WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. Robert M. Gray
Case No. D2016-1322
1. The Parties
The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, internally represented.
The Respondent is Robert M. Gray of Westmeath, Ontario, Canada.
2. The Domain Name and Registrar
The disputed domain name <accutane-isotretinoin.com> is registered with Paknic (Private) Limited (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 29, 2016. On June 29, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 30, 2016, 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 July 1, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 21, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 22, 2016.
The Center appointed Alexandre Nappey as the sole panelist in this matter on August 4, 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.
4. Factual Background
The Complainant is the company F. Hoffmann-La Roche AG of Basel, Switzerland, 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 is, among others, the owner of the following international trademarks:
- ACCUTANE registered under No. 840 371 on December 6, 2004, in class 5 for "pharmaceutical products";
- ROACCUTAN registered under No. 450 092 on December 13, 1979, in class 5 for "pharmaceutical products"
These trademarks designate a prescription drug indicated for the treatment of acne, composed of the active ingredient named "isotretinoin".
The disputed domain name <accutane-isotretinoin.com> was registered on June 8, 2016, and redirects to an online pharmacy page.
5. Parties' Contentions
1. The Complainant first alleges that the disputed domain name <accutane-isotretinoin.com> is very similar to its earlier marks, to the point of creating confusion.
The disputed domain name reproduces the Complainant's earlier mark ACCUTANE in its entirety.
The Complainant alleges that the disputed domain name adds a "hyphen" and the name "isotretinoin" (the corresponding international non-proprietary name ("INN") of the drug commercialized by the Complainant under the trademark ACCUTANE), to the Complainant's trademark ACCUTANE, which increases the risk of confusion.
2. Secondly, the Complainant alleges 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 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.
Furthermore, 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 rights or legitimate interests that it might have.
3. Finally, the Complainant claims that the disputed domain namewas registered and is being used in bad faith.
The domain name was registered in bad faith: there is no doubt that at the time of the registration, i.e., on June 8, 2016, 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 trademark 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 failure of the Respondent to reply to the Complainant's cease-and-desist letter is a further indication of bad faith.
As a result, the Respondent is deliberately using a 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 the links on the disputed domain name are recommended by the Complainant.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Notwithstanding the default of the Respondent, it remains up to the Complainant to make out its case in accordance with paragraph 4(a) of the Policy, and to demonstrate that:
(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.
However, under paragraph 14(b) of the Rules, where a Party does not comply with any provision of the Rules, the Panel "shall draw such inferences therefrom as it considers appropriate".
Having consideration to the Parties' contentions, the Policy, Rules, Supplemental Rules and applicable substantive law, the Panel's findings on each of the above mentioned elements are the following.
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant owns exclusive trademark rights in ACCUTANE, which predates the registration of the disputed domain name.
The Panel finds that the disputed domain name <accutane-isotretinoin.com> is confusingly similar to the registered ACCUTANE trademark owned by the Complainant.
Indeed, the disputed domain name incorporates the entirety of the Complainant's ACCUTANE trademark.
The addition of the word "isotretinoin" even adds to the confusing similarity between the disputed domain name and the earlier trademark ACCUTANE, since this word refers to the corresponding INN of the drug commercialized by the Complainant under the trademark ACCUTANE.
The Panel refers to the decision issued in Hoffmann-La Roche Inc. v. sasha rutova, WIPO Case No. D2008-0746, stating that:
"The addition of the generic [word] 'isotretinoin' (…) to the trademark ACCUTANE in the respective domain name does not alter this (see, for instance, The Nasdaq Stock Market, Inc. v. Green Angel, WIPO Case No. D2001-1010; Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Distribution Purchasing & Logistics Corp., WIPO Case No. D2000-0464; World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306). The addition of the [word] 'isotretinoin' (…) even adds to the confusing similarity of the respective domain name and the trademark, since (…) [this] [word] refer[s] (…) to the generic form of the drug ACCUTANE (…). The addition of (…) [this] [word] could therefore lead users to believe that Complainant operates the web site associated with each disputed domain name (see also Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin, WIPO Case No. D2003-0888; Western Union Holdings, Inc. v. Manuel Rodriguez, WIPO Case No. D2006-0850)."
Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant's mark under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant must make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy and then the burden of productions shifts to the Respondent to demonstrate its rights or legitimate interests.
The Complainant has stated that it has not authorized, licensed or consented to the Respondent's use of its ACCUTANE trademark.
Furthermore, there is no evidence that the Respondent has been known by the disputed domain name or a name corresponding to it, that the Respondent used or uses the disputed domain name in connection with a bona fide offering of goods or services, or that it makes a legitimate noncommercial or fair use of the disputed domain name. Although the website at the disputed domain offers what appears to be the Complainant's Accutane product for sale, there is nothing on the website to indicate that the Respondent is in fact unaffiliated with the Complainant. Moreover, the prominent use of the Complainant's ACCUTANE trademark on the website may lead to Internet user confusion. Such use does not give rise to rights or legitimate interests for the purposes of the Policy.
In the light of what is stated above, the Panel finds that the Complainant has made an unrebutted prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
As the Respondent has not provided otherwise, the Panel finds that the second element of the paragraph 4(a) of the Policy is fulfilled.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out examples of circumstances that will be considered by a UDRP panel to be evidence of bad faith registration and use of a domain name. It provides that:
"For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location."
The Complainant has submitted a printout from the website at the disputed domain name which shows that it resolves to an online pharmacy page that prominently displays the message "buy Accutane online".
This page indicates: "Buy Accutane online. Active ingredient: Isotretinoin. Accutane is a powerful medicine used for treatment of moderate to severe acne."
Since "accutane" is an invented and distinctive term and there is no relationship between the Respondent and the Complainant, it may be assumed that the Respondent was aware of the Complainant's trademark at the time it registered the disputed domain name.
Furthermore, by using the disputed domain name, the Respondent tried to create a likelihood of confusion with the Complainant's trademark ACCUTANE as to the source, sponsorship, affiliation, or endorsement of its website and to financially benefit from the Complainant's reputation or to disrupt the Complainant's business. See Federation Francaise de Tennis (FFT) v. Whoisguard Protected, Whoisguard, Inc. / Sampath Reddy, WIPO Case No. D2016-0864¨.
The Panel finds that the above constitutes registration and use in bad faith pursuant to the third requirement of paragraph 4(a) of the Policy.
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, <accutane-isotretinoin.com>, be transferred to the Complainant.
Date: August 9, 2016