WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. Pavel Krylov
Case No. D2019-2588
1. The Parties
The Complainant is F. Hoffmann-La Roche AG, Switzerland, represented internally.
The Respondent is Pavel Krylov, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <accutane100.com> is registered with Hosting Concepts B.V. d/b/a Openprovider (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 24, 2019. On October 24, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 25, 2019, 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 October 25, 2019, 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 amended Complaint on October 28, 2019.
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 the Respondent of the Complaint, and the proceedings commenced on November 1, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 21, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 26, 2019.
The Center appointed Colin T. O’Brien as the sole panelist in this matter on December 11, 2019. 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 pharmaceutical company organized under the laws of Switzerland.
The Complainant is the owner of an international registration for the trademark ACCUTANE, (International Trademark No. 840,371) designating Switzerland, Germany, Benelux, Egypt, France, Poland, Ukraine, and Viet Nam but not Russian Federation.
The Complainant is also the owner of an international registration for the trademark ROACCUTAN (International Trademark No. 450092) that designated Russian Federation. This registration appears to have been cancelled as of December 13, 2019.
The disputed domain name was registered on September 30, 2019.
The disputed domain name resolves to a website called American Pharmacy that claims to offer for sale Accutane product.
5. Parties’ Contentions
Complainant is one of the world’s leading research-focused healthcare group in the fields of pharmaceuticals and diagnostics having global operations in more than 100 countries.
The trademark ACCUTANE, ROACCUTAN and ROACCUTANE designate a prescription drug for the treatment of severe nodular and/or inflammatory acne conglobate or recalcitrant acne.
The disputed domain name is confusingly similar to the Complainant’s mark because it incorporates Complainant’s trademark ACCUTANE in its entirety. The addition of “100” does not sufficiently distinguish the disputed domain name from the trademark.
The disputed domain name is confusingly similar to the Complainant’s ACCUTANE trademark making it possible for customer to believe that the disputed domain name is related to the Complaint.
Complainant has exclusive and prior rights in the trademark ACCUTANE which precede the Respondent’s registration of the disputed domain name.
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.
Respondent is falsely implying that its pharmaceutical products are related or similar to those of the Complainant the Respondent is using the disputed domain name for the purpose of trading the Complainant’s goodwill.
It appears the Respondent operates an online pharmacy which promotes and sells (among others) ACCUTANE drugs. Such activity does not represent legitimate noncommercial or fair use.
The Respondent did not reply to Complainant’s cease and desist letter and has not availed itself of the opportunity to present any case of legitimate interest it may have in the disputed domain name.
There is no doubt that at the time of the registration of the disputed domain name the Respondent had knowledge of Complainant’s ACCUTANE mark.
The Respondent uses the disputed domain name containing the mark ACCUTANE to attract Internet user searching for Complainant’s website via search engines who expect to be led either to Complainant’s genuine website or to sites endorsed by the Complainant.
The Respondent may be attempting to generate unjustified revenues and is illegitimately capitalizing on the Complainant’s mark ACCUTANE.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has demonstrated it owns registered trademark rights in the ACCUTANE trademark throughout the world. The addition of the descriptive term “100” does not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions Third Edition (“WIPO Overview 3.0”).
Accordingly, the disputed domain name is confusingly similar to a mark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant has presented a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain names and has not at any time been commonly known by the disputed domain names. The fact that the Respondent obtained the disputed domain name decades after Complainant had begun using the ACCUTANE mark indicates that the Respondent sought to obtain piggy-back on the ACCUTANE mark in order to sell competing products.
After a complainant has made a prima facie case, the burden of production shifts to the respondent to present evidence demonstrating rights or legitimate interests in the domain name. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
Here, the Respondent has provided no evidence of any rights or legitimate interests in the disputed domain name rather the evidence suggests that it was registered to make an undue profit based on the Complainant’s rights. See, e.g., Bottega Veneta SA v. ZhaoJiafei WIPO Case No. D2013-1556.
In the absence of any evidence rebutting the Complainant’s prima facie case indicating the Respondent’s lack of rights or legitimate interests in respect of the disputed domain name, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The disputed domain name was registered many years after the Complainant first registered and used its ACCUTANE trademark. While the evidence on the record provided by the Complainant did not present any use of the ACCUTANE mark in Russian Federation the fact that the website is in in English and advertises ACCUTANE product this is sufficient to satisfy the Panel that, at the time the disputed domain name was registered, the Respondent undoubtably knew of the Complainant’s ACCUTANE mark, and knew that it had no rights or legitimate interests in the disputed domain name. There is no non-benign reason for the Respondent to have registered a domain name containing ACCUTANE and the term “100”.
Further, the use of the disputed domain name by Respondent is in bad faith. The disputed domain name resolves to a website called “American Pharmacy” that claims to offer for sale ACCUTANE as well as other prescription drugs including Viagra and Levitra. The actions of the Respondent in attempting to sell Complainant’s products as well as other prescription drugs can result in the public being misled as to the accuracy of the information provided or the origin, sponsorship, or association of the products offered or sold on Respondent’s websites this is clearly use in bad faith. See Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784.
Accordingly, the Panel finds that the disputed domain name has been 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 disputed domain name, <accutane100.com> be transferred to the Complainant.
Colin T. O’Brien
Date: December 25, 2019