WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. Oksana Aponchenko
Case No. D2017-1101
1. The Parties
The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, internally represented.
The Respondent is Oksana Aponchenko of Vladivostok, the Russian Federation.
2. The Domain Names and Registrar
The disputed domain names <accutanechr.com> and <accutaneph.today> are registered with Hosting Concepts B.V. d/b/a Openprovider 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 June 6, 2017. On June 6, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 7, 2017, 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.
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 9, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 29, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 30, 2017.
The Center appointed Sok Ling MOI as the sole panelist in this matter on July 11, 2017. 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 affiliate companies, is one of the world’s leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics. It has operations in more than 100 countries. It uses the brand ACCUTANE for its prescription drug indicated for the treatment of severe nodular and/or inflammatory acne conglobata or recalcitrant acne.
The Complainant owns International Trade mark Registration No. 840 371 (registered on December 6, 2004) designating for ACCUTANE. France, Ukraine, Egypt and Viet Nam are among the countries designated under this registration.
The disputed domain names <accutanechr.com> and <accutaneph.today> were registered by the Respondent on May 18, 2017 and May 26, 2017 respectively, long after the Complainant’s first use and registration of its ACCUTANE trade mark. The disputed domain names each resolves to a website which purports to offer for sale ACCUTANE drug products that are marketed and sold by the Complainant.
5. Parties’ Contentions
The Complainant claims that the disputed domain names are confusingly similar to its trade marks.
The Complainant contends that as the Complainant has not licensed or otherwise authorized the Respondent to use its trade mark, the Respondent’s use of the disputed domain names to publish websites purportedly offering for sale drug products that are marketed and sold by the Complainant, was for the purpose of trading on the Complainant’s goodwill. Further, the offer for sale of ACCUTANE drugs without a prescription is neither a legitimate noncommercial use or fair use of the disputed domain names, since the purchase of genuine ACCUTANE drugs require a prescription.
The Complainant contends that the disputed domain names have been registered and used to create confusion and mislead Internet users into believing that the Respondent’s website is in some way connected with or endorsed by the Complainant. The Complainant contends that the Respondent has registered and is using the disputed domain names in bad faith.
For all of the above reasons, the Complainant requests for the transfer of the disputed domain names to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Preliminary Issue - Consolidation of Complaint against multiple respondents
According to the WhoIs information, the disputed domain names <accutanechr.com> and <accutaneph.today> are registered in the name of “Oksana Aponchenko” and “Oksana” respectively.
The Complainant has submitted a request to have the Complaint filed against multiple respondents.
Although neither the Policy nor the Rules explicitly provides for the consolidation of multiple respondents, the issue has been considered by various prior UDRP panels who have reached a general consensus. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2.
In order to file a single complaint against multiple respondents, the complaint must typically meet the following criteria:
(i) the domain names or the websites to which they resolve are subject to common control; and
(ii) the consolidation would be fair and equitable to all parties.
In this regard, the Complainant cited the following reasons, inter alia, to support its allegation that the disputed domain names are subject to common control or at least reflective of a group of individuals acting in concert:
(a) the same email address was indicated for the respective registrant, administrative and technical contact for both disputed domain names; and
(b) the respective websites to which the disputed domain names resolve have identical structure and contents.
In view of the common contact details of the registrants and commonalities in the websites to which the disputed domain names resolve, the Panel is satisfied that both disputed domain names are subject to common control. The Panel therefore allows the Complainant’s request to consolidate the proceedings involving the disputed domain names against multiple respondents (hereinafter “the Respondent”).
6.2 Substantive Issue
Paragraph 4(a) of the Policy directs that a complainant must prove each of the following three elements to obtain an order for the disputed domain name to be transferred:
(i) the disputed domain name registered by the respondent is identical or confusingly similar to a trade mark or service mark in which the complainant has rights;
(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.
On the basis of the evidence introduced by the Complainant, the Panel concludes as follows:
A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in ACCUTANE by virtue of its use and registration of the same as a trade mark.
Each of the disputed domain names effectively incorporates the Complainant’s trade mark ACCUTANE in its entirety. The addition of the letters “chr” or “ph” does not serve to sufficiently distinguish or differentiate the disputed domain names from the Complainant’s trade mark. The addition of the generic Top-Level-Domains (gTLDs) “.com” or “.today” does not impact on the analysis of whether the disputed domain names are identical or confusingly similar to the Complainant’s trade mark.
Consequently, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s trade mark.
Accordingly, the Complainant has satisfied the requirements of the first element under paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, a complainant bears the burden of establishing that the respondent lacks rights or legitimate interests in the disputed domain name. However, once the complainant makes a prima facie showing under paragraph 4(a)(ii), the burden of production shifts to the respondent to establish its rights or legitimate interests in the disputed domain name by demonstrating any of the following, without limitation, under paragraph 4(c) of the Policy:
(i) before any notice to it of the dispute, 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; or
(ii) the respondent has been commonly known by the disputed domain name, even if it has acquired no trade mark or service mark rights; or
(iii) 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 trade mark or service mark at issue.
See Taylor Wimpey PLC, Taylor Wimpey Holdings Limited 诉honghao Internet foshan co, ltd, WIPO Case No. D2013-0974.
The Complainant has clearly established that the Respondent is not in any way affiliated with the Complainant or otherwise authorized or licensed to use the ACCUTANE trade mark. There is also no evidence suggesting that the Respondent is commonly known by the disputed domain names or that the Respondent has any rights in the term “accutane”.
The Panel notes that the Respondent is using the disputed domain names to publish websites that purport to offer for sale ACCUTANE drugs without a prescription. The purchase of genuine ACCUTANE drugs require a prescription. According to the Complainant, these websites also provide standard information about the Complainant’s ACCUTANE drugs. Given the long standing use and fame of the Complainant’s trade mark, it appears that the Respondent has intent to, for commercial gain, mislead Internet users into believing that its websites are somehow connected with the Complainant, and divert Internet users looking for the Complainant’s products to the Respondent’s websites. The Panel does not find such use to be bona fide use of the disputed domain names for the purposes of the Policy.
The Panel is satisfied that the Complainant has made out a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain names. The burden of production thus shifts to the Respondent to establish his rights or legitimate interests in the disputed domain names. Since the Respondent has failed to respond, the prima facie case has not been rebutted. The Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain names.
Accordingly, the Complainant has satisfied the requirements of the second element under paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:
(i) circumstances indicating that the respondent has registered or acquired the disputed 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 trade mark or service mark or to a competitor of the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the respondent has registered the disputed domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s 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 the respondent’s website or location or of a product or service on the respondent’s website or location.
There is no doubt that that the Respondent was aware of the Complainant and its trade mark when it registered the disputed domain names, given that it has listed the Complainant’s ACCUTANE drug products for sale on its websites. The Panel determines that the Respondent’s purpose of registering the disputed domain names was to trade on the reputation of the Complainant and its trade mark by diverting Internet users seeking the Complainant’s branded drug products to its own websites for financial gain.
Irrespective of whether the products offered on the Respondent’s websites are in fact counterfeit, the reproduction of the Complainant’s trade marks on the Respondents’ websites without also displaying a clear disclaimer of a lack of relationship between the Respondent and the Complainant is indication of bad faith. The Panel is satisfied that the Respondent intends to take advantage of the fame of the Complainant’s trade mark to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of the Respondent’s websites. As such, the Panel is satisfied that the Respondent is using the disputed domain names for mala fide purpose and illegitimate financial gain, and the Panel finds that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case.
The Panel also notes that efforts to contact the Respondent at the physical address provided to the Registrar failed which suggests that the Respondent had provided false contact details.
Taking into account all the circumstances, it is adequate to conclude that the Respondent has registered and is using the disputed domain names 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 names, <accutanechr.com> and <accutaneph.today> be transferred to the Complainant.
Sok Ling MOI
Date: July 28, 2017