The Complainant is Hoffmann-La Roche Inc. of New Jersey, United States of America, represented by Lathrop & Gage L.C., United States of America.
The Respondent is Alexei Golubev, Alex S&A of Saint Petersburg, Russian Federation.
The disputed domain name <accutane-acne.net>, <buy-xenical.biz> and <buy-xenical-online.biz> (together the “Disputed Domain Names”) are registered with Web Commerce Communications Limited dba WebNic.cc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 6, 2009. On April 7, 2009, the Center transmitted by email to Web Commerce Communications Limited dba WebNic.cc a request for registrar verification in connection with the disputed domain names. On April 8, 2009, Web Commerce Communications Limited dba WebNic.cc transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on April 14, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was May 4, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 6, 2009.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on May 18, 2009. 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.
The Complainant, together with its affiliated companies, is one of the leading manufacturers of pharmaceutical and diagnostic products in the world.
The Complainant registered its ACCUTANE mark in the United States in 1973, the priority date being November 27, 1972. The ACCUTANE mark designates and has been used extensively by the Complainant in conjunction with pharmaceutical products for the treatment and prevention of acne.
The Complainant owns several trade marks incorporating the word “xenical”. The Complainant registered the XENICAL mark in the United States in July 18, 1995 with a priority date of March 18, 1994. The XENICAL mark designates and has been used extensively by the Complainant in conjunction with pharmaceutical products for weight loss and long-term weight management.
The Complainant's parent company F. Hoffmann-La Roche AG, owns the domain names <accutane.com> and <xenical.com>, both of which resolve to <rocheusa.com> and the Complainant itself controls portions of the website www.rocheusa.com which relate to ACCUTANE and XENICAL products.
According to the US Food and Drug Administration (the “FDA”), Accutane products must not be prescribed, dispensed or otherwise obtained through the Internet or any other means outside of the iPLEDGE program which sets out the method for the only permissible distribution system of Accutane products in (to) the United States, such method requiring Accutane products to be FDA-approved and available only at US licensed pharmacies.
The Complainant's primary contentions can be summarised as follows:
(a) The incorporation of the entire ACCUTANE and XENICAL marks in the Disputed Domain Names (as appropriate) creates a strong likelihood of confusion as to source, sponsorship, association or endorsement of the websites associated with the Disputed Domain Names by the Complainant.
(b) The descriptive language added to each of the Disputed Domain Names (i.e. “acne”, “buy” and “online”) does not alter the fact that the Disputed Domain Names are confusingly similar to the Complainant's ACCUTANE and XENICAL marks (as appropriate).
(c) The Complainant has not authorised or licensed the Respondent to use its ACCUTANE or XENICAL marks or to incorporate such marks into any domain names..
(d) Neither the Respondent nor its websites have been commonly known by the Disputed Domain Names.
(e) The Respondent's use of the Disputed Domain Names to resolve to various websites each redirecting users to websites through which pharmaceutical products belonging to the Complainant and/or its competitors may be purchased is disreputable.
(f) The Respondent's sale of ACCUTANE products through the Disputed Domain Names is in violation of the FDA's iPLEDGE program.
(g) The Respondent, in registering and using the Dispute Domain Names, has sought to capitalise on the Complainant's reputation in the ACCUTANE and XENICAL marks. Further, the Respondent uses such reputation to divert Internet users to websites wholly unrelated to the Complainant and/or its affiliated entities.
(h) The Respondent's use of the Complainant's ACCUTANE and XENICAL marks in the Disputed Domain Names is a clear attempt to create and benefit from consumer confusion regarding the association between the Respondent's activities and the Complainant's bona fide business.
(i) The Respondent has not undertaken any bona fide offering of goods or services through use of the Disputed Domain Names, nor made a legitimate non-commercial or fair use of the Disputed Domain Names without intent for commercial gain. In particular, the Disputed Domain Names have been used to solicit sales of the Complainant's ACCUTANE and XENICAL products and to supply products not belonging to and/or in competition with the Complainant's products.
(j) The Respondent had registered and is using the Disputed Domain Names in bad faith for reason that it is clearly exploiting the reputation of the Complainant's ACCUTANE and XENICAL marks without any authorisation to do so, and in creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Respondent's websites or goods, is intentionally attempting to attract Internet users to its websites for financial gain.
The Respondent did not reply to the Complainant's contentions.
It is open for the Panel to infer from the Respondent's failure to file a Response that the Respondent does not dispute the Complainant's contentions and otherwise to make such inferences from this as the Panel may see fit.
Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three (3) elements:
(i) the Disputed Domain Names are 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 Names; and
(iii) the Disputed Domain Names have been registered and are being used by the Respondent in bad faith.
Further, paragraph 14(b) of the Rules provides that where a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under the Rules, the Panel shall draw such inferences therefrom as it considers appropriate. Accordingly, the Panel may draw inferences from the Respondents' failure to submit a Response in accordance with paragraph 5(a) of the Rules as it considers appropriate.
The Panel notes the Complainant's rights in the ACCUTANE and XENICAL trade marks, and that these marks have been extensively promoted and otherwise used in conjunction with pharmaceutical products for the treatment of acne and weight management respectively.
It is well-established that the addition of a generic term to a domain name consisting of a trade mark rarely excludes a finding of confusing similarity under the Policy. See for example FINAXA Société Anonyme v. James Lee, WIPO Case No. D2002-1098 and Blue Cross and Blue Shield Association v. John Kraus, d/b/a MrINTER.NET, WIPO Case No. D2004-0756. The Panel finds that the words “buy” and “online” do not detract from the confusing similarity between the Disputed Domain Names <buy-xenical.biz> and <buy-xenical-online.biz> and the Complainant's XENICAL mark.
Furthermore, the incorporation of the word “acne”, being the condition which the Complainant's Accutane products are widely known to treat, in the Disputed Domain Name <accutane-acne.net> reinforces the confusing similarity of the domain name with the Complainant's “ACCUTANE” trade mark. See The Guardian Life Insurance Company of America v. Belize Domain WHOIS Service Lt, WIPO Case No. D2008-1087.
Accordingly, the Panel finds that the Disputed Domain Names are identical or confusingly similar to trade marks in which the Complainant has rights in satisfaction of paragraph 4(a)(i) of the Policy.
In consideration of the Complainant's contentions set out at paragraphs (c) to (e) and (g) to (i) listed above at 5A, the Panel finds that the Complainant has made out a prima facie case in respect of the Respondent's lack of rights or legitimate interests in the Disputed Domain Names. In respect of paragraph (f) at 5A above, the Panel is not in the position to, nor is it necessary for the Panel to make any determination on whether the Respondent has violated the FDA's iPLEDGE program.
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions states that once a complainant makes a prima facie case in respect of the lack of rights or legitimate interests of the respondent, the respondent carries the burden of demonstrating it has rights or legitimate interests in the subject domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
In the absence of any evidence submitted by the Respondent to demonstrate that the Respondent:
(a) used, or made demonstrable preparations to use, the Disputed Domain Names in connection with a bona fide offering of goods or services; or
(b) has been commonly known by any or all of the Disputed Domain Names; or
(c) is making a legitimate non-commercial or fair use of the Disputed Domain Names without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant's ACCUTANE or XENICAL marks.
It is open to the Panel to infer that the Respondent does not dispute the Complainant's assertions. In view of this and the Complainant's contentions as set out at paragraphs (c) to (e) and (g) to (i) listed above at 5A, and noting in particular that:
- use which intentionally trades on the fame of another (as is apparent in the present circumstances) cannot constitute a bona fide offering of goods or services: Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946 and Madonna Ciccone, p/k/a Madonna v. Dan Parisi and <madonna.com> WIPO Case No. D2000-0847; and
- the use of a domain name to redirect Internet users to websites promoting and selling pharmaceutical products belonging to the Complainant's competitors has been consistently found to demonstrate a lack of legitimate non-commercial or fair use of such domain name: Pfizer Inc. v. jg a/k/a/ Josh Green, WIPO Case No. D2004-0784 and Pfizer, Inc. v. Seocho and Vladimir Snezko, WIPO Case No. D2001-1199.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy in respect of each of the Disputed Domain Names.
The Panel refers to the Complainant's contention at paragraph (j) above at 5A and notes that if such contention is made out, there will be sufficient evidence of the registration and use of the Disputed Domain Names in bad faith under paragraph 4(b)(iv) of the Policy.
In addition to the Complainant's contentions above, the Panel notes that the Disputed Domain Names each resolve to sponsored listing pages which contain links bearing the Complainant's ACCUTANE or XENICAL marks (as appropriate).
The Panel finds that the confusing similarity between the Disputed Domain Names and the Complainant's ACCUTANE or XENICAL mark (as appropriate) is being exploited by the Respondent who, in using the relevant Disputed Domain Name, is clearly seeking to capitalise on the Complainant's goodwill in the ACCUTANE and XENICAL marks for the purpose of attracting, for commercial gain, third parties to the Respondents' website thereby creating a likelihood of confusion with the Complainant's marks as to source or affiliation. This is shown by:
- the obvious exploitation of the Complainant's reputation in its ACCUTANE and XENICAL marks by reason of the incorporation of these marks into the Disputed Domain Names thus creating a likelihood of confusion with the Complainant's mark: F. Hoffmann-LaRoche AG v. Martyn Witt, WIPO Case No. D2006-0139 and F. Hoffmann-La Roche AG v. Old Navy ltd, Mihail Gordenco, WIPO Case No. D2009-0350;
- the presence of links on the Respondent's website which correspond to the Complainant's ACCUTANE and XENICAL marks, such acts having often been held to constitute “abusive cybersquatting”: Ranbaxy Laboratories Ltd v. Jucco Holdings, WIPO Case No. D2007-1562 and Accolo, Inc. v. St Kitts Registry, WIPO Case No. D2007-1932; and
- the redirection of Internet users that click on such links to websites promoting products of the Complainant and its competitors which has often been found to be evidence of bad faith for the purposes of paragraph 4(b)(iv) of the Policy: for example: L´Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc., WIPO Case No. D2005-0623 and Lilly ICOS LLC v. P F, WIPO Case No. D2007-0357.
As the circumstances set out in paragraph 4(b)(iv) of the Policy have been found to be present, the Panel is therefore satisfied that the Respondent has registered and used the Disputed Domain Names in bad faith for the purposes of paragraph 4(a)(ii) of 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 domain names <accutane-acne.net>, <buy-xenical.biz> and <buy-xenical-online.biz> be transferred to the Complainant.
Gabriela Kennedy
Sole Panelist
Dated: May 27, 2009