WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Hoffmann-La Roche Inc. v. Private Registration

Case No. D2012-2463

1. The Parties

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

Respondent is Private Registration of Nanjing, Jiangsu, China.

2. The Domain Name and Registrar

The disputed domain name <accutaneonlinepharmacy.com> is registered with Nanjing Imperiosus Technology Co. Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on December 14, 2012. On December 14, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 17, 2012, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On December 17, 2012, the Center transmitted an email communications to the parties in both Chinese and English regarding the language of the proceeding. On December 18, 2012, Complainant requested that English be the language of the proceeding. Respondent did not comment on the language of the proceeding by the specified due date.

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 Respondent of the Complaint, and the proceedings commenced on December 27, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 16, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 17, 2013.

The Center appointed Yijun Tian as the sole panelist in this matter on January 24, 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.

4. Factual Background

Complainant is Hoffmann-La Roche Inc., a company incorporated in Nutley, New Jersy, United States of America (USA). Complainant is, together with its affiliated companies, engaged in research and development of pharmaceutical and diagnostic products. It is a member of the Roche Group, one of the world’s leading research-focused healthcare groups and having global operations in more than 100 countries.

Complainant has exclusive rights in the ACCUTANE marks. Complainant is an exclusive owner of famous and well-known registered trademarks ACCUTANE globally (since at least 1979; see Annex 4 to the Complaint), including the USA (since at least 1973; see Annex 3 to the Complaint). It also owns the domain name registrations, such as <accutane.com>, incorporating the ACCUTANE mark.

Respondent is Private Registration of Nanjing, Jiangsu, China. The disputed domain name <accutaneonlinepharmacy.com> was registered on November 15, 2012, long after the ACCUTANE marks were registered (Annex 3 to the Complaint).

5. Parties’ Contentions

A. Complainant

(a) The disputed domain name is identical or confusingly similar to various trademark registrations in which Complainant has rights.

Complainant is an exclusive owner of famous registered trademarks ACCUTANE globally (since 1979; see Annex 4 to the Complaint), including the USA (since at least 1973).

ACCUTANE is an alternative trademark (USA version) for the trademark ROACCUTAN, which is protected in a multitude of countries worldwide (since at least 1979, see Annex 4 to the Complaint).

The mark ACCUTANE designates a dermatological preparation in the form of a product indicated for the treatment and prevention of acne. This mark was extensively promoted for many years in print advertisements. The sales of the Accutane product in the USA have exceeded hundreds of millions of dollars.

The disputed domain name <accutaneonlinepharmacy.com> incorporates Complainant’s trademark ACCUTANE in its entirety. Previous UDRP panels held that “the addition of English words as “online”; “pharmacy” (..) to the mark (..) do not provide additional specification or sufficient distinction from Complainant or its trademark (..).”

Complainant’s use and registration of the mark ACCUTANE do predate the Respondent’s registration of the disputed domain name.

(b) Respondent has no rights or legitimate interests in respect of the disputed domain name.

Complainant has exclusive rights for ACCUTANE, and no Licence/permission/authorization respectively consent was granted to use ACCUTANE in the disputed domain name.

Respondent uses the disputed domain name for “commercial gain” and with the purpose of capitalizing on the fame of Complainant’s mark ACCUTANE. The disputed domain name in question clearly alludes to Complainant.

Respondent is using the disputed domain name to redirect Internet users to a pharmacy on-line (“www.tabletspharmacy.org”) offering “Generic Accutane” as well as other drugs. (Annex 6 to the Complaint).

There is no reason why Respondent should have any right or interest in the disputed domain name.

(c) The disputed domain name was registered and is being used in bad faith.

The disputed domain name was registered in bad faith since at the time of the registration (on November 15, 2012), Respondent had, no doubt, knowledge of Complainant’s well-known product/mark ACCUTANE.

The disputed domain name is also being used in bad faith. The Internet-website from Respondent (see Annex 6 to the Complaint) shows that Respondent is intentionally attempting (for commercial purpose) to attract Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s well-known mark as to the source, affiliation and endorsement of Respondent’s website.

Previous UDRP panel held that bad faith is established when “Respondent is using the domain names as a forwarding address to a for-profit on-line pharmacy” (Annex 9 to the Compliant).

Respondent, by using the disputed domain name, is intentionally misleading the consumers and confusing them by making them believe that the websites behind those links are associated or recommended by Complainant.

As a result, Respondent may generate unjustified revenues and therefore is illegitimately capitalizing on the ACCUTANE trademark fame.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

6.1. Language of the Proceeding

The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented on the record, no agreement appears to have been entered into between Complainant and Respondent to the effect that the language of the proceeding should be English. Complainant filed initially its Complaint in English, and has requested that English be the language of the proceeding for the following reasons:

(a) Complainant has upon submission of the subject Complaint on December 14, 2012 pointed out to Annex 2 i.e. a printout of Registrar’s Nanjing Imperiosus Technology Co. Ltd.’s Registration Agreement. Aforementioned information is in English language.

(b) Complainant sent a notice of objection/cease and desist letter to Respondent with a copy to the Registrar in English language on December 6, 2012. Respondent and/or Registrar has not indicated that the aforesaid letter is not comprehensible and should be resent in the Chinese language.

(c) The contents of the current website resolved by the disputed domain name are completely in English language (Annex 6 to the Complaint).

(d) In the recent UDRP decision, TheCoca-Cola Company v. Private Registration, WIPO Case D2012-1414 where the disputed domain name was registered with identical Chinese Registrar Nanjing Imperiousus Technology Co. Ltd, the corresponding UDRP decision was issued in English language (Annex B of Complainant’s language request).

Respondent did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding.

Paragraph 11(a) allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593). The language finally decided by the Panel for the proceedings should not be prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case. (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) further states:

“in certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement”. (WIPO Overview 2.0, paragraph 4.3; see also L’Oreal S.A. v. MUNHYUNJA,WIPO Case No. D2003-0585).

The Panel has taken into consideration the facts that Complainant is a company from the USA, and Complainant will be spared the burden of working in Chinese as the language of the proceeding. The Panel has also taken into consideration the facts that the website at the disputed domain name is in English and that the disputed domain name includes Latin characters “accutane” and English words “online” and “pharmacy” (Compagnie Gervais Danone v. Xiaole Zhang, WIPO Case No. D2008-1047).

On the record, the Panel finds persuasive evidence in the present proceeding to suggest that Respondent has sufficient knowledge of English. In particular, the Panel notes that, based on the evidence provided by Complainant, (a) the disputed domain name <accutaneonlinepharmacy.com> is registered in Latin characters and particularly in English language, rather than Chinese script; (b) the website at the disputed domain name is an English-based website and Respondent is apparently doing business in English through this website (Annex 6 to the Complaint); (c) the website appears to have been directed to users worldwide (particularly English speakers) rather than Chinese speakers; (d) the Center has notified Respondent of the proceedings in both Chinese and English, and Respondent has indicated no objection to Complainant’s request that English be the language of the proceeding; (e) the Center informed Respondent that it would accept a Response in either English or Chinese.

Considering these circumstances, the Panel finds the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding, and the decision will be rendered in English.

6.2. Discussion and Findings

Paragraph 4(a) of the Policy requires that 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 registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) 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.

On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy, (paragraphs 4(a), (b), (c)), the Panel concludes as follows:

A. Identical or Confusingly Similar

The Panel finds that Complainant has rights in the ACCUTANE marks acquired through registration. The ACCUTANE marks have been registered worldwide including in the USA. Complainant has been known as a company, which engaged in research and development of pharmaceutical and diagnostic products, and a member of the Roche Group - one of the world’s leading research-focused healthcare groups and having global operations in more than 100 countries.

The disputed domain name <accutaneonlinepharmacy.com> comprises the ACCUTANE mark in its entirety. The disputed domain name only differs from Complainant’s trademark by the addition of the words “online” and “pharmacy” to the mark ACCUTANE. This does not seem to eliminate the identity or at least the similarity between Complainant’s registered trademark and the disputed domain name.

Previous UDRP panels have consistently held that a domain name may be identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).

Generally a respondent “may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it”. (The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610; General Electric Company v. CPIC NET and Hussain Syed,WIPO Case No. D2001-0087; PCCW-HKTDataCom Services Limited v. Yingke, ADNDRC Case No. HK0500065).

The mere addition of the descriptive terms “online” and “pharmacy” as suffixes to Complainant’s mark fails to distinguish to this Panel the disputed domain name from Complainant’s trademark. By contrast, it may increase the likelihood of confusion. One of common meanings of the term “pharmacy” is a store that sells pharmaceutical goods. Complainant is a leading company, which engaged in research and development of pharmaceutical and diagnostic products. Internet users who visit ”www.accutaneonlinepharmacy.com” are likely to be confused and may falsely believe that “www.accutaneonlinepharmacy.com” is an online shop operated by Complainant for selling Accutane branded products. Thus, the Panel finds that the additions are not sufficient to negate the confusing similarity between the disputed domain name and the ACCUTANE marks.

The Panel therefore holds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the disputed domain name:

(i) use of, or preparations to use, the disputed domain name in connection with a bona fide offering of goods or services;

(ii) the fact that Respondent has commonly been known by the disputed domain name; or

(iii) legitimate noncommercial or fair use of the disputed domain name.

The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden shifts to the respondent to rebut the complainant’s contentions. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai, WIPO Case No. D2008-0441; WIPO Overview 2.0, paragraph 2.1 and cases cited therein).

Complainant has rights in the ACCUTANE marks globally (since at least 1979), including registration in the USA (since at least 1973) (see Annexes 3 and 4 to the Complaint) which long precedes Respondent’s registration of the disputed domain name (November 15, 2012).

According to Complainant, ACCUTANE is a well-known international brand, and it designates a dermatological preparation in the form of a product indicated for the treatment and prevention of acne. The ACCUTANE mark was extensively promoted for many years, and the sales of the Accutane product in the USA have exceeded hundreds of millions of dollars.

Moreover, Respondent is not an authorized dealer of Accutane branded products. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden to Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name:

(a) There has been no evidence adduced to show that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the word “accutane” in its business operation or the use of the ACCUTANE marks and design on its website (without disclaimer or other clarifying details). There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the ACCUTANE marks or to apply for or use any domain name incorporating the ACCUTANE marks.

(b) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain name. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain name. Respondent registered the disputed domain name <accutaneonlinepharmacy.com> on November 15, 2012. The disputed domain name is identical or confusingly similar to Complainant’s ACCUTANE marks.

(c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. By contrast, according to the information provided by Complainant, Respondent was in actuality advertising, offering and selling purported Accutane and other products at or through the website resolved by the disputed domain name <accutaneonlinepharmacy.com> (Annex 6 to the Complaint).

The Panel finds that Respondent has failed to produce any evidence to establish its rights or legitimate interests in the disputed domain name. The Panel therefore holds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:

(i) circumstances indicating that Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registrations to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or

(ii) Respondent has registered the disputed 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 Respondent has engaged in a pattern of such conduct; or

(iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites or location or of a product or service on Respondent’s website or location.

The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondent has registered and used the disputed domain name in bad faith.

a) Registered in Bad Faith

The Panel finds that Complainant has a widespread reputation in the ACCUTANE marks with regard to its products. Complainant has registered its ACCUTANE marks internationally, including registration in the USA (since at least 1973). Moreover, the website at the disputed domain name advertises for sale various purported Accutane products. Respondent would likely not have advertised products purporting to be Accutane products on the website if it was unaware of Complainant’s reputation. In the other words, it is not conceivable to the Panel that Respondent would not have had actual notice of Complainant’s trademark right at the time of the registration of the disputed domain name. The Panel therefore finds that the ACCUTANE mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with Complainant. (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).

Moreover, Respondent has chosen not to formally respond to Complainant’s allegations. According to the panel’s decision in The Argento Wine Company Limited v. Argento Beijing Trading Company, supra, “the failure of the Respondent to respond to the Complaint further supports an inference of bad faith”. (See also Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787). Thus, the Panel concludes that the disputed domain name was registered in bad faith with the intent to create an impression of an association with Complainant’s Accutane branded products.

b) Used in Bad Faith

Complainant has adduced evidence to prove that by using a confusingly similar disputed domain name, Respondent has “intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites” offering purportedly Complainant’s Accutane branded products and services without authorization. Complainant claimed that Respondent uses the disputed domain name for “commercial gain” and with the purpose of capitalizing on the fame of Complainant’s mark ACCUTANE.

To establish an “intention for commercial gain” for the purpose of this Policy, evidence is required to indicate that it is “more likely than not” that intention existed (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Wal-Mart Stores, Inc. and Wal-Mart China Co. Ltd v. Liangchenyong, ADNDRC Case No. HKcc-0800008).

Given the widespread reputation of the ACCUTANE marks (as well as the content on the website at the disputed domain name mentioned above), the Panel finds that the public is likely to be confused into thinking that the disputed domain name has a connection with Complainant, contrary to the fact. There is a strong likelihood of confusion as to source, sponsorship, affiliation or endorsement of the website to which the disputed domain name is resolved (see Annex 6 to the Complaint). In other words, Respondent has through the use of a confusingly similar disputed domain name and webpage contents created a likelihood of confusion with the ACCUTANE marks. Noting also that apparently no clarification as to Respondent’s relationship to Complainant is made on the homepage of the disputed domain name, potential Internet users are led to believe that the website at “www.accutaneonlinepharmacy.com” is either Complainant’s sites or the sites of official authorized agents of Complainant, which it is not. Moreover, Respondent has not responded formally to the Complaint. The Panel therefore concludes that the disputed domain name was used by Respondent in bad faith.

In summary, Respondent, by choosing to register and use the disputed domain name which is confusingly similar to Complainant’s trademark, intended to ride on the goodwill of Complainant’s trademark in an attempt to exploit, for commercial gain, Internet users destined for Complainant. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain name and the conduct of Respondent as far as the website to which the disputed domain name resolves is indicative of registration and use of the disputed domain name in bad faith.

The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) of the Policy.

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 name <accutaneonlinepharmacy.com> be transferred to Complainant.

Yijun Tian
Sole Panelist
Dated: February 15, 2013