WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Hoffmann-La Roche Inc. v. Fundacion Private Whois

Case No. D2012-0909

1. The Parties

The Complainant is Hoffmann-La Roche Inc. of Nutley, New Jersey, United States of America, represented internally.

The Respondent is Fundacion Private Whois of Panama, Panama.

2. The Domain Name and Registrar

The disputed domain names <accutane-comparison.com> and <qualityaccutanehere.com> (the “Disputed Domain Names”) are registered with Internet.bs Corp. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 30, 2012. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On May 2, 2012, 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 May 4, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 24, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 25, 2012.

The Center appointed Mauricio Jalife Daher as the sole panelist in this matter on July 6, 2012. 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

The Complainant is one of the world’s leading researchers and developers of pharmaceutical and diagnostic products. The Complainant holds a United States trademark registration for the ACCUTANE mark (the “Mark”) for a dermatological preparation, indicated for the treatment and prevention of acne.

The Complainant first used the ACCUTANE mark in 1972 and obtained a trademark registration for the mark from the United States Patent & Trademark Office in 1973. The parent company of the Complainant, F. Hoffmann-La Roche AG, has registered the domain name <accutane.com> and obtained an international trademark registration covering 36 countries for ROACCUTANE mark (European version) in 1979.

The Disputed Domain Names were registered in April of 2012.

The Disputed Domain Names, <qualityaccutanehere.com> and <accutane-comparison.com>, contain the entire ACCUTANE mark of the Complainant.

The Disputed Domain Names appear to be used to offer for sale several pharmaceutical products including Accutane. Nevertheless, the sites do not allow its visitors to buy such pharmaceuticals products, since they are redirected to a parking website, i.e., “www.northamericanpharmacyonline.com”, which contains third parties advertisements with its corresponding links.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the ACCUTANE mark was extensively promoted for many years in print advertisements in medical journals, promotional materials, packaging, medical informational materials, television advertising and direct mailings. The Complainant further contends that sales of the Accutane product in the United States have exceeded hundreds of millions of dollars.

The Complainant further contends that the Disputed Domain Names are confusingly similar to the Complainant’s mark, since both contain the entire ACCUTANE mark, and the use of descriptive terms, i.e., quality, here and comparison, does not avoid confusing similarity.

The Complainant contends that it has not authorized the Respondent to use its trademark ACCUTANE.

The Complainant further contends that the Disputed Domain Names were registered and are being used in bad faith, since at the time of the registrations the Respondent had, no doubt, knowledge of the Complainant’s well-known mark ACCUTANE.

The Complainant contends that when viewing the Internet websites from the Respondent one realizes that the Respondent is intentionally attempting to attract Internet users to a parking website by creating a likelihood of confusion with the Complaint’s well-known mark as to source, affiliation and endorsement.

B. Respondent

The Respondent did not reply to the Complainant’s contentions. Although this Panel is aware that the Respondent is not obliged to participate in a proceeding under the Policy, if it fails to do so, asserted facts may be taken as true and reasonable inferences may be drawn from the information provided by the Complainant. See Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441. See also Microsoft Corporation v. Freak Films Oy, WIPO Case No. D2003-0109.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has provided sufficient evidence showing that it is the owner of the ACCUTANE mark, which is duly registered, as evidenced by the Complainant in an important number of jurisdictions throughout the world.

The Complainant has cited Hoffmann-La Roche Inc. v. Hightech Industries, Andrew Browne, WIPO Case No. D2010-0240 where the panel found that the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to a complainant’s registered mark, which this Panel has determined should also apply in this case.

The Panel finds that the addition of the generic terms “quality”, “here” and “comparison” does not distinguish the Disputed Domain Names from the trademark. The prefix “quality” and the suffix “here” contained in the disputed domain name <qualityacuttanehere.com> are descriptive words related to the high standards of the product (Accutane) offered for sell. The suffix “comparison” contained in the disputed domain name <accutane-comparison.com>, may lead Internet users to understand that they can compare different seller prices of Accutane. Prior UDRP panels have recognized 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); Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 (finding <quixtarmortgage.com> legally identical to QUIXTAR).

Accordingly, the Panel finds that the Disputed Domain Names are confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy requires the Complainant to prove that the Respondent has no right or legitimate interest in the Disputed Domain Names. However, it is the consensus view among panelists that if a complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show one of the three circumstances under paragraph 4(c) of the Policy, then the respondent may lack a legitimate interest in the domain name.

The Complainant showed that the Respondent has neither a license nor any other permission to use the trademark ACCUTANE in which the Complainant has exclusive rights. The Panel thus finds that the Complainant has made a prima facie showing that the Respondent has no rights or legitimate interests in the Disputed Domain Names. The Respondent has not filed a reply to the Complaint and has therefore not provided any evidence of the circumstances specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the Disputed Domain Names.

The Respondent’s use of the Disputed Domain Names to divert Internet users to a parking website in order to advertise products or services unrelated to the Complainant and thus capitalizing on the Complainant’s trademark is not a bona fide use pursuant to paragraph 4(c)(i) of the Policy. Even if the content on the parking website available at the Disputed Domain Name was not developed by the Respondent. See WIPO Lyonnaise de Banque v. Richard J., WIPO Case No. D2006-0142.

Further, nothing in the record suggests that the Respondent is making any legitimate noncommercial use of the Disputed Domain Names or registered the Disputed Domain Names as descriptive, non-source identifying domain names in order to inform about the Complainant’s products or related matters.

Under these circumstances, the Panel takes the view that the Respondent has no rights or legitimate interests in the Disputed Domain Names and that the requirement of paragraph 4(a)(ii) is also satisfied.

C. Registered and Used in Bad Faith

The Complainant has provided sufficient evidence showing that ACCUTANE was already a well-known mark, at the time of registration of the Disputed Domain Names.

The Disputed Domain Names appear to be used to offer for sale several pharmaceutical products including Accutane. Nevertheless, the websites do not allow its visitors to buy such pharmaceuticals products, since they are redirected to a parking website, i.e., “www.northamericanpharmacyonline.com”, which contains third parties advertisements with its corresponding links. These parking websites typically offer domain name holders to earn fees for redirecting Internet users to competing websites and thus capitalizing on the goodwill of the trademark owner.

This qualifies as bad faith under paragraph 4(b)(iv) in that the Respondent’s use of the Disputed Domain Names attempts to attract for commercial gain Internet users to the Respondent’s website 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 website.

Moreover, the Respondent’s default in this proceeding and the fact the Respondent was involved in a various other UDRP proceedings (F. Hoffmann-La Roche AG v. Fundacion Private Whois, WIPO Case No. D2012-0754; BJ Acquisition, LLC v. Fundacion Private Whois, WIPO Case No. D2012-0755; Belstaff S.R.L. v. Fundacion Private Whois, WIPO Case No. D2012-0796; Seiko Holdings Kabushiki Kaisha (trading as Seiko Holdings Corporation) v. Fundaction Private Whois, Domain Administrator, WIPO Case No. D2012-0810; F. Hoffmann-La Roche AG v. Fundacion Private Whois, Domain Administrator, WIPO Case No. D2012-0822; Red Bull GmbH v. Fundacion Private Whois, WIPO Case No. D2012-0842; LEGO Juris A/S v. Howtogetrealmoneyonline.com, WIPO Case No. D2012-0832; Hoffmann-La Roche Inc. v. Fundacion Private Whois, Domain Administrator, WIPO Case No. D2012-0967, Hoffmann-La Roche Inc. v. Fundacion Private Whois, Domain Administrator, WIPO Case No. D2012-0981; Inter-Continental Hotels Corporation v. Fundacion Private Whois Domain Administrator and PPA Media Services; Inter-Continental Hotels Corporation v. Fundacion Private Whois Domain Administrator and PPA Media Services, WIPO Case No. D2012-1095; and Canadian Tire Corporation, Limited v. Private Whois Service / Fundacion Private Whois, WIPO Case No. D2012-1026), in which panes found that the Respondent had registered and used domain names in bad faith, reinforces an inference of bad faith.

The Panel therefore concludes that the Respondent registered and is using the Disputed Domain Names in bad faith and that the requirement of the paragraph 4(a)(iii) of the Policy is satisfied.

7. Decision

For all 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 <accutane-comparison.com> and <qualityaccutanehere.com> be transferred to the Complainant.

Mauricio Jalife Daher
Sole Panelist
Date: July 30, 2012