobby Beach, Queensland, Australia.
2. The Domain Name and Registrar
The disputed domain name <accutane.click> ("Domain Name") 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 March 31, 2016. On March 31, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 1, 2016, 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 April 5, 2016, 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 April 6, 2016.
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 proceedings commenced on April 14, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 4, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 6, 2016.
The Center appointed Mathias Lilleengen as the sole panelist in this matter on May 11, 2016. 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.
The Center received an informal email communication from the Respondent on May 11, 2016.
4. Factual Background
The Complainant is, together with its affiliated companies, one of the world's leading healthcare groups in the fields of pharmaceuticals and diagnostics, having global operations in more than 100 countries. The Complainant owns trademarks in ACCUTANE, ROACCUTAN and ROACCUTANE in many countries, including International trademark ACCUTANE, Registration No. 840371, registered on December 6, 2004; International trademark ROACCUTAN, Registration No. 450092, registered on December 13, 1979; and United Kingdom of Great Britain and Northern Ireland trademark ROACCUTANE, Registration No. 1119969, registered on September 3, 1979.
The Domain Name was registered on March 19, 2016. The Complainant provided evidence showing that the Domain Name previously resolved to an online pharmacy where the Complainant's goods, and goods in competition with those of the Complainant, were offered for sale. At the time of this decision, the Domain Name does not resolve to an active website.
5. Parties' Contentions
According to the Complainant, it 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 has built up a world-wide reputation in psychotropic medications through the VALIUM trademark which designates a sedative and anxiolytic drug belonging to the benzodiazepine family. The Complainant has established rights in the trademarks ACCUTANE, ROACCUTAN and ROACCUTANE, and claims that the Domain Name is confusingly similar to the Complainant's mark seeing that it incorporates the Complainant's mark.
The Complainant argues that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant has exclusive and prior rights in the trademark ACCUTANE, which precede the Respondent's registration of the 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. According to the Complainant, by falsely implying that its pharmaceutical products are related or similar to those of the Complainant, the Respondent is using the Domain Name with the purpose of trading on the Complainant's goodwill. The Respondent operates an online pharmacy. Such activity does not represent a legitimate noncommercial or fair use under the Policy, paragraph 4(c)(iii). The Respondent did not reply to the Complainant's cease‑and‑desist letter and hence has not availed itself of the opportunity to present any case of legitimate interest that it may have.
The Complainant claims that the Domain Name was registered in bad faith, as the Respondent at the time of the registration had knowledge of the Complainant's ACCUTANE trademark. Furthermore, pursuant to the Complaint, the Domain Name is being used in bad faith. The 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.
The Respondent did not reply to the Complainant's contentions, but the Respondent replied to the Notification of Panel Appointment with the following message: "Hello, this domain not my and his dead". It has not been possible for the Panel to clarify if the Respondent refers to another registrant, the Respondent or the Domain Name.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has rights in the trademarks ACCUTANE, ROACCUTAN and ROACCUTANE.
The test for confusingly similarity involves the comparison between the trademark and the domain name itself such that the trademark would generally be recognizable within the domain name. In this case the Complainant's registered trademark ACCUTANE is reproduced in the Domain Name. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain ".click".
The Panel finds that the Domain Name is identical to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Respondent is using the Domain Name with the purpose of trading on the Complainant's goodwill. It appears from the Complaint that the Respondent operates or has operated an online pharmacy at the Domain Name. The Complainant has exclusive and prior rights in the trademark ACCUTANE, which precede the Respondent's registration of the Domain Name. The Complainant has not authorized the Respondent to use its trademarks or register the Domain Name.
The Panel finds that the Complainant has made out a prima facie case. The Respondent has not responded to the Complainant's contentions. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names.
C. Registered and Used in Bad Faith
The Panel is satisfied that the Respondent was aware of the Complainant's trademark ACCUTANE when it registered the Domain Name. The Complainant has used its trademark decades before the registration of the Domain Name. The trademark is well known. The very incorporation of the trademark ACCUTANE in the Domain Name confirms the Respondent's awareness of the Complainant's trademark.
The Panel also finds that the use of the Domain Name is in bad faith. It is more probable than not that the Domain Name has been used to try to attract Internet users for commercial gain by misleading them into believing that the website at the Domain Name is authorised by or somehow connected to the Complainant. The Respondent generates unjustified revenues and is capitalizing on the Complainant's trademark.
Furthermore, the Respondent did not reply to the Complainant's cease-and-desist letter, nor to the Complainant's contentions.
The Panel concludes that the Domain Name was registered and is being 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 Domain Name, <accutane.click>, be transferred to the Complainant.
Date: May 20, 2016