WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hoffmann-La Roche Inc. v. Jonathan Mason
Case No. D2013-0906
1. The Parties
Complainant is Hoffmann-La Roche Inc. of Nutley, New Jersey, United States of America (“USA”), internally represented.
Respondent is Jonathan Mason of Sprendlingen, Germany.
2. The Domain Name and Registrar
The disputed domain name <accutanetabs.com> (the “Domain Name”) is registered with Todaynic.com, Inc, (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 23, 2013. On May 24, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 27, 2013, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant of the Domain Name and providing the contact details.
The Center verified that 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 Respondent of the Complaint, and the proceedings commenced on May 28, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 17, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 18, 2013.
The Center appointed Antonio Millé as the sole panelist in this matter on July 10, 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 is engaged in research and development of pharmaceutical and diagnostic products and is a member of the Roche Group, one of the leading research-focused healthcare groups and having global operations in more than 100 countries. Complainant affirms that the mark ACCUTANE designates a dermatological preparation in the form of a product indicated for the treatment and prevention of acne which sales in the United States have exceeded USD 100 of millions. The Panel verified that a simple Internet research produce multitude of information ratifying the extensive diffusion and recognition of this medication.
Complainant is the owner of the trademark ACCUTANE, registered in the United States Patent and Trademark Office (”USPTO”) as of August 28, 1973, under registration No. 966,924 in class 018, with a first use in 1972. Complainant states also that ACCUTANE is an alternative United States trademark for the trademark ROACCUTAN, protected in different countries, with respect to which Complainant proves the registration by submitting a copy of the trademark certificate for International Registration No. 450.092.
The disputed domain name was registered on January 31, 2013.
5. Parties’ Contentions
- that the Domain Name is confusingly similar to its trademark ACCUTANE,
- that Respondent has no rights or legitimate interests in the Domain Name, and
- that Respondent has registered and used the Domain Name in bad faith.
Respondent did not reply to Complainant’s contentions.
To obtain relief under paragraph 4(a) of the Policy it is required that Complainant proves each of the following elements:
(i) that the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) that Respondent has no rights or legitimate interests in the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has filed relevant evidence showing that it owns the ACCUTANE trademark.
The Domain Name comprises three elements
a) the expression “accutane”, which is identical to Complainant’s registered trademark;
b) the expression “tabs” (which is the apocopation or contraction of the generic term “tablets”. This element is not a distinguishing feature that could contribute to avoid a finding of confusing similarity between Complainant’s trademark and the Domain Name. Previous UDRP panels adopted this approach to evaluate the confusing similarity between trademarks and domain names, See, e.g., Time Warner Entertainment Company L.P. v. HarperStephens, WIPO Case No. D2000-1254; AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758; and eBay Inc. v. ebayMoving / Izik Apo, WIPO Case No. D2006-1307, among others. About the particular case of the ACCUTANE trademark, Complainant quotes the UDRP decision of Hoffman La-Roche Inc. Vs. Hightech Industries, Andrew Browne, WIPO Case No. D2010-0240, in which the similarity with the same trademark of Complainant was discussed in the domain name <buyaccutane.com>. In that case, the panel found that “the addition of the term “buy” as a prefix of the ACCUTANE mark does not mitigate the confusing similarity between the Disputed Domain Name and the Complainant´s trademark”.
c) the generic top-level domain “.com” which may be excluded from consideration when determining whether the Domain Name is identical or confusingly similar to the trademarks held by Complainant. It is indeed deemed to be a functional or generic component of the Domain Name (Gerling Beteiligungs-GmbH (GBG) v. World Space Corp, WIPO Case No. D2006-0223).
Adding a generic and descriptive term to Complainant’s trademark ACCUTANE does not reduce the confusing similarity of the Domain Name with Complainant’s trademark, especially because the added expression suggests concepts related with the kind of pharmaceutical products that Complainant trades. For that reason, the Panel considers the Domain Name to be confusingly similar with Complainant’s trademark.
The Panel finds, therefore, that the requirement of paragraph 4(a)(i) of the Policy is met.
B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, rights or legitimate interests in a domain name may be demonstrated by showing that: (i) before any notice of this dispute, the respondent used, or demonstrably prepared to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; (ii) the respondent has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or (iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain or to misleadingly divert customers or to tarnish the trademark at issue.
Respondent has not answered to the Complaint and therefore, it has not rebutted Complainant’s contentions, giving any basis to a right or legitimate interest in respect of the use of the expression “Accutane” in the Domain Name. The Domain Name redirects to an online pharmacywebsite; and the evident possibility of consumers confusion, has been alleged by Complainant and supported by convincing evidence. Furthermore, the Panel has taken into consideration that Respondent: a) does not appear to be using the Domain Name in connection with a bona fide offering of goods or services; b) there is no evidence that Respondent is commonly known by a denomination similar to the Complainant’s trademark; and c) all the factual circumstances suggest that Respondent is making a commercial use of the Domain Name, with the intent for commercial gain by means of misleadingly diverting consumers to an online pharmacy. In a previous UDRP case quoted by Complainant, the panel considered the redirection of Internet users to an online pharmacy as a demonstration of Respondent’s lack of a legitimate interest in the domain name (Hoffmann-La Roche, Inc. Vs. Samuel Teodorek, WIPO Case No. D2007-1814). The Panel also notes that the website at the disputed domain name does not disclose Respondent’s (lack of a) relationship with Complainant.
Complainant must show a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name, after which the burden of production is shifted to Respondent (see, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455). The absence of rights or legitimate interests is established if a complainant makes out a prima facie case and the respondent enters no response (see Accor v. Eren Atesmen, WIPO Case No. D2009-0701, citing De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005). Previous UDRP panel decisions have found that where the respondent did not make any attempt to rebut the prima facie case made by the complainant, the panel will decide the dispute on the basis of the complainant’s undisputed contentions of facts. Although the respondent’s default does not automatically result in a decision in favor of the complainant, panels may draw negative inferences from the same (see Unilever N.V. v. Kentech, WIPO Case No. D2005-1021).
On this basis, this Panel concludes that Respondent has no rights or legitimate interests in the Domain Name.
Therefore, the requirement of paragraph 4(a)(ii) of the Policy is met.
C. Registered and Used in Bad Faith
Complainant based the Complaint on this point on the existence of the circumstances set out in paragraph 4(b)(iv) of the Policy regarding the registration and use of the Domain Name in bad faith.
The Domain Name <accuanetabs.com> was registered by the Respondent on January 31, 2013, almost forty years after Complainant’s trademarks were registered.
The use of the Domain Name incorporating Complainant’s trademark in its entirety and redirecting Internet users to an online pharmacy website, offering similar or strongly related products to those offered by the Complainant without disclosing Respondent’s (lack of a) relationship with Complainant, seems to the Panel as the conduct described under paragraph 4(b)(iv) of the Policy, as “intentionally attempted to attract, for commercial gain, Internet users to a 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 this web site or location or of a product or service on such web site or location”.
In the light of to these circumstances, and while Respondent did not rebut Complainant’s contentions , the Panel cannot find any justification for such registration and use of the Domain Name that clearly and univocally evoke Complainant’s trademark.
In addition, the use of false contact information further indicates Respondent’s bad faith. This circumstance was also taken into account in previous UDRP decisions of the Center: “The Respondent’s bad faith is further demonstrated by the false contact information he provided to the registrar with which the domain names are registered” (see Oxygen Media, LLC v. Primary Source, WIPO Case No. D2000-0362, finding bad faith, in part, because respondent provided false contact details to Register.com, Inc.)”; and Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775.
For these reasons, the Panel finds that the Complainant has met the requirement under 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 Domain Name <accutanetabs.com> be transferred to the Complainant.
Dated: July 12, 2013