WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hoffmann-La Roche Inc. v. Vasju Pere / Domain ID Shield Service CO. Limited
Case No. D2012-2234
1. The Parties
The Complainant is Hoffmann-La Roche Inc. of Nutley, New Jersey, United States of America, represented internally.
The Respondent is Vasju Pere of Paris, France; Domain ID Shield Service CO. Limited of Hong Kong, China.
2. The Domain Name and Registrar
The disputed domain name <accutanepillsnow.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 13, 2012. On November 13, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 15, 2012, 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 November 15, 2012 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 the same day.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 16, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 6, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 7, 2012.
The Center appointed Benoit Van Asbroeck as the sole panelist in this matter on December 13, 2012. 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 and its affiliated companies constitute a leading research-focused healthcare group engaged in research and development of pharmaceutical and diagnostic products. It is a member of the Roche Group operating in more than 100 countries.
The Complainant has obtained the ownership and enforcement of the United States trademark ACCUTANE (the “Trademark ACCUTANE”), registered at the United States Patent and Trademark Office as of August 28, 1973, with Registration No. 966,924.
Hoffmann-La Roche Inc., also F. Hoffmann-La Roche AG, of Basel, Switzerland, is owned and controlled by Roche Holding AG, a company organized and doing business under the laws of Switzerland. Aforesaid F. Hoffmann-La Roche AG owns and uses the domain name <accutane.com>.
As it has been evidenced, ACCUTANE is an alternative Trademark (United States version) for the trademark ROACCUTAN (the “Trademark ROACCUTAN”), which is protected in several countries, as reflected by the International Registration No. 450092, with priority date as of August 21, 1979.
The marks designate dermatological preparations in the form of a product indicated for the treatment and prevention of acne.
The Respondent has registered the disputed domain name <accutanepillsnow.com> on November 4, 2012. After several attempts, the Panel has not been able to enter into the website at the disputed domain name. The Panel will therefore refer to the use of the website at the time the Complaint was filed and the evidence submitted by the Complainant.
5. Parties’ Contentions
The Complainant contends that each of the three elements specified in Paragraph 4(a) of the Policy are satisfied in the present case, as follows:
(a) The disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant is and has been for many years the right holder of the marks ACCUTANE and ROACCUTAN in numerous countries worldwide. The marks are used in the pharmaceutical sector to designate products indicated for the treatment and prevention of acne. Such marks predate the Respondent’s registration of the disputed domain name.
The disputed domain name <accutanepillsnow.com> incorporates the Complainant’s ACCUTANE Trademark in its entirety, and part of the ROACCUTAN Trademark.
The Complainant’s Trademarks ACCUTANE and ROACCUTAN are highly distinctive. Hence, incorporating such Trademarks wholly or partially in the disputed domain name is confusingly similar to those Trademarks.
Numerous UDRP cases have established that the addition of a generic element such as “pills” is not capable to sufficiently distinguish the disputed domain name from the Trademarks. Because of the high distinctiveness of the Trademarks ACCUTANE and ROACCUTAN, the fact that the brand is fully (or partially) embedded in the disputed domain name inevitably causes confusion and, hence, Internet users are induced to believe that the website involved is somehow associated to or recommended by the Complainant, which is not the case.
Furthermore, in light of numerous UDRP cases, adding the word “now” to the Complainant’s Trademark(s) may not avoid confusion and may therefore suggest that the Respondent’s website is a location where a consumer may buy the Complainant’s product(s).
(b) The Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant has trademark rights for ACCUTANE and ROACCUTAN, and no license, permission, authorization or consent was granted to the Respondent to use the ACCUTANE Trademark or the ACCUTANE portion of the ROACCUTAN Trademark in the disputed domain name.
The Respondent uses the disputed domain name for commercial gain and with the purpose of mainly capitalizing on the fame of the Complainant’s Trademark ACCUTANE.
Based on the evidence submitted to the Panel, the Complainant establishes that the website associated with the disputed domain name offers the possibility of buying, upon clicking “Buy Now”, Accutane products without prescription. However, the consumer is redirected to an online pharmacy, ”www.cheap-pharm.com”, which supplies a third party generic isotretinoin, without a prescription as well as other products of third party competitors of the Complainant.
The use by the Respondent of the disputed domain name to redirect Internet users to an online pharmacy demonstrates the lack of a legitimate interest in said disputed domain name.
(c) The disputed domain name was registered and is being used in bad faith.
The Complainant submits that the disputed domain name was registered and is being used in bad faith by the Respondent. On the one side, because the registration took place on November 4, 2012, which evidences that the Respondent was well aware of the prior legitimate rights of the Complainant; and, on the other side, because the Respondent attempts to attract Internet users to its website, by creating a likelihood of confusion with the Complainant’s well-known marks as to the source, affiliation and endorsement of the Respondent’s website, which has provided the Respondent with unjustified revenues.
The Respondent, by using the disputed domain name, is intentionally misleading the consumers and confusing them by making them believe that the website is associated or recommended by the Complainant.
Finally, based on previously rendered UDRP cases, the Complainant concludes that this third condition is met as the mere fact of using the disputed domain name as a forwarding address to an online pharmacy establishes the Respondent’s bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Notwithstanding a respondent’s default, the complainant must nevertheless still establish each of the three elements required by paragraph 4(a) of the UDRP (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (the “WIPO Overview 2.0”), paragraph 2.1 and paragraph 4.6, and the relevant decisions cited therein). Nonetheless, the Panel shall decide this administrative proceeding on the basis of the complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and, in the absence of exceptional circumstances, draw such inferences as it considers appropriate pursuant to paragraph 14(b) of the Rules.
This Panel has found no such exceptional circumstances that would justify the Respondent’s failure to submit a Response. The Panel therefore infers that by not replying to the Complainant’s contentions, the Respondent does not deny the facts asserted and contentions made by the Complainant (e.g. Roche Products Limited v. Private Whois Service, WIPO Case No. D2010-1983; Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084; Ross-Simons, Inc. v. Domain.Contact, WIPO Case No. D2003-0994).
As a result, asserted facts that are not unreasonable will be taken as true by this Panel, including the fact that the Respondent is selling a generic product, not manufactured by the Complainant, and other acne and other third party pharmaceutical products through the linked site “www.cheap-pharm.com”.
Furthermore, in accordance with paragraph 4(a) of the Policy, in order to decide on the remedy sought by the Complainant, this Panel will examine whether each the following three elements are present:
(i) the disputed domain name registered by the Respondent 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.
Consequently, this Panel shall further analyze the eventual concurrence of these three grounds in the present case.
A. Identical or Confusingly Similar
The Complainant is required to establish the two following elements: (1) that it has trademark rights, and, if so, (2) that the disputed domain name is identical or confusingly similar to its trademark(s).
First of all, this Panel finds that the Complainant has clearly evidenced that it has registered trademark rights to ACCUTANE and ROACCUTAN well before the disputed domain name was registered.
Secondly, it is noted that the disputed domain name is not ad pedem litterae identical to the Trademarks owned by the Complainant as the disputed domain name incorporates the Trademark ACCUTANE in its entirety and a part of the ROACCUTAN Trademark and merely adds the descriptive terms “pills” and “now”. The issue herein is therefore whether there is confusing similarity between the Trademarks and the disputed domain name.
This Panel relies on previous UDRP decisions which have held that when a domain name wholly incorporates a complainant’s registered trademark, as the dominant element, it is sufficient to establish confusing similarity for purposes of the Policy (e.g. Telstra Corporation Limited v. Barry Cheng Kwok Chu, WIPO Case No. D2000-0423; Pfizer Inc. v. United Pharmacy Ltd., WIPO Case No. D2001-0446; E.I. du Pont de Nemours and Company v. Richi Industry S.r.l., WIPO Case No. D2001-1206; Utensilerie Associate S.p.A. v. C & M, WIPO Case No. D2003-0159; Shaw Industries Group Inc., Columbia Insurance Company v. Wan-Fu China, Ltd., WIPO Case No. D2007-0282).
In the same vein and concerning specifically the Complainant’s trademarks, Roche Products Limited v. Max Lucky, WIPO Case No. D2011-0946, concludes that “the ACCUTANE and ROACCUTANE trademarks are highly distinctive” and that “the domain names incorporating the ACCUTANE trademark in its entirety and/or part of the ROACCUTANE trademark are confusingly similar to those marks”.
This Panel also believes that the use of descriptive words, such as “pills” and “now” in this case, does not affect confusing similarity (see e.g. Roche Products Limited v. Sergey Unikovskiy, WIPO Case No. D2011-1597; F. Hoffmann-La Roche AG v. Alexandr Ulyanov, Private Person, WIPO Case No. D2009-1590; F. Hoffman-La Roche AG v. Whois Protected, WIPO Case No. D2009-1569; F.Hoffman-La Roche AG v. PrivacyProtect.org, Domain Admin and Mark Sergijenko, WIPO Case No. D2007-1854).
Such conclusion relies particularly on previous UDRP decisions which concluded that “the addition of the merely generic or descriptive element “pills” in the disputed domain name does not avoid a finding of confusing similarity in this case” (Roche Products Limited v. Max Lucky, WIPO Case No. D2011-0946; see also Sanofi-Aventis v. KerryWeb Enterprise, Inc., WIPO Case No. D2007-0764) and that “a user of a mark may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it”, and that the word “now” “may suggest that Respondent’s websites are locations where a consumer may buy [the] brand product” (Lilly ICOS LLC v. John Hopking / Neo net Ltd., WIPO Case No. D2005-0694).
This Panel also considers that the likelihood of confusion is further increased by the addition of such generic words to the registered trademark as any person would believe that he or she could order the Complainant’s Accutane product through the website at the disputed domain name.
Consequently, this Panel finds that the mere addition of generic terms such as “pills” and “now” to highly distinctive trademarks does not eliminate the confusing similarity between the two, and that in this case this Panel believes that the choice of words increases the likelihood of confusion.
Thus, according to paragraph 4(a)(i) of the Policy, this Panel finds and concludes that the disputed domain name <accutanepillsnow.com> is confusingly similar to the Complainant’s ACCUTANE and ROACCUTAN Trademarks.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy reads:
“When you receive a complaint, you should refer to Paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.
This Panel finds, in light of the Complainant’s asserted facts, that no license, permission or authorization of any kind to use the Complainant’s Trademarks has been granted to the Respondent.
Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements, which are according to the leading Oki Data decision as follows (Oki Data Americas, Inc. v. ASD, Inc,. WIPO Case No. D2001-0903):
- the respondent must actually be offering the goods or services at issue;
- the respondent must use the site to sell only the trademarked goods (otherwise, there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other goods);
- the site itself must accurately disclose the respondent’s relationship with the trademark owner; and
- the respondent must not try to “corner the market” in all relevant domain names, thus depriving the trademark owner of the ability to reflect its own mark in a domain name.
This Panel finds, similarly to other UDRP panels, that the Oki Data criteria are appropriate even when the respondent is not an authorised reseller, such as it is the case in this dispute (National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin’ Connection, Inc., WIPO Case No. D2007-1524).
Examination of the website operating under the disputed domain name, as it appeared before the Complainant initiated this dispute and as properly evidenced by the Complainant, shows that it does not fulfil the Oki Data criteria. Indeed, the Respondent does not actually offer the genuine Accutane products on its website but indicates “buy Accutane without prescription” and redirects users to an online pharmacy upon clicking on “Buy now” which in fact supplies a third party generic isotretinoin as well as other products of third party competitors of the Complainant. Furthermore, if a user would scroll all the way to the bottom of the website as it has been submitted to the Panel, he or she would find no indication that the page was not associated with the Complainant, the owner of the Trademarks ACCUTANE and ROACCUTAN, and would not be able to determine who the Respondent was.
Finally, this Panel finds in light of several similar UDRP decisions that the Respondent’s use of the disputed domain name to redirect Internet users to an online pharmacy clearly demonstrates the Respondent’s lack of a legitimate interest in the disputed domain name (e.g. Hoffmann-La Roche Inc. v. Samuel Teodore, WIPO Case No. D2007-1814; Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784; Pfizer, Inc. v. Seocho and Vladimir Snezko, WIPO Case No. D2001-1199).
For all the foregoing reasons, this Panel finds the Respondent’s use of the disputed domain name cannot be considered to be in accordance with a bona fide offering of goods or services. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name <accutanepillsnow.com>.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by this Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy reads:
“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 web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”.
Each of the four circumstances in paragraph 4(b) of the Policy, if found, is an instance of “registration and use of a domain name in bad faith”.
When assessing the bad faith, the following two elements should be considered (1) whether the Respondent knew of the Complainant and its trademark when it registered the domain name, and (2) whether the Respondent targeted the Complainant to benefit from confusion generated by the similarity between the disputed domain name and the trademark (Swarovski Aktiengesellschaft v. blue crystal, WIPO Case No. D2012-0630; Avon Products, Inc. v. Mary Ultes, WIPO Case No. D2009-0471).
This Panel has considered the Complainant’s assertions and evidence with regard to the Respondent’s registration of the disputed domain name. In this respect, this Panel believes, after reviewing the website and its link as evidenced by the Complainant, that the Respondent must have known and be aware of the rights on the prior Trademarks ACCUTANE and ROACCUTAN and the associated products at the time of the registration on November 4, 2012.
Also, based on a previous panel decision regarding the ACCUTANE Trademark, this Panel finds that given the fact that both Trademarks are not descriptive of anything and devoid of meaning other than the products of the Complainant, “it is very unlikely that the Respondent would have registered a domain name incorporating the [Trademarks] without knowledge of the [Trademarks]” (Hoffmann-La Roche Inc. v. Hightech Industries, Andrew Browne, WIPO Case No. D2010-0240) and that “It defies common sense to believe that Respondent coincidentally selected these precise domain names without any knowledge of Complainant and its […] Trademarks” (Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415).
Furthermore, this Panel believes that the Respondent’s actual use of the disputed domain name appears to mislead consumers and confuse them by making them believe that the website is associated, fostered or recommended by the Complainant. In fact the Complainant’s evidence shows that the disputed domain name resolves in misdirecting consumers looking for the Complainant’s website in order to divert traffic to an online pharmacy supplying a generic isotretinoin drug, without prescription, as well as other products of competitors of the Complainant. As a result, this Panel infers from such behaviour that the Respondent’s purpose in registering the disputed domain name appears to have been to capitalize on the reputation of the Complainant’s Trademarks, and thus generate unjustified revenues.
In light of the foregoing, and as it has been deemed by numerous UDRP decisions, it is clear that the Respondent intentionally registered and used the disputed domain name for commercial gain in order to misleadingly divert customers and create confusion as to the Complainant’s Trademarks as to the source, affiliation, or endorsement as addressed within the meaning of paragraph 4(b)(iv) of the Policy (Roche Products Limited v. Sergey Unikovskiy, WIPO Case No. D2011-1597; Sanofi-Aventis, Aventis Pharma S.A., Merrell Pharmaceuticals Inc. v. George Breboeuf, WIPO Case No. D2005-1345).
This Panel finds that the disputed domain name was registered and used in bad faith. Such conclusion is further supported by the decision to which the Complainant refers, which states that bad faith is established when the “Respondent is using the domain names as a forwarding address to a for-profit on-line pharmacy” (Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784).
According to paragraphs 4(a)(iii) and (b) of the Policy, the Panel finds that the disputed domain name <accutanepillsnow.com> was registered and is being used by the Respondent in bad faith under the Policy.
For all 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 <accutanepillsnow.com> be transferred to the Complainant.
Benoit Van Asbroeck
Date: December 27, 2012