The Complainant is Hoffmann-La Roche Inc. of Nutley, New Jersey, United States of America, represented internally.
The Respondent is Samuil S Chesnokov of Grudziądz, Poland.
The disputed domain name <buy1accutane.com> is registered with Todaynic.com, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 22, 2013. On April 22, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 23, 2013, the Registrar 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 25, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 15, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 16, 2013.
The Center appointed Keita Sato as the sole panelist in this matter on May 30, 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.
The Complainant, Hoffman-La Roche, is a company located in New Jersey, United States of America, and engaged in research and development of pharmaceutical and diagnostic products with its affiliated companies especially companies with the Roche Group.
The Complainant owns a registered United States trademark for ACCUTANE in class 18, registered on August 28, 1973 at the United States Patent and Trademark Office (USPTO) (Registration Number 0966924). The registration was renewed on May 17, 2003. The registration will be kept until 2023. All the facts above relating to the Complainant’s trademark are certified by the USPTO.
The Respondent, Samuil S Chesnokov, is a person whose address is in Poland according to the WhoIs record.
The disputed domain name was registered on April 1, 2013.
The Complainant states that the three requirements which are set under paragraph 4(a) of the Policy are met.
First, the Complainant contends that the disputed domain name is confusingly similar to the trademark registered by the Complainant before its registration date. The disputed domain name <buy1accutane.com> incorporates the Complainant’s trademark ACCUTANE in its entirety, together with addition of the term “buy” and the number “1” as a prefix to the ACCUTANE mark.
Secondly, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The reasons which the Complainant pointed out are; the Complainant has exclusive rights for ACCUTANE and no license/permission/authorization was granted to use the trademark ACCUTANE in the disputed domain name. The Respondent is using the disputed domain name to direct Internet users to a pharmacy on-line offering “Generic Accutane (Isotretinoin)” and other drugs.
Thirdly, the Complainant contends that the disputed domain name was registered and is being used in bad faith for two reasons. According to the Complainant, the disputed domain name was registered in bad faith, since, at the time of the registration, the Respondent had knowledge of the Complainant’s product/mark ACCUTANE. And the disputed domain name is also used in bad faith, since the Respondent’s website is intentionally attempting to attract Internet users to the Respondent’s website which sells generic Accutane product by creating a likelihood of confusion with the Complainant’s mark as to the source, affiliation and endorsement of the Respondent’s website.
Based on these reasons, the Complainant requests transfer of the disputed domain name as a remedy of this dispute.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Respondent provided no Response, and the deadline for so doing expired on May 15, 2013. Accordingly, the Respondent is in default. Taking into consideration the Respondent's default, the Panel can infer that the Complainant's allegations are true where appropriate to do so. Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. Nonetheless, the Complainant retains the burden of proving the three requisite elements of paragraph 4(a) of the Policy.
The Complainant has provided sufficient evidence showing that it is the owner of the ACCUTANE mark. The disputed domain name and the Complainant's trademark are not identical. However, the second-level portion of the disputed domain name and the mark ACCUTANE are confusingly similar. The reasons are:
The Complainant has proved that the trademark ACCUTANE was registered at the USPTO and still kept, as explained in Section 4 above. Moreover, prior UDRP panel decisions have suggested that the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark. AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758 (finding <attelephone.com> confusingly similar to ATT). This kind of finding could also be applied to “prefix plus trademark entirety” because a prefix is not weighed (almost omitted) when people find “confusingly similarity” between a disputed domain name and a complainant’s trademark. In this sense, the addition of the combined terms “buy” and number “1” as prefix to the ACCUTANE mark does not mitigate the confusing similarity between the disputed domain name and the Complainant's trademark. The prefix “buy” is an ordinary descriptive word which is related to the trademark ACCUTANE since the website linked with the disputed domain name is a website that offers for sale a generic version of the Complainant’s product and other drugs (Annex 7 to the Complaint). Adding the prefix “buy” to the mark does nothing to dispel and serves only to reinforce the connection in the public mind between the word “accutane” and the Complainant, and therefore increases the risk of confusion. Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti, WIPO Case No. D2005-0037 (finding <buylantus.com> confusingly similar to LANTUS). Also, the addition of the prefix “1” to the mark should not be recognized as a distinguishable element. The addition of a certain number as a prefix to a mark adds no distinctive value, Lilly ICOS LLC v. Tudor Burden d/b/a BM Marketing/Burden Marketing, WIPO Case No. D2005-0313 (finding <1genericcialis.com>, <2-buycialis.com>, <247-cialis.com>, <4genericcialis.com>, and other domain names confusingly similar to CIALIS). Also, as the Complainant suggested, a prior UDRP panel stated “There are several UDRP decisions stating that confusing similarity, for the purpose of the Policy, is established when a domain name wholly incorporates a complainant’s mark and only adds a generic word along with, in this case, the letter “a” or the number “1”” (F. Hoffman-La Roche AG v. Bobik Marley, WIPO Case No. D2007-0694).
This Panel also follows such prior UDRP panel’s findings.
For all of these reasons, the Panel finds that the disputed domain name <buy1accutane.com> is confusingly similar to the Complainant's ACCUTANE mark, in which the Complainant has established rights. Therefore, the Panel finds that the first element of the Policy is made out.
The Respondent linked the disputed domain name with a website that offers for sale a generic version of the Complainant’s products and other third party drugs. However, the Complainant asserts that no license/permission/authorization has been granted to use ACCUTANE in the disputed domain name.
The UDRP panel in Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784 stated, “several cases have found that a registrant has no legitimate interest in a domain name that is similar to a pharmaceutical manufacturer’s mark and that is being used to direct consumers to an on-line pharmacy. In Pfizer, Inc. v. Seocho and Vladimir Snezko, WIPO Case No. D2001-1199 a case nearly identical to this one, the panel found that the registrant had no legitimate interest in the domain name where, as here, the registrant was using the domain name <wwwpfizer.com> to redirect Internet users to an on-line pharmacy. In AVENTIS Pharma S.A. and Merrell Pharmaceuticals Inc. v. Rx USA, WIPO Case No. D2002-0290, the respondent registered another pharmaceutical manufacturer’s well-known trademark as a domain name and redirected traffic to an on-line pharmacy. The panel found the respondent had no legitimate interests in the domain name because selling the complainant’s goods on the respondent’s site “does not give [respondent] the right to register and use the mark as a domain name without the consent of the holders of the trademarks.” [Emphasis added]”. One of the reasons of such findings of these UDRP panels could be the nature of the product sold on the website at the domain name in dispute. In many countries, selling drugs is regulated because of the product’s nature and the risk to people’s health. In this Panel’s view, under these circumstances, “rights or legitimate interests” should not be easily proven without the trademark holder’s consent to use its trademark in a domain name, especially in the pharmaceutical product field, unless the respondent submits strong evidence such as permission by a pharmaceutical manufacturer’s company, or by governmental permission, etc.
Based on the above, in this dispute, filing no Response and the Respondent not having invoked any of the circumstances of paragraph 4(c) of the Policy to support the existence of its rights or legitimate interests in use of the disputed domain name, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds that the second element of the Policy is also made out.
First, the disputed domain name was registered in bad faith since the Respondent clearly had knowledge of the Complainant’s trademark ACCUTANE at the time of registration of the disputed domain name. Because the website, linked with the disputed domain name, is to offer for sale a generic version of the Complainant’s products relating to the ACCUTANE mark and other third party drugs (Annex 7 to the Complaint), the Respondent had no justification to register the disputed domain name without permission from the trademark owner, unless it had submitted supporting evidence. But the Respondent failed to do so.
Second, the disputed domain name is also being used in bad faith. Because, by using the disputed domain name for an on-line pharmacy, the Respondent is intentionally misleading the consumers and confusing them to believe that the websites behind those links are associated or recommended by the Complainant. This meets paragraph 4(b) (iv) of the Policy, which is evidence of bad faith registration and use.
Accordingly, the Panel finds that the third element of the Policy is made out.
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 <buy1accutane.com> be transferred to the Complainant.
Keita Sato
Sole Panelist
Date: June 11, 2013