The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, internally represented.
The Respondents are Parina Valentina of Magnitogorsk, the Russian Federation and Denis Bogdanov of Saint Petersburg, the Russian Federation.
The disputed domain names <accutane.video>, <accutane.vip> and <accutane.toys> are registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 12, 2018. On June 12, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 13, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondents and contact information in the Complaint. The Center sent an email communication to the Complainant on the same date 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 June 14, 2018.
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 Respondents of the Complaint, and the proceedings commenced on June 15, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 5, 2018. The Respondents did not submit any response. Accordingly, the Center notified the Respondents' default on July 6, 2018.
The Center appointed Steven A. Maier as the sole panelist in this matter on July 12, 2018. 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.
The Complainant requests that the proceedings against the two named Respondents be consolidated. Such consolidation is permissible in circumstances where (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties (see section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0")). In this case the Complainant submits evidence that all three of the disputed domain names were registered on the same day, that each was registered by a party in the Russian Federation, that each was registered through the same Registrar, and that each has resolved to a website having similar form and content. In the light of this evidence of common control, and there being no objection from the Respondents, the Panel directs that the proceedings be consolidated accordingly.
The Complainant is a pharmaceutical company organized under the laws of Switzerland.
The Complainant is the owner of numerous registrations for the trademark ACCUTANE, including e.g.,International Trademark No. 840371 for the word mark ACCUTANE, registered on December 6, 2004 in Class 5 and designating a total of 10 countries.
All three of the disputed domain names were registered on April 25, 2018.
According to evidence submitted by the Complainant by way of screen-shots, each of the disputed domain names has resolved to a website offering the product "Accutane" and another of the Complainant's products "Roaccutane" for sale online and purporting to provide a comparison between online pharmacies and information about the products in question.
The Complainant states that it is a world-leading pharmaceutical company with operations in over 100 countries and that it offers the drugs "Accutane" and "Roaccutane" for the treatment of acne and related conditions.
The Complainant contends that each of the disputed domain names is identical or confusingly similar to a trademark in which it has rights. It submits that each of the disputed domain names incorporates its trademark ACCUTANE in full, and that the generic Top-Level Domains ("gTLDs") ".video", ".vip" and ".toys" should not be taken into account in considering the question of identity or confusing similarity.
The Complainant submits that the Respondents have no rights or legitimate interests in respect of any of the disputed domain names. It states that it is not affiliated with the Respondents and has not licensed or authorized them to use its ACCUTANE trademark. The Complainant contends that the Respondents are using the disputed domain names unfairly to trade off the Complainant's goodwill, which constitutes neither bona fide commercial use nor legitimate noncommercial or fair use of any of the disputed domain names.
The Complainant contends that the disputed domain names were registered and are being used in bad faith. The Complainant states that the Respondents are using the disputed domain names misleadingly to attract the Complainant's customers, who are likely to believe that any websites associated with the disputed domain names are operated or recommended by the Complainant.
The Complainant requests the transfer of each of the disputed domain names.
The Respondents did not reply to the Complainant's contentions.
In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondents have no rights or legitimate interests in respect of the disputed domain names; and
(iii) that the disputed domain names have been registered and are being used in bad faith.
Even in a case in which no Response has been filed, the Complainant must still establish that each of the three above elements is present.
The Complainant has established that it has registered trademark rights in the name and mark ACCUTANE. Each of the disputed domain names comprises the term "accutane" together with a gTLD, respectively ".video", ".vip" and ".toys". The Panel accepts the Complainant's submission that the gTLD is typically to be disregarded for the purposes of comparison, and would find in any event that none of the gTLDs in question is effective to distinguish the disputed domain names from the Complainant's trademark.
The Panel therefore finds that that each of the disputed domain names is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
In the view of the Panel, the Complainant's submissions referred to above give rise to a prima facie case for the Respondents to answer that the Respondents have no rights or legitimate interests in respect of any of the disputed domain names. However, the Respondents have not participated in this administrative proceeding and have not provided any explanation for their registration or use of the disputed domain names, whether in accordance with any of the criteria set out in paragraph 4(c) of the Policy or otherwise.
In certain limited circumstances, a reseller of trademarked goods or services may legitimately incorporate that trademark into a domain name used for the resale of the goods or services in question (see e.g., section 2.8 of the WIPO Overview 3.0). However, those circumstances do not extend to cases such as the present, where, in the view of the Panel, each of the disputed domain names is by its nature inherently misleading and constitutes an impersonation of the Complainant. Nor have the Respondents provided any disclaimer on the websites in question making clear that they are unaffiliated with the Complainant.
In the circumstances, the Panel finds that the Respondents have no rights or legitimate interests in respect of any of the disputed domain names.
There being no evidence before the Panel that the term "accutane" has any meaning other than to refer to the Complainant's trademarked product, the Panel infers that the Respondents registered each of the disputed domain names with the Complainant's trademark in mind and with the intention of referring to that trademark. As much is also clear from the Respondents' use of the disputed domain names, namely to offer goods including "Accutane" for sale online. Whether or not those goods are genuine, the Panel finds that the Respondents have taken unfair advantage of the Complainant's trademark ACCUTANE by registering and using domain names that are inherently misleading and are likely falsely to suggest to Internet users that they are used for the purpose of websites operated or authorized by the Complainant. In particular, the Panel finds that, by using the disputed domain names, the Respondents have sought to attract, for commercial gain, Internet users to their websites by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of those websites or of a product or service on those websites (paragraph 4(b)(iv) of the Policy). The Panel therefore finds that each of the disputed domain names has been registered and is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the each of the disputed domain names, <accutane.video>, <accutane.vip> and <accutane.toys> be transferred to the Complainant.
Steven A. Maier
Date: July 13, 2018
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