F. Hoffmann-La Roche AG v. Whoisguard Protected, Whoisguard, Inc. / Uygar Ozen
Case No. D2014-1355
1. The Parties
The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally.
The Respondent is Whoisguard Protected, Whoisguard, Inc. of Panama, Panama, / Uygar Ozen of Istanbul, Turkey.
2. The Domain Name and Registrar
The disputed domain name is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 11, 2014. On August 11, 2014, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On August 12, 2014, eNom transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name that differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 18, 2014, 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 August 18, 2014.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 21, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 8, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 9, 2014.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on September 24, 2014. 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 manufacturer or supplier of a drug combination trademarked variously as ROACCUTAN, ROACCUTANE and ACCUTANE in different markets. The formulation may be indicated for the treatment of acne including the severer forms.
The Complainant or its subsidiaries hold a number of trademarks internationally of which the following are representative:
ROACCUTAN, International Office of the World Intellectual Property Organization, registration number 450092, registration date December 13, 1979, class 5;
ROACCUTANE, Intellectual Property Office, United Kingdom of Great Britain and Northern Ireland, registration number 1119969, registration date September 3, 1979, class 5;
ACCUTANE, United States Patent and Trademark Office principal register, registration number 72443249, registration date August 28, 1973.
Nothing is known about the Respondent except for such information as was provided to the Registrar in order to register the disputed domain name, which appears to have been created on July 25, 2014.
5. Parties’ Contentions
The Complainant contends that it has rights in the trademarks ROACCUTAN, ROACCUTANE and ACCUTANE as listed in section 4 above and has produced evidence in the form of copies of online registration records.
The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademark ROACCUTANE and that the disputed domain name incorporates that trademark in its entirety. It is contended that the generic term “buy” does not sufficiently distinguish the disputed domain name from the Complainant’s trademark.
The Respondent further contends that the Respondent does not have rights or legitimate interests in respect of the disputed domain name. The Complainant says that it has exclusive rights in its trademark and has not authorised the Respondent to use the Complainant’s trademark in any way. The Complainant says that the disputed domain name is in use by the Respondent in order to capitalise on the Complainant’s trademark for commercial purposes and not for any fair or noncommercial purpose.
The Complainant further contends that the disputed domain name was registered and is being used by the Respondent in bad faith. At the time the disputed domain name was registered on July 25, 2014, the Respondent must have had knowledge of the Complainant’s product and trademark ROACCUTANE. The disputed domain name resolves to a website comprising an online pharmacy that sells the Complainant’s products and third party products. The Complainant says the Respondent intends Internet visitors to be confused into believing that the Respondent’s website is endorsed by the Complainant.
The Complainant has cited certain previous decisions made under the Policy that the Panel is invited to consider as supporting the Complainant’s position.
The Complainant requests the transfer to itself of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable provider, in compliance with the Rules, that:
“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
The Panel is satisfied that the Center has fulfilled its obligations to attempt to contact the Respondent in service of the Complaint in accordance with paragraph 2 of the Rules.
A. Identical or Confusingly Similar
The Complainant’s registered trademarks are ROACCUTAN, ROACCUTANE and ACCUTANE, and the disputed domain name is . The generic Top-Level Domain (gTLD) designation of the disputed domain name, in this instance “.org”, may generally be disregarded in the consideration of confusing similarity under the Policy. What remains is the entirety of the Complainant’s trademark ROACCUTANE preceded by the generic word “buy”. The Panel does not find the generic word “buy” to be distinguishing and accordingly finds the disputed domain name to be confusingly similar to the Complainant’s trademark ROACCUTANE.
Taking into account the distinctive and apparently invented nature of the trademarks ROACCUTAN and ACCUTANE by which the Complainant’s product is also known, with the component “ro” being reasonably assumed to derive from the key word “Roche” in the Complainant’s name, the Panel further finds the disputed domain name to incorporate and to be confusingly similar to the Complainant’s trademarks ROACCUTAN and ACCUTANE.
B. Rights or Legitimate Interests
The Complainant has asserted prima facie that it has not licensed or in any way authorised the Respondent to use the Complainant’s trademark.
Paragraph 4(c) of the Policy provides for the Respondent to counter the Complainant’s assertion and to establish rights or legitimate interests in a disputed domain name by demonstrating:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The above circumstances are without limitation and the Respondent may seek to establish rights or legitimate interests in any other way satisfactory to the Panel.
Screen shots of the website of the disputed domain name reveal variously the title line “MyLife-Healthier, Online Pharmacy for Accutane”, and the banner “BUY ONLINE MEDICATION (Accutane) WITHOUT PRESCRIPTION!” The website contains text with headings including “About ACCUTANE”, “Accutane or Roaccutane?”, “Genuine or Generic?” and “Dosage, 10mgs or 20mgs?”. Pricing and payment details are provided.
The Panel finds there to have been an offering of goods for sale that cannot be legitimate since, according to the evidence, the disputed domain name and its corresponding website make use of the Complainant’s trademarks without authority to do so. There is no evidence that the Respondent has been commonly known as an individual or as a business by a name similar to the disputed domain name. The use of the disputed domain name is demonstrably for the sale of medications and clearly is not noncommercial. The Panel cannot conceive of any circumstances in which the Respondent might have rights or legitimate interests in the disputed domain name and the Respondent has offered none. Accordingly the Panel finds for the Complainant under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered in bad faith and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent:
“(i) circumstances indicating that you have registered or you have 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 that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The provisions of paragraph 4(b) of the Policy are without limitation and bad faith may be found otherwise by the Panel.
The Respondent’s website, to which the disputed domain name resolves, describes itself as an “online pharmacy for Accutane”, and as a website where visitors may “buy online medication (Accutane)”. On account of these pronouncements by the Respondent, the commercial purpose of the website is found not to be in doubt. In order to do business as an online pharmacy, however, and in order to sell Accutane, the Respondent must of necessity attract the interest of Internet users.
The disputed domain name embodies the Complainant’s trademarks ROACCUTAN, ROACCUTANE and ACCUTANE. According to the screen shot produced in evidence, under the heading “Accutane or Roaccutane?”, the Respondent’s website states: “Roaccutane and Accutane are both the brand names of “Isotretinoin” produced by Roche”. Under the heading “Genuine or Generic?” the Respondent’s website states “We encourage our customers to buy genuine Accutane/Roaccutane manufacture by Roche”. The Respondent has demonstrated unequivocally its awareness that Accutane and Roaccutane are the Complainant’s brand names and, having regard to all the evidence, the Panel does not find it within reasonable contemplation that the Respondent was unaware of the long-standing trademark status of those brand names.
Within the meaning of paragraph 4(b)(iv) of the Policy, the Respondent is found to have used the disputed domain name with the intention of attracting Internet visitors for the commercial purpose of selling medications, and to have incorporated the Complainant’s trademark into the disputed domain name in order to confuse visitors into believing erroneously, at least initially, that the website or its products have the endorsement of the Complainant. The Panel finds the disputed domain name to have been used in bad faith, and on the totality of the evidence and on the balance of probabilities, further finds the disputed domain name to have been registered for the bad faith purpose for which it has been used.
Accordingly the Panel finds the disputed domain name to have been registered and used in bad faith in the terms of paragraph 4(a)(iii) of the Policy.
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 be transferred to the Complainant.
Dr. Clive N.A. Trotman
Date: October 8, 2014