WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Hoffmann-La Roche Inc. v. Chernenko Aleksei / Whois Protection

Case No. D2013-0680

1. The Parties

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

The Respondent is Chernenko Aleksei, Dibenko, Nikopol, Ukraine, and Whois Protection, Pardubice, Czech Republic.

2. The Domain Names and Registrar

The disputed domain names <buyaccutaneonlinehere.com> and <buyxenicalorderonline.com> are registered with Gransy, s.r.o. d/b/a subreg.cz.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 12, 2013. On April 12, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 16, 2013, the Registrar transmitted by email to the Center its verification disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 22, 2013 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 April 22, 2013.

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 April 30, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 20, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 28, 2013.

The Center appointed Ladislav Jakl as the sole panelist in this matter on June 10, 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.

On the question of the language of the proceedings, the registrar confirmed that the language of registration agreement is Czech. The Complainant on April 22, 2013 requested for English to be the language of the proceedings in the Complaint. The Respondent did not provide any comments in this regard. The Panel, taking into account the circumstances of this case (including the language displayed on the website associated with the disputed domain name), the fact that the Respondent was invited to submit its Response in either English or Czech and a number of recent UDRP proceedings and the reasons cited therein (BrandStrategy, Inc. v. BusinessService Ltd., WIPO Case No. D2007-0749; Laboratoire Biosthétique Kosmetik GmbH & Co. KG and MCE S.A.S. v. BusinessService Ltd.,WIPO Case No. D2007-1836) decides that the language of the administrative proceedings will be English.

4. Factual Background

The Complainant asserted, and provided evidence in support of the following facts which the Panel finds established:

The Complainant is, together with its afiliated 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 health care groups and having global operations in more than 100 countries.

The Complainant's trade mark ACCUTANE is registered on behalf of the Complainant in the United States Patent and Trademark Office as of August 28, 1973 under Registration No. 966,924 (Annex 3), with a first use in 1982. Same as the Complainant, Hoffmann-La Roche Inc., also F. Hoffmann-La Roche AG, Basel, Switzerland, is owned and controlled by Roche Holding AG, a copany organized and doing business under the laws of Switzerland of Basel, Switzerland. As foresaid F. Hoffmann-La Roche AG owns and uses the domain name <accutang.com>.

ACCUTANE is an alternative trademark (United States version) for the trademark ROACCUTANE which is protected in a multitude of countries worldwide. The trademark ACCUTANE designates a dermatological preparation in the form of a product indicated for the treatment and prevention of acne. The sales of the ACCUTANE product in the United States have exceeded hundreds of millions of dollars.

The Complainant's mark XENICAL is registered on behalf of the Complainant in the United States Patent and Trademark Office as of July 18, 1995 under registration No. 1,906,281 (Annex 5). XENICAL is protected as trademark in a multitude of countries worldwide. As an example reference is made to the International Registration No. 612908 & 699154, certificates of which are submitted in copy as Annex 6 to the Complaint. Priority date for the mark XENICAL is August 5, 1993. The mark XENICAL designates an oral prescription weight loss medication used to help obese people lose weight and keep this weight off. For the mark XENICAL the Complainant holds registrations in over hundred countries on a world-wide basis.

The disputed domain names <buyaccutaneonlinehere.com> and <buyxenicalorderonline.com> were registered on March 8, 2013.

The Complainant requests the Panel, appointed in this administrative proceeding, that the disputed domain names <buyaccutaneonlinehere.com> and <buyxenicalorderonline.com> be transferred to the Complainant.

5. Parties’ Contention

A. Complainant

The Complainant contends that the disputed domain names <buyaccutaneonlinehere.com> and <buyxenicalorderonline.com> are identical or confusingly similar to its trademarks ACCUTANE and XENICAL, that the Respondent has no rights or legitimate interests in respect to the disputed domain names and that the disputed domain names were registered and are being used in bad faith. The Complainant introduces that the disputed domain names <buyaccutaneonlinehere.com> and <buyxenicalorderonline.com> incorporate the Complainant's trademarks ACCUTANE and XENICAL in their entirety and that according to the Hoffmann-La Roche Inc. v. Hightech Industries, Andrew Browne, WIPO Case No. D2010-0240, “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”.

Furthermore, the Complainant asserts that the addition of the term "buy" as a prefix to the ACCUTANE and XENICAL marks does not mitigate the confusing similarity between the disputed domain names and the Complainant trademark. The prefix "buy” is an ordinary descriptive word which is related to the Complainant’s trademarks ACCUTANE and may lead Intentet users to understand the disputed domain names as hosting a website that offers for sale the Complainant products. Adding the prefix “buy" to the mark does nothing to dispel and serves only to reinforce the connection in the public mind between the marks ACCUTANE and XENICAL and the Complainant, and therefore increases the risk of confusion.

Complainant states that acording to Lilly ICOS LLC v. John Hopking / Neo net Ltd., WIPO Case No. D2005-0694 "generally, a user af a mark may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctivee matter to it". The additional words "online","buy" and "order", added to Contplainant's (ACCUTANE or XENICAL) mark, may suggest that the Respondent´s websites are locations where a consumer may buy ACCUTANE or XENICAL brand product" (see Annex to the Complaint). And according to the Sanofi-aventi v. Alma Navaro, WIPO Case No. D2005-1042, "adding generic words to a domain name such as "order” and "here” is not sufficient to escape the finding of similarity and does not change the overall impression of the designation as being connected to the trademark of the Complainant (see Annex 9 to the Complaint).

Furthermore the Complainant's use and registration of the marks ACCUTANE and XENICAL predate the Respondent's registration of the domain names. The Complainant concludes that disputed domain names are confusingly similar to the trademarks of the Complainant.

As to rights or legitimate interests, in respect of the disputed domain names, the Complainant essentially contends that the Complainant has exclusive rights for ACCUTANE and XENICAL and no licence, permission, authorization or consent was granted to use ACCUTANE or XENICAL in the disputed domain names. Furthermore it is obvioust that the Respondent uses the disputed domain names for commercial gain and with the purpose of capitalizing on the fame of the Complainant's marks ACCUTANE and XENICAL. The domain names in question clearly allude to the Complainant. The Respondent's domain names are used to direct Iinternet users to pharmacies on-line offering respectively "Accutane (Generic)" (for the disputed domain name <buyaccutaneonlinehere.com>) and "Xenical" as well as "Orlistat" (for the disputed domain name <buyxenicalorderonline.com>). According to Hoffmann-La Roche Inc. v. Samuel Teodorek, WIPO Case No. D2007-1814, the Respondent‘s use of the disputed domain name to redirect Internet users to an on-line pharmacy demonstrates Respondent´s lack of a legitimace interests in the domain name” (see Annex 11 to the Complaint). And, according to Pfizer Inc v. Juan Gonzales, WIPO Case No. D2004-0589, "no good faith can be assassumed in Respondent's conduct, in view of the fact that the domain name is confusingly similar with Complainant's trademark and is used in connection with the promotion and sale of competing products” (see Annex to the Complaint).

The Complainant states that there is no reason why the Respondent should have any right or legitimate interest in disputed domain names.

The disputed domain names were registered in bad faith since at the time of the registrations i.e. both on March 8, 2013 the Respondent had, no doubt, knowledge of the Complainant's well known products/marks ACCUTANE and XENICAL.

Furthermore the Complainant argues that the disputed domain names are also being used in bad faith, as this is obvious since when viewing the Internet websites of the Respondent (see Annex 10 to the Complaint) one realizes that the Respondent is intentionally attempting (for commercial purpose) to attract Internet users to the Respondent's websites by creating a likelihood of confusion with the Complainant's well known marks as to the source, affiliation and endorsement of the Respondent's websites. According to Pfizer Inc. v. jg a/k/a JoshGreen, WIPO Case No. D2004-0784, bad faith is established when “Respondent is using the domain names as a forwarding address to a for-profit on line pharmacy (Annex 13 to Complaint) . And according to Pfizer Inc v. JuanGonzales, WIPO Case No. D2004-0589 "using the domain name to promote and sell, for commercial gain, (..) pharmaceutical products (as "Accutane (Generic)"), which directly compete with Contplainant's genuine (ACCUTANE) (..) is futrther evidence of Respondent´s bad faith registration and use of tthe domain name under paragraph 4(c)(iii) of the Policy (Annex 12 to the Complaint).

The Respondent, by using the disputed domain names, is intentionally misleading the consumers and confusing them by making them believe that the websites behind those links are associated or recommended by Complainant, especially by mentioning the Complainant's name. And as result the the Complainant contends that the Respondent may generace unjustified revenues and therefore is illegitimately capitalizing on the ACCUTANE and XENICAL trademarks fame.

B. Respondent

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

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:

(i) the disputed domain names are 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 names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

Paragraph 4(a) of the Policy states that the burden of proving that all three elements are present lies with the Complainant.

A. Identical or Confusingly Similar

The Panel accepts arguments of the Complainant that the disputed domain names are identical or confusingly similar to its trademarks ACCUTANE and XENICAL and that the disputed domain names <buyaccutaneonlinehere.com> and <buyxenicalorderonline.com> incorporate the Complainant's trademarks in their entirety. The addition of the term “buy” as a prefix to the ACCUTANE and XENICAL mark does not mitigate the confusing similarity between the disputed domain name and the Complainant's trademark. The prefix "buy” is an ordinary descriptive word which is related to the trademark ACCUTANE and XENICAL and may lead Intentet users to understand the disputed domain name as hosting a website that offers for sale the Complainant product. Adding the prefix “buy" to the mark does nothing to dispel and serves only to reinforce the conntection in the public mind between the mark, ACCUTANE and XENICAL and the Complainant, and therefore increases the risk of confusion. The same standpoint results from earlier WIPO UDRP decisions according to which use of a mark may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctivee matter to it". The additional words "online”, “buy" and “order", added to the Complainant's mark, may suggest that the Respondent´s websites are locations where a consumer may buy ACCUTANE or XENICAL brand product and adding generic words to a domain name such as "order" and "here" is not sufficient to escape the finding of similarity and does not change the overall impression of the designation and being connected to the trademarks of the Complainant (Sanofi-aventi v. Alma Navaro, Supra; Lilly ICOS LLC v. John Hopking / Neo net Ltd., Supra; Wal -Mart Stores, Inc. v. Gerry Senker, WIPO Case No. D2006-0211; HSBC Holdings Plc v. David H. Gold, WIPO Case No. D2001-0343; F.Hoffmann-La Roche AG v. Whois Defender, Inc., WIPO Case No. D2006-0717; Sanofi-Aventis v.PLUTO DOMAIN SERVICES PRIVATE LIMITED, WIPO Case No. D2008-1483; Sanofi-Aventis v. N/A, WIPO Case No. D2009-0705; America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004). As well the inclusion of the gTLD suffix “.com” does not avoid confusing similarity between the disputed domain names and trademark. See AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758; Accor v. Lee Dong Youn, WIPO Case No. D2008-0705; and Sanofi-Aventis v. Brad Hedlund, WIPO Case No. D2007-1310.

Furthermore the Complainant's use and registration of the trademarks ACCUTANE and XENICAL predate the Respondent's registration of the disputed domain names.

For all the above cited reasons, the Panel concludes that the disputed domain names are confusingly similar to the Complainant’s trademark, in which the Complainant has rights, and therefore the condition of paragraph 4(a)(i) of the Policy is fulfilled.

B. Rights or Legitimate Interests

As to rights or legitimate interests in respect of the disputed domain names, the Panel finds that the Complainant has not licensed or otherwise authorized the Respondent to seek registration of any domain name incorporating said Complainant’s trademarks. The registration of the trademarks ACCUTANE and XENICAL predate the registration of the disputed domain names <buyaccutaneonlinehere.com> and <buyxenicalorderonline.com>. It is obvioust that the Respondent uses the disputed domain names for commercial gain and with the purpose of capitalizing on the fame of the Complainant's marks ACCUTANE and XENICAL.

The Panel accepts the Complainant’s assertion that the Respondent must have been aware of the Complainant’s trademarks ACCUTANE and XENICAL. There is no doubt for the Panel that the Respondent has chosen the disputed domain names to exploit the goodwill of the Complainant’s trademark (McDonald’s Corporation v. ZusCom, WIPO Case No. D2007-1353). The Respondent has no relation to the Complainant and only registered the disputed domain names for commercial gain in order to misleadingly divert consumers to sites not affiliated with the Complainant. It is obvious to the Panel that the Respondent primarily registered the disputed domain names in order to participate at the affiliate program and gain commissions. The Respondent is also not making a legitimate noncommercial or fair use of the disputed domain names, without the intent, for commercial gain, to mislead the consumers or to tarnish the Complainant’s trademarks. The Respondent is using the disputed domain names to attract Internet users seeking a website linked to the Complainant and to its trademarks ACCUTANE and XENICAL. There is a consensus view by previous UDRP panels that such use cannot be considered a bona fide offering of goods or services, or a noncommercial or fair use in circumstances as the ones that are present in this case (Bridgestone Corporation v. Horoshiy, Inc., WIPO Case No. D2004-0795; Deutsche Telekom AG v. Dong Wang, WIPO Case No. D2005-0819; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001; The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113; Bridgestone Corporation v. Horoshiy, Inc., WIPO Case No. D2004-0795; Deutsche Telekom AG v. Dong Wang, WIPO Case No. D2005-0819; PRL USA Holdings, Inc. v. LucasCobb, WIPO Case No. D2006-0162).

For the above cited reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that the requirements of paragraph 4(a)(ii) of the Policy are therefore fulfilled.

C. Registered and Used in Bad Faith

Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain names were registered and are being used in bad faith. Paragraph 4(b) sets out certain circumstances which, in particular but without limitation, are to be construed as evidence of both. These include, inter alia, paragraphs 4(b)(ii), (iii) and (iv):

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

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

The Panel finds that it is beyond all doubt that the Respondent has registered the disputed domain names with the Complainant’s trademarks in mind. The Panel accepts the Complainant’s arguments that the disputed domain names are also being used in bad faith, as this is obvious since when viewing the Internet-websites from the Respondent one realizes that the Respondent is Intentionally attempting to attract Internet users to the Respondent's websites by creating a likelihood of confusion with the Complainant's wellknovn marks as to the source, affiliation and endorsement of Respondent's websites. The Respondent, by using the disputed domain names, is intentionally misleading the consumers and confusing them by making them believe that the websites behind those links are associated or recommended by Complainant, especially by mentioning the Complainant's name. And as result the Complainant contends that the Respondent may generate unjustified revenues and therefore is illegitimately capitalizing on the ACCUTANE and XENICAL trademarks fame.

For the above cited reasons the Panel finds that the disputed domain names were registered and are being used in bad faith and therefore the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.

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 names <buyaccutaneonlinehere.com> and <buyxenicalorderonline.com>, be transferred to the Complainant.

Ladislav Jakl
Sole Panelist
Date: June 24, 2013