WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

F. Hoffmann-La Roche AG v. Whois Privacy Protection Foundation

Case No. D2017-1921

1. The Parties

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

Respondent is Whois Privacy Protection Foundation of Rotterdam, the Netherlands.

2. The Domain Name and Registrar

The disputed domain name <accutanewebsite.com> is registered with Hosting Concepts B.V. d/b/a Openprovider (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 2, 2017. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 3, 2017, the Registrar transmitted by email to the Center its verification response confirming that 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 11, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 31, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 1, 2017.

The Center appointed Roberto Bianchi as the sole panelist in this matter on November 10, 2017. 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 and its affiliated companies is a leading healthcare group in the fields of pharmaceuticals and diagnostics, with operations in over 100 countries.

Complainant owns an International Trademark for ACCUTANE, Reg. No. 840371, Reg. Date December 6, 2004, renewed on December 6, 2014, covering pharmaceutical products in International Class 5,

Complainant also owns an International Trademark for ROACCUTAN, Reg. No. 450092, Reg. Date December 13, 1979, renewed on December 13, 2009, covering pharmaceutical, veterinary and hygienic products in International Class 5, with a priority date of August 21, 1979. The mark ROACCUTAN is registered in an alternative form as ROACCUTANE in jurisdictions such as Malaysia, Singapore, Ireland and the United Kingdom of Great Britain and Northern Ireland (“UK”) by Complainant’s UK subsidiary Roche Products Ltd. The trademarks ACCUTANE, ROACCUTAN and ROACCUTANE designate a prescription drug indicated for the treatment of severe nodular and/or inflammatory acne conglobata or recalcitrant acne.

The disputed domain name was registered on September 10, 2017 and resolves to an online pharmacy which seemingly offers ACCUTANE drugs for sale.

On September 13, 2017, Complainant sent an email to the registrant of the disputed domain name, stating that the disputed domain name is infringing Complainant’s rights in the ACCUTANE mark, and requesting the transfer of the domain name <accutanewebsite.com> to Complainant. Respondent did not reply to this email.

5. Parties’ Contentions

A. Complainant

Complainant contends the following:

The disputed domain name is confusingly similar to Complainant’s mark ACCUTANE, since it incorporates Complainant’s trademark ACCUTANE in its entirety. The addition of the term “website” does not sufficiently distinguish the disputed domain name from the trademark. As a result, the disputed domain name is confusingly similar to Complainant’s ACCUTANE trademark, making it possible for customers to believe that the disputed domain name is related to Complainant.

Respondent does not have rights or legitimate interests in respect of the disputed domain name. Complainant has exclusive and prior rights in the trademark ACCUTANE, which precede Respondent’s registration of the disputed domain name. Respondent has no connection or affiliation with Complainant and has not received any license or consent, express or implied, to use Complainant’s mark ACCUTANE. By falsely implying that its pharmaceutical products are related or similar to those of Complainant, Respondent is using the disputed domain name with the purpose of trading on Complainant’s goodwill. Indeed, as evidenced in Annex 8, Respondent operates an online pharmacy that promotes and sells (among others) ACCUTANE drugs. Such activity does not represent a legitimate noncommercial or fair use under Policy paragraph 4(c)(iii). According to Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784, “[…] several cases have found that a registrant has no legitimate interest in a domain name that is similar to a pharmaceutical manufacturer’s mark and that is being used to direct consumers to an online pharmacy” (Annex 9). Furthermore, Respondent did not reply to Complainant’s cease and desist letter and hence has not availed itself of the opportunity to present any case of legitimate interest that it might have (Annex 10). Therefore, there is no reason why Respondent should have any right or interest in such domain name.

The disputed domain name was registered and is being used in bad faith. There is no doubt that at the time of the registration, i.e. on September 10, 2017, Respondent had knowledge of Complainant’s mark ACCUTANE. The disputed domain name contains the word “accutane” and displays an online pharmacy web page in order to attract Internet users searching for Complainant’s ACCUTANE mark via search engines, including users who expect to be led to Complainant’s official website or to websites endorsed by Complainant. According to the above-mentioned Pfizer case, bad faith is established when “Respondent is using the domain names as a forwarding address to a for-profit on-line pharmacy” (Annex 9, p. 4). Therefore, Respondent may generate unjustified revenues and is illegitimately capitalizing on Complainant’s mark ACCUTANE. Furthermore, similar to F. Hoffmann-La Roche AG vs. Pinetree Development. Ltd., WIPO Case No. D2006-0049 (“the website resolving to the domain name at issue has been used to provide an online pharmacy which offers [ ...] as well as various other drugs which directly compete with the Complainant. The use of the disputed domain name thus appears to be an attempt to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark. This is evidence of bad faith registration and use pursuant to the Policy, paragraph 4(b)”.)

As a result, Respondent is deliberately using a domain name with a connection to Complainant’s ACCUTANE mark in order to mislead consumers and confuse them by making them believe that Complainant recommends the websites behind those links.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

Complainant has successfully evidenced that it has trademarks rights in the ACCUTANE mark.

The Panel notes that in the disputed domain name the ACCUTANE trademark is incorporated in its entirety as a relevant element, with the addition of the descriptive term “website” and the generic Top-Level Domain (“gTLD”) suffix “.com”. It is well established that the addition in a domain name of a descriptive term to a mark generally is inapt to distinguish one identifier from the other. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)

The Panel concludes that the disputed domain name is confusingly similar to Complainant`s mark ACCUTANE.

B. Rights or Legitimate Interests

Complainant contends that Respondent does not have rights or legitimate interests in respect of the disputed domain name. In particular, Complainant contends that it has exclusive and prior rights in the trademark ACCUTANE, which precede Respondent’s registration of the disputed domain name. Complainant adds that Respondent has no connection or affiliation with Complainant, and has not received any license or consent, express or implied, to use Complainant’s mark ACCUTANE. Further, Respondent is using the disputed domain name with the purpose of trading on Complainant’s goodwill by falsely implying that its pharmaceutical products are related or similar to those of Complainant. Respondent is operating an online pharmacy that promotes and sells ACCUTANE drugs. Such operation does not represent a legitimate noncommercial or fair use under Policy paragraph 4(c)(iii). Complainant cites the panel finding in Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784, that “several cases have found that a registrant has no legitimate interest in a domain name that is similar to a pharmaceutical manufacturer’s mark and that is being used to direct consumers to an on-line pharmacy”. Lastly, Respondent did not reply to Complainant’s cease and desist letter and hence has not availed itself of the opportunity to present any case of legitimate interest that it might have. Complainant concludes that there is no reason why Respondent should have any rights or legitimate interests in respect of such domain name.

In the opinion of the Panel, the existing evidence supports Complainant’s contentions.

First, according to the relevant WhoIs data provided by the Registrar, the registrant of the disputed domain name is “Whois Privacy Protection Foundation”, and there is no evidence that Respondent is known by the disputed domain name. Thus, Policy paragraph 4(c)(ii) clearly does not apply.

Second, according to printouts provided by Complainant, the website at the disputed domain name contains, under the title of “Accutane Isotretinoin – www.accutanewebsite.com”, various offerings to sell “generic ACCUTANE” online in different presentations without medical prescription. The Panel notes that these offerings suggest that the product marketed under the disputed domain name is equivalent to the authentic ACCUTANE product, without including any warnings. Clearly, Respondent’s “online pharmacy” is profiting of Complainant’s renown and goodwill to sell conceivably non-authentic goods. The Panel agrees with Complainant that this kind of use of the domain name is neither a bona fide offering under Policy paragraph 4(c)(i), nor a legitimate noncommercial or fair use without intent for commercial gain misleadingly to divert consumers, pursuant to Policy paragraph 4(c)(iii).

Third, Complainant denies to have granted Respondent any license or consent to use Complainant’s mark ACCUTANE, and there is no evidence that Respondent is connected or affiliated with Complainant. Lastly, Respondent failed to provide any explanation for its reasons or purposes for having registered the disputed domain name.

The Panel concludes that Complainant made out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Since Respondent failed to come forward with any allegations or evidence in its own favor, the Panel finds that Respondent lacks any rights or legitimate interests in the disputed domain name. See WIPO Overview 3.0, section 2.1.

The second element of the Policy is thus met.

C. Registered and Used in Bad Faith

Complainant has shown that its first trademark registration for ACCUTANE predates the registration of the disputed domain name by many years. See section 4 above. In addition, the content of the website at the disputed domain name, specifically aimed at marketing and selling online “generic ACCUTANE” in various presentations, demonstrates that Respondent knew perfectly well of, and targeted, the ACCUTANE mark and product.

Complainant has also shown that under the title of “Accutane Isotretinoin- www.accutanewebsite.com”, Respondent is using the website at the disputed domain name to offer online “generic ACCUTANE” in different presentations, without medical prescription. Since this offering suggests that the product marketed under the disputed domain name is equivalent to the authentic ACCUTANE product, and without posting any warning, disclaimer or explanation that the marketed generic products are not authentic, Respondent`s “online pharmacy” offerings clearly are aimed at extracting a profit from the renown of the ACCUTANE mark to sell generic Isotretinoin to Internet users presumably looking for Complainant and its authentic product. This is evidence of registration and use in bad faith pursuant to Policy paragraph 4(b)(iv). See Hoffmann-La Roche Inc. v. One Step Closer, Bob Dilan, WIPO Case No. D2008-0719 ( “[…] Complainant showed that the web site at “www.accutaneonline.com” has been offering “generic ACCUTANE” without prescription, and a link to “www.qualitytablets.com”, a web site offering generic medications for sale. […] Thus, Respondent appears to have been capitalizing on the fame of Complainant’s ACCUTANE mark for profit, which is a circumstance of bad faith registration and use of the domain names pursuant to Policy paragraph 4(b)(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 web site or location or of a product or service on your web site or location.”)

The Panel concludes that Respondent registered and is using the disputed domain name in bad faith.

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, <accutanewebsite.com> be transferred to Complainant.

Roberto Bianchi
Sole Panelist
Date: November 24, 2017