WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Hoffmann-La Roche Inc. v. Domain Privacy Service / Mark Sealey

Case No. D2012-2370

1. The Parties

Complainant is Hoffmann-La Roche Inc. of Nutley, New Jersey, United States of America, represented by F. Hoffmann-La Roche AG, Switzerland.

Respondent is Domain Privacy Service of Provo, Utah, United States of America / Mark Sealey of Christchurch, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <answeringaccutane.com> is registered with FastDomain, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 30, 2012. On November 30, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 30, 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 Complainant on December 4, 2012, providing the registrant and contact information disclosed by the Registrar. On December 4, 2012, Complainant filed an amended Complaint.

The Center verified that the Complaint and 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 5, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 25, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 15, 2013.

The Center appointed Reinhard Schanda as the sole panelist in this matter on January 15, 2013. 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 has registered the trademark ACCUTANE at the USPTO as of August 28, 1973, with first use in 1982.

Respondent has registered the disputed domain name on November 21, 2012.

5. Parties’ Contentions

A. Complainant

Complainant contends that it is, together with its affiliated companies, engaged in research and development of pharmaceutical and diagnostic products. It is a member of the Roche Group, one of the worlds’s leading research-focused healthcare groups and having global operations in more than 100 countries.

The Complainant’s mark ACCUTANE is registered on behalf of the Complainant in the United States Patent and Trademark Office as of August 28, 1973 under Registration No. 966,924, with a first use in 1982. Same as Complainant, Hoffmann-La Roche Inc., also F. Hoffmann-La Roche AG, Basel, Switzerland, is owned and controlled by Roche Holding AG, a company organized and doing business under the laws of Switzerland of Basel, Switzerland. Aforesaid F. Hoffmann-La Roche AG owns and uses the domain name <accutane.com>.

ACCUTANE is an alternative Trademark (US version) for the Trademark ROACCUTAN. ROACCUTAN Trademark is protected in a multitude of countries worldwide. As an example Complainant makes reference to the International Registration No.R450 092. Priority date for the mark ROACCUTAN is August 21, 1979.

The mark ACCUTANE designates a dermatological preparation in the form of a product indicated for the treatment and prevention of acne. This mark was extensively promoted for many years in print advertisements in medical journals, promotional materials, packaging, medical informational materials, television advertising and direct mailings. The sales of the ACCUTANE product in the United States have exceeded hundreds of millions of dollars.

Complainant contends that Respondent’s disputed domain name <answeringaccutane.com> incorporates the Complainant’s trademark ACCUTANE in its entirety. Furthermore the addition of the term “answering” does not sufficiently distinguish the disputed domain name from Complainant’s mark.

Furthermore, Complainant’s use and registration of the mark ACCUTANE do predate Respondent’s registration of the Domain Name. Therefore, the disputed domain name is confusingly similar to the trademark of Complainant.

Complainant contends, that it has exclusive rights for ACCUTANE, as mentioned above and no licence/permission/authorization respectively consent was granted to use ACCUTANE in the domain Name. Furthermore it is obvious that Respondent uses the disputed domain name for commercial gain and with the purpose of capitalizing on the fame of Complainant’s mark ACCUTANE. Therefore, the disputed domain name clearly alludes to Complainant.

Complainant contends that Respondent’s website cannot be regarded as a legitimate noncommercial site, although it first appears as a free speech site about ACCUTANE’s side effects, “it is redirecting Internet users to another site at (www.smallbiztheme.com, a Wordpress template) and is advertising it” through a YouTube video (http://youtu.be/r15S62FuOS4) and upon clicking on “Expand2Web”.

Upon clicking on “Products”, one sees that the Respondent’s website is also a pharmacy on-line offering STEMTECH products: “SE2®”, “StemFlo®” and “StemSport®”.

Complainant contends, that Respondent’s use of the disputed domain name to redirect Internet users to an on-line pharmacy demonstrates Respondent’s lack of a legitimate interest in the disputed domain name.

Complainant’s trademark criticism is just a pretext for commercial advantage. Respondent’s only reason in registering and using the disputed domain name is to benefit from the reputation of the trademark ACCUTANE and illegitimately trade on its fame for commercial gain and profit.

There is no reason why Respondent should have any right or interest in the disputed domain name.

Finally Complainant contends that the disputed domain name was registered in bad faith since at the time of the registration i.e. on November 21, 2012, the Respondent had, no doubt, knowledge of Complainant’s well-known mark ACCUTANE.

Furthermore, the disputed domain name is also being used in bad faith. This is obvious since when viewing the Internet-website from Respondent one realizes that Respondent is intentionally attempting (for commercial purpose) to attract Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s well-known mark as to the source, affiliation and endorsement of Respondent’s website.

Complainant contends that Respondent, by using the disputed domain name, is intentionally misleading the consumers and confusing them by making them believe that the websites behind those links are associated or recommended by Complainant.

As a result, Respondent may generate unjustified revenues and therefore is illegitimately capitalizing on the ACCUTANE trademark fame.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this 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.”

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

The Panel finds that:

1. the disputed domain name <answeringaccutane.com> is confusingly similar to Complainant’s registered trademarks,

2. the Respondent has not established any right or legitimate interest in the disputed domain name <answeringaccutane.com> and

3. the Respondent has registered and is using the disputed domain name <answeringaccutane.com> in bad faith.

A. Identical or Confusingly Similar

The Complainant is the owner of the registered trademark “ACCUTANE”. Previous panels have held that a trademark registration with a national trademark authority is sufficient to establish rights in a complainant’s mark under Policy, paragraph 4(a)(i). See Trip Network Inc. v. Alviera, NAF Claim No. 914943 (finding that the complainant’s national trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy, paragraph 4(a)(i)); see also Metro. Life Ins. Co. v. Bonds, NAF Claim No. 873143 (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy, paragraph 4(a)(i)). Thus, the Panel concludes that Complainant owns rights in its ACCUTANE mark under Policy, paragraph 4(a)(i).

Complainant asserts that Respondent’s disputed domain name <answeringaccutane.com> is confusingly similar to its ACCUTANE mark. The Panel notes that the disputed domain name contains Complainant’s ACCUTANE mark, the descriptive term “answering”, and the generic top-level domain (“gTLD”) “.com”. Past panels have held that the addition of a descriptive term and a gTLD both fail to remove a disputed domain name from the realm of confusing similarity. See Novell, Inc. v. Taeho Kim, NAF Claim No. 167964 (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant’s trademark NOVELL”); see also Am. Int’l Group, Inc. v. Ling Shun Shing, NAF Claim No. 206399 (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy, paragraph 4(a)(i) because the appended term related directly to the complainant’s business); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., NAF Claim No. 916991 (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).

The Panel is of the view that the disputed domain name <answeringaccutane.com> is confusingly similar to Complainant’s ACCUTANE mark under Policy, paragraph 4(a)(i), as the disputed domain name contains Complainant’s mark in its entirety, with the addition of the term “answering” at the beginning of the word of Complainant’s mark. The Panel finds that such an addition does not negate the confusing similarity between Complainant’s mark and Respondent’s disputed domain name under Policy, paragraph 4(a)(i). See Sutton Group Fin. Servs. Ltd. v. Rodger, WIPO Case No. D2005-0126 (finding that the domain name <suttonpromo.com> is confusingly similar to the SUTTON mark because the addition of descriptive or non-distinctive elements to the distinctive element in a domain name is immaterial to the analysis under Policy, paragraph 4(a)(i)); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, WIPO Case No. D2001-0026 (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term). Thus, the Panel holds also in this case that Respondent’s disputed domain name <answeringaccutane.com> is confusingly similar to Complainant’s ACCUTANE mark under Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

Complainant must show that Respondent has no rights or legitimate interests in respect of the disputed domain name. Respondent does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:

(a) He has made preparations to use the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services prior to the dispute;

(b) He is commonly known by the disputed domain name, even if he has not acquired any trademark rights; or

(c) He intends to make a legitimate, non-commercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.

The Panel determines that Complainant has discharged the onus of proof for the second criterion. Respondent has failed to demonstrate any legitimate right or interest.

According to the majority of Panel decisions this Panel also takes the position that while Complainant has the burden of proof on this issue, once Complainant has made a prima facie showing, the burden of production shifts to the Respondent to show by providing concrete evidence that it has rights to or legitimate interests in the domain name at issue. See Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270; Inter-Continental Hotel Corporation v. Khaled Ali Soussi, WIPO Case No. D2000-0252; Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 (holding that, where the Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the Respondent”); see also G.D. Searle v. Martin Mktg., NAF Claim No. 118277 (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent.”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, WIPO Case No. D2000-1228 (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).

Complainant contends that Respondent is not commonly known by the disputed domain name <answeringaccutane.com>. Complainant alleges that it never licensed or otherwise permitted Respondent to use its ACCUTANE mark. Complainant argues that Respondent does not own a trademark registration for the <answeringaccutane.com>. Furthermore the Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant. Finally the Respondent is not an authorized reseller of the Complainant.

Complainant provides the Panel with the WHOIS information, which lists “Domain Privacy Service / Mark Sealey” as the registrant of disputed domain name, and avers that the WHOIS information contains no evidence that Respondent is commonly known by the disputed domain name. In similar situations, past panels have found that a respondent is not commonly known by the disputed domain name based on the WHOIS information and the evidence in the record. See Braun Corp. v. Loney, NAF Claim No. 699652 (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Coppertown Drive-Thru Sys., LLC v. Snowden, NAF Claim No. 715089 (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name). Consequently, the Panel holds that Respondent is not commonly known by the disputed domain name <answeringaccutane.com> pursuant to Policy, paragraph 4(c)(ii).

C. Registered and Used in Bad Faith

Complainant contends that Respondent’s attempt to profit from its registration and use of the <answeringaccutane.com> domain name is evidence of Respondent’s bad faith registration and use. Previous panels have determined that a respondent’s competing use is evidence of bad faith registration and use because the respondent is attempting to commercially benefit from the likelihood that Internet users become confused as to complainant’s affiliation with the disputed domain name. See Scholastic Inc. v. Applied Software Solutions, Inc., WIPO Case No. D2000-1629 (finding bad faith under Policy, paragraph 4(b)(iv) because the respondent initially used the disputed domain name to sell educational services that targeted the complainant’s market); see also Luck’s Music Library v. Stellar Artist Mgmt., NAF Claim No. 95650 (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant).

The Panel is of the view that Respondent registered the disputed domain name for purposes of commercially benefiting from the goodwill associated with Complainant’s mark. The Panel finds that the <answeringaccutane.com> domain name is creating a likelihood of confusion as to the source and affiliation of Complainant to the disputed domain name and corresponding website, which illustrates the Respondent’s bad faith registration and use of the domain name under Policy, paragraph 4(b)(iv). See Drs. Foster & Smith, Inc. v. Lalli, NAF Claim No. 95284 (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain); see also Computerized Sec. Sys., Inc. v. Hu, NAF Claim No. 157321 (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy 4(b)(iv)). Since the Panel determines that Respondent is attempting to commercially gain by creating confusion as to Complainant’s affiliation with the domain name, the Panel holds that Respondent has registered and is using the disputed domain name <answeringaccutane.com> in bad faith under Policy, paragraph 4(b)(iv).

The Complainant also contends that Respondent could not have registered and used the disputed domain name without actual or constructive knowledge of Complainant and its rights in the ACCUTANE or ROACCUTANE mark. While constructive notice has not generally been held to suffice for a finding of bad faith registration and use, the Panel nonetheless finds that Respondent registered and is using the disputed domain name in bad faith under Policy, paragraph 4(a)(iii) since Respondent is found to have had actual notice of Complainant’s trademark rights. See Custom Modular Direct LLC v. Custom Modular Homes Inc., NAF Claim No. 1140580 (“There is no place for constructive notice under the Policy.”); see also Yahoo! Inc. v. Butler, NAF Claim No. 744444 (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).

7. Decision

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 <answeringaccutane.com> be transferred to the Complainant.

Reinhard Schanda
Sole Panelist
Date: January 29, 2013