WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

F. Hoffmann-La Roche AG v. Domain Administrator, See PrivacyGuardian.org / Ponomarenko LTD, Pawlo Ponomarenko

Case No. D2021-2951

1. The Parties

The Complainant is F. Hoffmann-La Roche AG, Switzerland, internally represented.

The Respondent is Domain Administrator, See PrivacyGuardian.org, United States of America (“United States”) / Ponomarenko LTD, Pawlo Ponomarenko, United States.

2. The Domain Name and Registrar

The disputed domain name <accutaneisotretinoine.com> is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 8, 2021. On September 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 8, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 24, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on September 27, 2021.

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 the Respondent of the Complaint, and the proceedings commenced on October 5, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 25, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 11, 2021.

The Center appointed Federica Togo as the sole panelist in this matter on November 22, 2021. 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 the registered owner of several trademarks worldwide consisting and/or containing the term ACCUTANE, e.g. International Registration no. 840371 ACCUTANE (word) registered on December 6, 2004, for “Pharmaceutical products” in class 5. This trademark has been duly renewed and is in force.

It results from the information disclosed by the Registrar that the disputed domain name was registered on May 6, 2021.

Furthermore, the undisputed evidence provided by the Complainant proves that the disputed domain name redirected to an online pharmacy under the domain name <pharmaceptica.com>, allegedly promoting and selling the Complainant’s ACCUTANE drugs, as well as third party competing products of other commercial origin.

Finally, the undisputed evidence provided by the Complainant proves that the Complainant sent a cease and desist letter to the Respondent, who did not reply.

5. Parties’ Contentions

A. Complainant

It results from the Complainant’s undisputed allegations that it is, together with its affiliated companies, one of the world’s leading research-focused healthcare groups in the field of pharmaceuticals (rx) and diagnostics, having global operations in more than 100 countries. The Complainant uses the mark ACCUTANE for designating a prescription drug indicated for the treatment of severe nodular and/or inflammatory acne conglobata or recalcitrant acne.

The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademark, since it incorporates this mark entirely and adds the corresponding international non-proprietary name (INN) of the Complainant’s trademarked drug ACCUTANE, “isotretinoine”.

The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name. According to the Complainant, the Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the Complainant’s mark ACCUTANE. By falsely implying that its pharmaceutical products are related or similar to those of the Complainant, the Respondent is using the disputed domain name with the purpose of trading on the Complainant’s goodwill. According to the Complainant, the disputed domain redirects to an online pharmacy, promoting and selling (among others) ACCUTANE drugs.

Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith. According to the Complainant, there is no doubt that at the time of registration the Respondent had knowledge of the Complainant’s product/mark ACCUTANE. The domain is also being used in bad faith. This is obvious since when viewing the Internet-website to which the disputed domain name resolves, one realizes that the Respondent is intentionally attempting to attract (for commercial purpose) Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s well-known mark as to the source, affiliation and endorsement of the Respondent’s website. The Respondent may generate unjustified revenues and is therefore illegitimately capitalizing on the Complainant’s ACCUTANE trademark.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 4(a) of the Policy requires a complainant to prove each of the following three elements in order to obtain an order that the disputed domain name be transferred or cancelled:

(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 will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied.

A. Identical or Confusingly Similar

Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must establish rights in a trademark or service mark and secondly establish that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.

UDRP panels have found that a disputed domain name is confusingly similar to a complainant’s trademark where the disputed domain name incorporates the complainant’s trademark in its entirety (e.g., Compagnie Générale des Etablissements Michelin v. Milen Radumilo, WIPO Case No. DCO2020-0090; LEGO Juris A/S v. ken Teo, WIPO Case No. D2020-2380; Sanofi v. WhoisGuard Protected, WhoisGuard, Inc. / Todd Peter, WIPO Case No. D2020-2060; Virgin Enterprises Limited v. Domains By Proxy LLC, Domainsbyproxy.com / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-1923; F. Hoffmann-La Roche AG v. Jason Barnes, ecnopt, WIPO Case No. D2015-1305; Compagnie Générale des Etablissements Michelin v. Christian Viola, WIPO Case No. D2012-2102; Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack, WIPO Case No. D2015-0070; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies, WIPO Case No. D2015-0812; Rhino Entertainment Company v. DomainSource.com, Inc., WIPO Case No. D2006-0968; SurePayroll, Inc. v. Texas International Property Associates, WIPO Case No. D2007-0464; and Patagonia, Inc. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-1409). This Panel shares this view and notes that the Complainant’s registered trademark ACCUTANE is fully included in the disputed domain name, followed by the term “isotretinoine”. Furthermore, it is the view of this Panel that the addition of the term “isotretinoine” in the disputed domain name cannot prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark since the Complainant’s trademark is clearly recognizable in the disputed domain name.

Finally, the generic Top-Level Domain “.com” of the disputed domain name may be disregarded under the first element confusing similarity test (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 1.11.1).

In the light of the above, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must secondly establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests to the disputed domain name. In the Panel’s view, based on the undisputed allegations stated above, the Complainant has made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that the Respondent lacks rights or legitimate interests in the disputed domain name.

According to the Complaint, the Complainant has not authorized the Respondent’s use of the trademark ACCUTANE, e.g.,by registering the disputed domain name comprising said trademark entirely.

Furthermore, the Panel notes that there is no evidence showing that the Respondent might be commonly known by the disputed domain name in the sense of paragraph 4(c)(ii) of the Policy.

Finally, it results from the Complainant’s non-contested evidence that the disputed domain name redirected to a website on which both the Complainant’s ACCUTANE goods and competing goods are sold. Since this use is clearly commercial, it cannot be considered a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue pursuant to paragraph 4(c)(iii) of the Policy. Prior panels have held that a respondent’s use of a complainant’s mark to redirect users (e.g., to a competing site) would not support a claim to rights or legitimate interests (WIPO Overview 3.0 at section 2.5.3). Similarly, the disputed domain name is composed of the Complainant’s mark and the INN “isotretinoine”, descriptive of the Complainant’s trademarked drug ACCUTANE, and as such the construction of the disputed domain name carries a risk of implied affiliation that cannot constitute fair use (WIPO Overview 3.0 at section 2.5.1).

It is acknowledged that once the Panel finds such prima facie case is made, the burden of production shifts to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. Since the Respondent failed to come forward with any allegations or evidence, this Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant is therefore deemed to have satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

According to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith. One of these circumstances is that the Respondent by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location (paragraph 4(b)(iv) of the Policy).

It is the view of this Panel that these circumstances are met in the case at hand.

It results from the Complainant’s documented allegations that the disputed domain name redirected to a website on which both the Complainant’s ACCUTANE goods and competing goods are sold. For the Panel, it is therefore evident that the Respondent positively knew the Complainant’s mark. This finding is reinforced given the use of the INN “isotretinoine” in combination with the Complainant’s trademarked drug ACCUTANE in the construction of the disputed domain name. Consequently, and in the absence of any evidence to the contrary, the Panel is convinced that the Respondent also knew that the disputed domain name included the Complainant’s trademark when it registered the disputed domain name. Registration of the disputed domain name which contains a third party’s mark, in awareness of said mark and in the absence of rights or legitimate interests amounts to registration in bad faith (see e.g., F. Hoffmann-La Roche AG v. Jatin Jani, Expired Domains LLC, WIPO Case No. D2019-0344; KOC Holding A.S. v. VistaPrint Technologies Ltd, WIPO Case No. D2015-1910; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies, WIPO Case No. D2015-0812; The Chancellor, Masters and Scholars of the University of Oxford v. Almutasem Alshaikhissa, WIPO Case No. D2014-2100; and Deutsche Lufthansa AG v. Mustermann Max, Muster AG, WIPO Case No. D2015-1320).

The finding of bad faith registration and use is supported by the further circumstances resulting from the case at hand which are (i) the Respondent’s failure to submit a response; (ii) its failure to provide any evidence of actual or contemplated good-faith use; (iii) the implausibility of any good faith use to which the domain name may be put; and (iv) the Respondent concealing its identity behind a privacy shield.

In the light of the above the Panel finds that the disputed domain name has been registered and is being used in bad faith pursuant to paragraph 4(a)(iii) of the Policy.

7. Decision

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, <accutaneisotretinoine.com>, be transferred to the Complainant.

Federica Togo
Sole Panelist
Date: December 6, 2021