The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, internally-represented.
The Respondent is Mihail S Lebedev of Moscow, Russian Federation.
The disputed domain name <buyaccutaneonlinerx.org> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 18, 2017. On July 18, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 19, 2017, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 21, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 10, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 15, 2017.
The Center appointed Edoardo Fano as the sole panelist in this matter on August 23, 2017. 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 Panel has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the Parties.
Having reviewed the communication records in the case file provided by the Center, the Panel finds that the Center has discharged its responsibility under the Rules, paragraph 2(a), “to employ reasonably available means calculated to achieve actual notice to Respondent”. Therefore, the Panel shall issue its Decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of a response from the Respondent.
The language of the proceeding is English, being the language of the Registration Agreement, as per paragraph 11(a) of the Rules.
The Complainant is F. Hoffmann-La Roche AG, together with its affiliated companies a world leader in the fields of pharmaceuticals and diagnostics operating in more than 100 countries.
The Complainant and its affiliated companies own several registrations for the trademarks ACCUTANE, ROACCUTAN and ROACCUTANE in relation to a drug indicated for the treatment of acne, among which:
- International Trademark Registration No. 840371 ACCUTANE, registered on December 6, 2004;
- International Trademark Registration No. R450092 ROACCUTAN, registered on December 13, 1979 and duly renewed;
- United Kingdom of Great Britian and Northern Ireland Trademark Registration No. 1119969 ROACCUTANE, registered on September 3, 1979.
The Complainant provided evidence in support of the above.
The disputed domain name <buyaccutaneonlinerx.org> was registered on June 14, 2017. At the time of filing the Complaint, the website at the disputed domain name was an online pharmacy offering Accutane products for sale as well as other medical products.
On July 7, 2017 the Complainant sent a warning letter by mail to the Respondent and received no reply from the Respondent.
The Complainant states that the disputed domain name <buyaccutaneonlinerx.org> is confusingly similar to its trademark ACCUTANE, as the words “buy” and “online” and the letters “rx” are not sufficient to differentiate the disputed domain name from the Complainant’s trademark.
Moreover, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name since it has not been authorized by the Complainant to register the disputed domain name or to use its trademark within the disputed domain name, nor is the Respondent commonly known by the disputed domain name, nor is the Respondent making neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name.
The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith because it resolves to a website of an online pharmacy also selling pharmaceutical products of the Complainant’s competitors.
The Respondent has made no reply to the Complainant’s contentions and is in default. In reference to paragraphs 5(e) and 14 of the Rules, no exceptional circumstances explaining the default have been put forward or are apparent from the record.
A respondent is not obliged to participate in a proceeding under the Policy, but if it fails to do so, reasonable facts asserted by a complainant may be taken as true, and appropriate inferences, in accordance with paragraph 14(b) of the Rules, may be drawn (see, e.g., Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441; Microsoft Corporation v. Freak Films Oy, WIPO Case No. D2003-0109; SSL INTERNATIONAL PLC v. MARK FREEMAN, WIPO Case No. D2000-1080; ALTAVISTA COMPANY v. GRANDTOTAL FINANCES LIMITED et. al., WIPO Case No. D2000-0848; Confédération Nationale du Crédit Mutuel, Caisse Fédérale du Crédit Mutuel Nord Europe v. Marketing Total S.A., WIPO Case No. D2007-0288.
Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed:
(i) the disputed domain name is 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 name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Panel finds that the Complainant is the owner of the trademark ACCUTANE, both by registration and acquired reputation and that the disputed domain name <buyaccutaneonlinerx.org> is confusingly similar to the trademarks ACCUTANE, as the addition of the words “buy” and “online” as well as the letters “rx” is not sufficient to distinguish the disputed domain name from the Complainant’s trademark.
It is also well accepted that a generic Top-Level Domain (“gTLD”) suffix, in this case “.org”, may be ignored when assessing the similarity between a trademark and a domain name (see, e.g., VAT Holding AG v. Vat.com, WIPO Case No. D2000-0607).
The Panel finds that the Complainant has therefore met its burden of proving that the disputed domain name is confusingly similar to the Complainant’s trademark, pursuant to the Policy, paragraph 4(a)(i).
The Respondent has failed to file a response in accordance with the Rules, paragraph 5.
The Complainant in its Complaint and as set out above has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. It asserts that the Respondent is not using the disputed domain name for a legitimate noncommercial or fair use or in connection with a bona fide offering of goods or services.
The prima facie case presented by the Complainant is enough to shift the burden of production to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name. However, the Respondent has not presented any evidence of any rights or legitimate interests it may have in the disputed domain name, and the Panel is unable to establish any such rights or legitimate interests on the basis of the evidence in front of it.
Notably, the offering of the Complainant’s products alongside those of its competitors on the website at the disputed domain name is not of a manner to give rise to any rights or legitimate interests in the disputed domain name within the meaning of paragraph 4(c)(i) of the Policy.
The Panel therefore finds that paragraph 4(a)(ii) of the Policy has been satisfied.
Paragraph 4(b) of the Policy provides that “for the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that [the respondent has] registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) that [the 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 [the respondent has] engaged in a pattern of such conduct; or
(iii) that [the 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, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] web site or location.”
As regards to the registration in bad faith of the disputed domain name, the existence of the Complainant’s trademark ACCUTANE was certainly known by the Respondent since the content of the website to which the disputed domain name resolves consists of selling pharmaceuticals products, that is the same products as the Complainant.
The Panel further notes that, the disputed domain name is also used in bad faith since in the relevant website there is an online pharmacy selling pharmaceutical products (including products of the Complainant’s competitors) and the Respondent is therefore knowingly taking advantage from user confusion.
The above suggests to the Panel that the Respondent intentionally registered and is using the disputed domain name in order to attract, for commercial gain, Internet users to its website in accordance with paragraph 4(b)(iv) of the Policy.
The Panel finds that the Complainant has presented evidence to satisfy its burden of proof with respect to the issue of whether the Respondent has registered and is using the disputed domain name in bad faith.
The Panel therefore finds that paragraph 4(a)(iii) of the Policy has been satisfied.
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 <buyaccutaneonlinerx.org> be transferred to the Complainant.
Edoardo Fano
Sole Panelist
Date: August 27, 2017