Westmore · UDRP DecisionOnlineaccutaneworldpills.com
The Panel ordered transfer of <onlineaccutaneworldpills.com>. It found the domain confusingly similar to the Complainant’s registered ACCUTANE trademark, concluded that the Respondent had no rights or legitimate interests, and held that the English-language website selling “Accutane (Generic)” intentionally attracted Internet users for commercial gain through confusion with the mark under paragraph 4(b)(iv) of the Policy.
The timeline behind onlineaccutaneworldpills.com
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
Westmore reconstructs the full history behind onlineaccutaneworldpills.com — from public RDAP and the Internet Archive — as part of UDRP Intelligence:
The case illustrates a direct application of UDRP paragraph 4(b)(iv) where a pharmaceutical mark is incorporated into a domain with online-sales terminology and the resulting website offers products described by reference to that mark. It also demonstrates that an English-language website and a respondent’s failure to object can be relevant when selecting English despite a Chinese registration agreement.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Hoffmann-La Roche Inc. v. Private Registration / WhoisGuardService.com Case No. D2013-2053 1. The Parties The Complainant is Hoffmann-La Roche Inc. of Nutley, New Jersey, United States of America, represented by Genentech, Inc., United States of America. The Respondent is Private Registration / WhoisGuardService.com of Nanjing, Jiangsu, China. 2. The Domain Name and Registrar The disputed domain name <onlineaccutaneworldpills.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 November 27, 2013. On November 28, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 1, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On December 10, 2013, the Center transmitted an email to the parties in both Chinese and English regarding the language of the proceeding. On December 10, 2013, the Complainant confirmed its request that English be the language of the proceeding. The 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 the Respondent of the Complaint in both Chinese and English, and the proceedings commenced on December 19, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 8, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 9, 2014. The Center appointed Douglas Clark as the sole panelist in this matter on January 20, 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 a member of the Roche Group, one of the largest pharmaceutical groups in the world. The Complainant is the registered proprietor in the United States of the trademark ACCUTANE for pharmaceutical products. The first use in the United States was in 1982. Accutane is a dermatological preparation. The Respondent is the registrant of the disputed domain name <onlineaccutaneworldpills.com>. The disputed domain name was registered on May 7, 2013. The website at the disputed domain name advertises in English the sale of “Accutane (Generic)”. 5. Parties’ Contentions A. Complainant The Complainant submits that disputed domain name is identical or confusingly similar to the registered trademark ACCUTANE. The addition of the generic words “online”, “world” and “pills” does not serve to distinguish the disputed domain name from the Complainant’s trademark. The Complainant further submits the Respondent has no rights or legitimate interests in the disputed domain name. It has received no consent or license from the Complainant to use the Complainant’s trademark in the disputed domain name. The Complainant submits that the disputed domain name was registered and used in bad faith with the intention of attracting Internet users to the website at the disputed domain name to purchase “Accutane (Generic)”. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Language of the Proceeding The language of the Registration Agreement is Chinese. The Complainant requested the language of the proceeding be English on a number of grounds including that the website at the disputed domain name was written in English. The Respondent did not respond to the Complainant’s language request. The Respondent was invited to submit its language request regarding the language of the proceeding by the Center in English and Chinese. It did not submit any request. The Panel finds that from the fact it does business in English the Respondent should understand the nature of this proceeding. Given the merits of the case being strongly in favour of the Complainant, the Panel does not consider it appropriate to require the Complainant to translate the Complaint into Chinese. In the circumstances of this case, the Panel decides that the language of the proceeding shall be English pursuant to paragraph 11 of the Rules. The Panel accepts the Complaint as filed in English and the Panel will render its decision in English. Substantive Decision This is a very simple case of domain name hijacking that the UDRP was designed to stop. The Panel agrees fully with the Complainant’s arguments and accordingly will make on a short decision. A. Identical or Confusingly Similar The disputed domain name <onlineaccutaneworldpills.com> is made up of the Complainant’s registered trademark ACCUTANE and the generic words “online”, “world” and “pills”. It is confusingly similar to the Complainant’s registered trademark. The first element of the UDRP is made out. B. Rights or Legitimate Interests The Respondent has not responded to the Complaint to assert any rights or legitimate interests. The use made by the Respondent of the website at the disputed domain name where the Complainant’s trademark features prominently and generic products are sold make it hard to imagine that the Respondent could ever establish any rights or legitimate interests. Clearly, none of the circumstances in paragraph 4(c) of the Policy, which sets out how a respondent can prove its rights or legitimate interests, are present in this case. C. Registered and Used in Bad Faith For the same reasons as those above, the Panel has no hesitation in finding that the disputed domain name <onlineaccutaneworldpills.com> was registered in bad faith and is being used in bad faith. This case clearly falls with paragraph 4(b)(iv) of the Policy which provides that a registrant has registered and is using a domain name in bad faith where: “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.” 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 <onlineaccutaneworldpills.com> be transferred to the Complainant. Douglas Clark Sole Panelist Date: January 27, 2014
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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