WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. Domain Whois Protection Service, Ourdomains Limited / Scotty Shivers, HomeNetwork
Case No. D2016-1662
1. The Parties
Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented by FairWinds Partners, LLC, United States of America.
Respondent is Domain Whois Protection Service, Ourdomains Limited of Hangzhou, Zhejiang, China / Scotty Shivers, HomeNetwork of Haumoana, Hastings, New Zealand.
2. The Domain Name and Registrar
The disputed domain name <accutanecheap.com> is registered with Ourdomains Limited (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 17, 2016. On August 17, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 19, 2016, 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 Complainant on August 19, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 22, 2016.
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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 24, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 13, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on September 14, 2016.
The Center appointed Richard Tan as the sole panelist in this matter on September 21, 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
Complainant, F. Hoffmann-La Roche AG of Basel, Switzerland, is a leading company in medical research and pharmaceutical production. Its company history dates back 120 years. It employs over 91,000 people worldwide and enjoyed sales of over USD 48 billion in 2015 alone. It maintains its headquarters in Switzerland but also has offices in various locations around the world including Brazil, Canada, throughout Europe, India, Pakistan, South Africa, United Kingdom of Great Britain and Northern Ireland, United States of America and others. Complainant's parent company, Roche Holding AG, is publicly traded on various stock exchanges under the ticker symbol "AG" and currently has a market capitalization of over USD 218 billion.
It is the owner of the ACCUTANE, ROACCUTANE, and ROACCUTAN trademarks (collectively, the "ACCUTANE Marks") which have been registered internationally, and which include ACCUTANE registered under No. 840371 on December 6, 2004, in class 5 for "pharmaceutical products" and ROACCUTAN registered under No. 450092 on December 13, 1979, in class 5 for "pharmaceutical products".
At least as early as 1972, and prior to the creation of the disputed domain name, Complainant commenced use of the ACCUTANE Marks in connection with pharmaceutical preparations for the treatment of acne and related skin conditions.
Complainant's ACCUTANE Marks have been used in international commerce and used through both conventional advertising and, digitally, on such media such as WebMD.com, the American Osteopathic College of Dermatology website, and on Acne.org.
The disputed domain name <accutanecheap.com> was registered on January 12, 2016. The disputed domain name resolves to an online pharmacy offering for sale products similar to Complainant's products.
5. Parties' Contentions
Complainant contends that Respondent has registered and is using the disputed domain name which is identical or confusingly similar to its ACCUTANE Marks.
The disputed domain name merely adds the generic word "cheap" and the mere addition of generic Top-Level Domain ("gTLD") ".com" does not avoid the creation of a confusingly similar domain name.
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name. Its actions are not a bona fide offering of goods or services. The disputed domain name resolves to a third-party website which features the ACCUTANE Mark, suggesting that Respondent is authorized to distribute official branded products under such mark. The website also promotes the sale of goods and services unrelated to Complainant or made, sold or licensed by Complainant. Respondent is not commonly known by the disputed domain name.
Further, there is no evidence that Respondent operates a legitimate business or other organization under this mark or name or that it owns any trademark or service mark rights in Accutane name. Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain. Instead, Respondent is using the disputed domain name to confuse and misleadingly divert consumers or to tarnish the ACCUTANE Marks.
Complainant contends that the disputed domain name was registered and is being used in bad faith.
Respondent has intentionally used the disputed domain name with Complainant's mark without consent from Complainant. Respondent was on actual notice of Complainant's rights in its ACCUTANE Marks through Complainant's extensive and long-standing use of the ACCUTANE Marks which long predates the registration date of the disputed domain name.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
Complainant has the burden of proving each of the following three elements under paragraph 4(a) of the Policy in order to be entitled to a transfer of the disputed domain name:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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.
A. Identical or Confusingly Similar
Based on the evidence adduced by Complainant as noted above, this Panel has no hesitation in finding that Complainant has rights in the ACCUTANE Marks. These marks have been registered and have been used by Complainant on its pharmaceutical and other products which have been sold internationally and advertised widely around the world. This Panel is also satisfied that Complainant has established common law rights in the marks by its long use, sales and advertising.
The threshold test for confusing similarity under the Policy involves a comparison between the relevant marks belonging to Complainant and the disputed domain name to ascertain the presence of the trademark in the disputed domain name. In order to satisfy this test, the relevant marks would generally need to be recognizable as such within the disputed domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent a finding of confusing similarity.
The disputed domain name incorporates Complainant's ACCUTANE mark in its entirety. The mere inclusion of generic, descriptive or common words as, in this case, "cheap", is not sufficient to prevent a finding of confusing similarity where the disputed domain name incorporates well-known mark as in this case. See, for example, Comerica Bank v. Private Registration, WhoisGuardService.com, WIPO Case No. D2014-0529 and Wal-Mart Stores, Inc. v. Horoshiy, Inc., WIPO Case No. D2004-0620.
This finding of confusing similarity is also supported by past UDRP decisions involving the ACCUTANE Marks, as for example, F. Hoffmann-La Roche AG v. Roman Batalak, WIPO Case No. D2016-0672 (where the panel found <buyaccutaneonline.org> to be confusingly similar to the ACCUTANE Mark) and F. Hoffmann-La Roche AG v. Marina Kovtun, WIPO Case No. D2016-0852 (<accutane365.click> found to be confusingly similar to the ACCUTANE Mark).
In this Panel's view, the test of confusingly similarity is clearly satisfied. This Panel finds that the disputed domain name is confusingly similar to marks in which Complainant has rights, for the purpose of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
As several UDRP panels have found, a complainant is only required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name and once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
This Panel is satisfied on the evidence that Respondent's actions are not a bona fide offering of goods or services. Respondent is also not commonly known by the disputed domain name or any similar name. Respondent has not been authorized or licensed by Complainant to use the ACCUTANE Marks.
On the evidence as furnished by Complainant, the disputed domain name resolves to an active website which is not affiliated with, or authorized by Complainant. By the confusingly similarity of the disputed domain name with the ACCUTANE Mark, the false impression has been given that it is so affiliated or authorized by Complainant. The website to which the disputed domain name resolves is that of a retailer which features products bearing the ACCUTANE Marks but is not an authorized reseller of Complainant. There is no evidence that products bearing this mark are actually sold.
In Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 the panel formulated a test for determining whether a reseller can be making a bona fide offering of goods and services and thus have a legitimate interest in the disputed domain name. Under this test, the conduct of a respondent must comply with all of the following requirements:
(1) the respondent must actually be offering the goods of the complainant;
(2) the respondent must use the website to sell only the trademarked goods of the complainant;
(3) the website of the respondent must accurately disclose the registrant's relationship with the trademark owner; and
(4) the respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.
The Panel is satisfied that the above tests have not been satisfied. Respondent has not provided any evidence to show these requirements have been satisfied. Indeed other products of competitors of Complainant are also featured on Respondent's website.
Further, according to the WhoIs record for the disputed domain name, Respondent is listed under a name which has no bearing to the ACCUTANE Mark. According to Complainant, prior to the Registrar revealing this name upon the filing of this Complaint, Respondent was using a privacy shield, and apparently did not wish for its true identity to be known. Complainant contended that as such, Respondent is not commonly known by the disputed domain name or Accutane. The Panel accepts Complainant's submission in this regard.
There is no evidence that Respondent operates a legitimate business or other organization under this mark or name or that it owns any trademark or service mark rights in the Accutane name.
On the evidence, Respondent is also not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain. Instead its actions show that the use of the disputed domain name was intended to confuse and misleadingly divert consumers to its website.
In all the circumstances, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name and that accordingly, paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that a complainant must, in addition to the matters set out above, demonstrate that the relevant disputed domain name has been registered and is being used in bad faith.
The undisputed evidence establishes that Respondent is not affiliated with Complainant and has no license or other authorization to use Complainant's marks.
The disputed domain name was registered well after Complainant's marks were registered and in use. This Panel finds that Respondent must have had actual or constructive notice of Complainant's marks when registering the disputed domain name, as asserted by Complainant. Such conduct is evidence of bad faith. See for example, F. Hoffmann-La Roche AG v. Binero AB, Netfirms AB / Igor Ivanov, Binero AB, Netfirms AB / Tigran Mosisyan, Private Person, Kseniya S Dzhabbarova, Kseniya Dzhabbarova, Wuxi Yilian LLC / Alexis Uvarovis, Flee Ventures 4, Vladimir Kiskov, Konayem Temirtassova, Kravtsov Alexander, Alexander Kravtsov, Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org / Danilo Krasko, WIPO Case No. D2016-0517 ("The Complainant has used these [ACCUTANE] trademarks decades before the registration of the Domain Names. The trademarks are also well known.") and F. Hoffmann-La Roche AG v. Domain Admin, Whois Privacy Corp., WIPO Case No. D2016-0353 ("The Respondent's registration of the disputed domain names on January 28, 2016 is well after the Complainant's registration of the ACCUTANE and XENICAL marks which are internationally known.").
There is little doubt that Respondent's registration of the disputed domain name in this case incorporating Complainant's well-known ACCUTANE Mark well after Complainant registered its marks was carried out in bad faith.
Further, as contended by Complainant, bad faith can be found where a respondent, by using a domain name, intentionally attempts to attract, for commercial gain, Internet searchers to its website or other online location, by creating a likelihood of confusion with the complainant's mark as to source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
In this case, Respondent is obtaining commercial gain from its use of the disputed domain name as Respondent's website generates sales and profits by promoting third-party goods and services, some of which are competitive with those provided by Complainant. Respondent clearly on the evidence intended to unfairly profit from and exploit Complainant's ACCUTANE Marks which conduct constitutes bad faith.
Taking all these matters and circumstances into consideration, this Panel concludes and finds that the disputed domain name was registered and is being used in bad faith within the meaning of paragraph 4(a)(iii) 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 <accutanecheap.com> be transferred to Complainant.
Date: October 4, 2016