WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. Privacy Administrator, Anonymize, Inc. / Jan Janssen, Pelres Investments Ltd.
Case No. D2019-0161
1. The Parties
Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, internally represented.
Respondent is Privacy Administrator, Anonymize, Inc. of Sammamish, Washington, United States of America (“United States”) / Jan Janssen, Pelres Investments Ltd., of Basingstoke, North Hampshire, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <accutane.org> (“Domain Name”) is registered with Epik, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 24, 2019. On January 24, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 30, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on January 31, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on January 31, 2019.
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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on January 31, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 20, 2019. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 21, 2019.
The Center appointed Marina Perraki as the sole panelist in this matter on February 25, 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
According to the Complaint, Complainant is, together with its affiliated companies, one of the world’s leading healthcare groups in the fields of pharmaceuticals and diagnostics with global operations in more than 100 countries.
Complainant’s group holds numerous trademark registrations for the ACCUTANE mark, and its alternative forms ROACCUTAN and ROACCUTANE, including a) the international registration No. 840371, ACCUTANE (word mark), registered on December 6, 2004, for pharmaceutical products in international class 5, b) the international registration No. 450092, ROACCUTAN (word mark), registered on December 13, 1979, for, inter alia, pharmaceutical products, in international class 5, and c) the United Kingdom trademark registration No 1119969, ROACCUTANE (word mark), filed on September 3, 1979, registered on July 2, 1980 for, inter alia, pharmaceutical products, in international class 5.
The trademarks ACCUTANE, ROACCUTAN, and ROACCUTANE designate a prescription drug indicated for the treatment of severe nodular and/or inflammatory acne conglobata or recalcitrant acne.
The Domain Name was registered on December 19, 2018 and, as per Complaint, redirects to another website (“www.skin-care-products.org/accutane/”), which contains a link to an online pharmacy (“www.pharmacy-xl.com/search-result-pharmacy-xl.html?q=skin”) offering for sale ACCUTANE and other drugs.
On January 16, 2019, Complainant sent a cease and desist letter to Respondent, to which Respondent did not reply.
5. Parties’ Contentions
Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Name.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant has demonstrated rights through registration of the ACCUTANE mark.
The Panel finds that the Domain Name <accutane.org> is identical to the ACCUTANE trademark of Complainant.
The Domain Name incorporates the trademark of Complainant in its entirety.
The generic Top-Level Domain (“gTLD”) “.org” is disregarded, as gTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons only (Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275).
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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.
The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name.
Respondent has not submitted any response and has not claimed any such rights or legitimate interests with respect to the Domain Name. As per Complainant, Respondent was not authorized to register the Domain Name.
Respondent did not demonstrate prior to the notice of the dispute, any use of the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services.
As per Complainant, the Domain Name redirects to a website that contains a link to an online pharmacy offering for sale ACCUTANE and other drugs. This indicates that Respondent knew of Complainant and chose the Domain Name with knowledge of Complainant and its industry (Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784; Safepay Malta Limited v. ICS Inc., WIPO Case No. D2015-0403). The Panel notes that the Domain Name is identical to the ACCUTANE mark and, consequently, it carries a high risk of implied affiliation (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.5.1)
These, along with the fact that the Domain Name was registered with a privacy shield service, speaks against any rights or legitimate interests held by Respondent (Ann Summers Limited v. Domains By Proxy, LLC / Mingchun Chen, WIPO Case No. D2018-0625; Carrefour v. WhoisGuard, Inc., WhoisGuard Protected / Robert Jurek, Katrin Kafut, Purchasing clerk, Starship Tapes & Records, WIPO Case No. D2017-2533).
The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Name.
Complainant has established Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
Because the ACCUTANE mark is a fictitious word and therefore highly distinctive and it had been widely registered and used by Complainant at the time of the Domain Name registration, the Panel finds it more likely than not that Respondent had Complainant’s mark in mind when registering this Domain Name (Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc., WIPO Case No. D2014-1754; Parfums Christian Dior v. Javier Garcia Quintas, WIPO Case No. D2000-0226).
Respondent could have searched the international trademark registry and should have found Complainant’s prior registration in respect of ACCUTANE (Citrix Online LLC v. Ramalinga Reddy Sanikommu Venkata, WIPO Case No. D2012-1338).
The redirection of the Domain Name to a website which displays and contains a link to an online pharmacy offering for sale ACCUTANE and other drugs, also supports registration in bad faith (WIPO Overview 3.0, section 3.1.4), reinforcing the likelihood of confusion, as Internet users are likely to consider the Domain Name as in some way endorsed by Complainant (Ann Summers Limited v. Domains By Proxy, LLC / Mingchun Chen, supra; Marie Claire Album v. Whoisguard Protected, Whoisguard, Inc. / Dexter Ouwehand, DO, WIPO Case No. D2017-1367).
The Panel also considers the concealment of the Domain Name holder’s identity through use of a privacy shield at the time of filing of the Complaint as an additional factor supporting a finding of bad faith registration (BHP Billiton Innovation Pty Ltd v. Domains By Proxy LLC / Douglass Johnson, WIPO Case No. D2016-0364; Fédération Internationale de Football Association (“FIFA”) v. Whois Privacy Shield Services / Winsum Wong, WIPO Case No. D2016-2310; The Uder Company Pty Ltd and Stay In Bed Milk & Bread Pty Ltd (trading as Aussie Farmers Direct) v. PrivacyProtect.org, Domain Admin, ID # 10760, WIPO Case No. D2012-0924).
As regards bad faith use, the fact that the Domain Name redirects to a website that contains a link to an online pharmacy offering for sale ACCUTANE and other drugs, as an attempt to attract, for commercial gain, Internet users searching for Complainant’s ACCUTANE mark, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship or affiliation of the websites, is a clear indication that the Domain Name is being used in bad faith (Pfizer Inc. v. jg a/k/a Josh Green, supra; F. Hoffmann-La Roche AG v. Pinetree Development, Ltd., WIPO Case No. D2006-0049; Twitter, Inc. v. Whois Agent, Whois Privacy Protection Service, Inc. / Domain Support, WIPO Case No. D2015-1488; F. Hoffmann-La Roche AG v. Pinetree Development, Ltd., WIPO Case No. D2006-0049; Park Place Entertainment Corporation v. Anything.com Ltd., WIPO Case No. D2002-0530; Revlon Consumer Products Corporation v. Terry Baumer, WIPO Case No. D2011-1051; WIPO Overview 3.0, sections 3.2.1, 3.6).
Under these circumstances and on this record, the Panel finds no good faith basis for Respondent’s conduct vis-à-vis the Domain Name.
Complainant has established Policy paragraph 4(a)(iii).
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 <accutane.org> be transferred to Complainant.
Date: March 11, 2019