WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hoffmann-La Roche Inc. v. Samuil S Chesnokov
Case No. D2013-1614
1. The Parties
Complainant is Hoffmann-La Roche Inc. of Nutley, New Jersy, United States of America, represented by Shameek Ghose of Genentech, Inc., United States of America.
Respondent is Samuil S Chesnokov of Grudziadz, Poland.
2. The Domain Names and Registrar
The disputed domain names <buyaccutane5.com>, <cheaponlineaccutane.com>, <ibuyaccutane.com>, <onlineaccutanecheap.com> and <1buyaccutane.com> (the “Disputed Domain Names”) are registered with Todaynic.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 13, 2013. On September 13, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On September 16, 2013, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant 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 September 19, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 9, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 10, 2013.
The Center appointed Ugur G. Yalçiner as the sole panelist in this matter on October 22, 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 a company established in the United States, engaged in research and development of pharmaceutical and diagnostic products. It is a member of the Roche Group, one of the world’s leading research-focused healthcare groups and has global operations in more than 100 countries.
Complainant has rights over the ACCUTANE trademark for which it holds several trademark registrations since 1973 in the United States with first usage in 1982.
Complainant also has registered the domain name <accutane.com>.
Respondent appears to be an individual from Grudziadz, Poland.
The registration dates of the Disputed Domain Names are as below:
<onlineaccutanecheap.com> on May 17, 2013;
<1buyaccutane.com> on May 20, 2013;
<cheaponlineaccutane.com > on May 27, 2013;
<ibuyaccutane.com> on May 23, 2013;
<buyaccutane5.com> on July 10, 2013.
5. Parties’ Contentions
Complainant’s assertions may be summarized as follows:
Complainant is a member of the Roche Group, one of the world’s leading research-focused healthcare groups and having global operations in more than 100 countries. Complainant’s mark ACCUTANE is registered on behalf of Complainant in the United States Patent and Trademark Office (“USPTO”) as of August 28, 1973. ACCUTANE is an alternative Trademark (United States version) for the trademark ROACCUTAN. The ROACCUTAN trademark is protected in a multitude of countries worldwide. The Disputed Domain Names of Respondent are confusingly similar to Complainant’s mark seeing that they all incorporate this mark in its entirety. The suffixes “buy”, “online”, “cheap”, do not sufficiently distinguish the Disputed Domain Names from Complainant’s mark. Therefore Disputed Domain Names are confusingly similar to the trademark of Complainant.
Complainant has exclusive rights for ACCUTANE, and no license/permission/authorization respectively consent was granted to use ACCUTANE in the Disputed Domain Names. Respondent has no rights or legitimate interests in the Disputed Domain Names. Disputed Domain Names clearly allude to Complainant. Respondent is using the Disputed Domain Names to direct Internet users to a pharmacy online.
The Disputed Domain Names were registered in bad faith since at the time of the registration i.e. on May 17, 2013, May 20, 2013, May 23, 2013, May 27, 2013 and July 10, 2013, Respondent had knowledge of Complainant's well-known product/mark ACCUTANE. The Disputed Domain Names are also being used in bad faith. Respondent is intentionally attempting to attract Internet users to Respondent's websites, by creating a likelihood of confusion with Complainant’s well-known mark as to the source, affiliation and endorsement of Respondent’s websites for commercial purpose. Respondent, by using the Disputed Domain Names, is intentionally misleading the consumers and confusing them by making them believe that the websites behind those links are associated or recommended by Complainant.
In addition United States Federal law requires conformance with the iPLEDGE program, which is the only permissible method through which Accutane is prescribed and dispensed to patients. As of March 1, 2006, only prescribers registered and active in iPLEDGE can prescribe isotretinoin (generic version of Accutane) and only patients registered and qualified in iPLEDGE can be dispensed isotretinoin. Accutane sales outside the iPLEDGE program, which requires a prescription and many additional safeguards, are not permitted.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to decide the Complaint on the grounds of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The burden for Complainant, under paragraph 4(a) of the Policy, is to show:1 (i) that the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and (iii) the Disputed Domain Names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
In the Panel’s view, Complainant has rights in the ACCUTANE mark considering the trademark registrations in the United States since 1973.
The Disputed Domain Names entirely incorporate the term “accutane” with suffix and prefix such as “cheap”, “online”, “buy”. Considering that the Disputed Domain Names aim at offering Internet users/consumers online goods for purchase, and also considering that these pharmaceutical, these words are not distinctive and obviously do not add distinctiveness to Disputed Domain Names.2 Accutane is not a common used word for customers. It also is determined that the trademark ACCUTANE is well-known in the pharmaceutical sector.
Therefore, the Panel finds that the Disputed Domain Names are confusingly similar to Complainant’s mark.
B. Rights or Legitimate Interests
The Panel notes that Complainant did not grant any license, permission or authorization to Respondent to use the ACCUTANE mark in the Disputed Domain Names.
The Panel also notes that Respondent does not appear to have either a trademark application or registration for the term “accutane”.
The website at the Disputed Domain Names offers to sell a variety of pharmaceutical products not limited to Accutane. In the circumstances, the Panel finds that Respondent does not have rights or legitimate interests in the Disputed Domain Names.
C. Registered and Used in Bad Faith
Complainant asserts that Respondent registered and is using the Disputed Domain Names in bad faith.
The evidence adduced by Complainant show that before the registration date of the Disputed Domain Names (2013), Complainant had obtained registration for the mark ACCUTANE in 1973.
Since trademark ACCUTANE is a distinctive and well-known trademark for the pharmaceutical sector, Respondent was, or should have been, aware of Complainant’s marks at that time of the registration of the Disputed Domain Names, which, in the circumstances of this case, may be considered as evidence of bad faith registration.
Additionally, with regard to the domain name <buy1accutane.com> which Respondent registered on April 1, 2013, in Hoffmann-La Roche Inc. v. Samuil S Chesnokov, WIPO Case No. D2013-0727 the panel decided that the domain name be transferred to Complainant which is Hoffmann-La Roche Inc. on June 11, 2013. In the Panel’s view, this is another proof for bad faith.
The Panel notes that the Disputed Domain Names are active and resolve to online pharmacies where generic Accutane, as well as other drugs, are being sold. Therefore, it is concluded that Respondent registered and has used the Disputed Domain Names in bad faith, in accordance with paragraph 4(b)(iv) of the Policy.
Given the aforesaid, this Panel finds that the Disputed Domain Names were registered and 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 Names <buyaccutane5.com>, <cheaponlineaccutane.com>, <ibuyaccutane.com>, <onlineaccutanecheap.com> and <1buyaccutane.com> be transferred to Complainant.
Ugur G. Yalçiner
Date: November 5, 2013
1 See Koninklijke Philips Electronics N.V. v. Relson Limited, WIPO Case No. DWS2001-0003: “[e]ach of the three stated elements are made up of a number of facts, each of which has to be proven in order for the Complainants to succeed [...]. Facts are proven through evidence [...]. Mere “assertions” are nothing more than argument and must in each case be based on facts proved through evidence”.
2 Dolce & Gabbana s.r.l. v. Xiaohua Lin, WIPO Case No. D2013-0604: “[t]he Panel agrees with the Complainant that neither suffix serves to distinguish the respective Disputed Domain Name from the mark DOLCE & GABBANA”( <dolcegabbanabuy.com>).