Westmore · UDRP DecisionBuyaccutaneonline.org
The Panel ordered transfer of <buyaccutaneonline.org>. Although the Respondent had signed a settlement form agreeing to transfer the domain name, implementation was not confirmed, and the proceeding was reinstituted. The Panel addressed all three UDRP elements and found that the domain name incorporated the Complainant’s ACCUTANE mark, that the Respondent lacked rights or legitimate interests, and that use of the domain name for an online pharmacy selling the trademarked goods and other goods without disclosing the parties’ relationship demonstrated bad-faith registration and use.
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The decision illustrates how a domain name combining a pharmaceutical trademark with direct purchasing language may satisfy all three UDRP elements when it leads to an online pharmacy that sells the trademarked product and other goods without accurately disclosing its relationship with the trademark owner. It also shows that a panel may conduct a full merits analysis despite a signed transfer settlement when implementation cannot be confirmed.
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 F. Hoffmann-La Roche AG v. Roman Batalak Case No. D2016-0672 1. The Parties The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, internally represented. The Respondent is Roman Batalak of Grodno, Belarus, self-represented. 2. The Domain Name and Registrar The disputed domain name <buyaccutaneonline.org> is registered with NameSilo, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 6, 2016. On April 6, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 7, 2016, 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. Upon the Complainant’s request dated April 11, 2016, the proceedings were suspended on the same date for the parties to seek to informally resolve the dispute. The Parties submitted the signed settlement form as required under paragraph 17(iii) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”). The Center has notified the Parties settlement on April 27, 2016. Nevertheless, as the Complainant could not confirm that the settlement has been implemented, the proceedings were reinstituted on May 9, 2016 at the Complainant’s request. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 Respondent of the Complaint, and the proceedings commenced on May 10, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 30, 2016. A formal response was not received by the specified due date and on May 31, 2016, the Center informed the parties that it would proceed with panel appointment. The Center appointed Gregor Vos as the sole panelist in this matter on June 8, 2016. 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 part of a large global research-focused healthcare group in the field of pharmaceuticals and diagnostics. The Complainant is the owner of the international trademark registrations No. 840 371 (ACCUTANE, registered on December 6, 2004) and No. 450 092 (ROACCUTAN, registered on December 13, 1979). The Complainant also made reference to additional national trademark registrations for ROACCUTANE, held by its related company Roche Products Ltd. The disputed domain name was registered on March 25, 2016. The disputed domain name resolves to an online pharmacy. 5. Parties’ Contentions A. Complainant The Complainant uses the trademarks ACCUTANE, ROACCUTAN and ROACCUTANE to designate a prescription drug indicated for the treatment of severe nodular and/or inflammatory acne conglobate or recalcitrant acne. The disputed domain name incorporates the trademark ACCUTANE in its entirety and is therefore confusingly similar to this trademark. The addition of the generic or descriptive terms “buy” and “online” does not influence this confusing similarity. The Complainant has exclusive rights in the trademark ACCUTANE that predate the Respondent’s registration of the disputed domain name. The Respondent does not have any affiliation with the Complainant, nor has the Respondent any license or consent to use ACCUTANE. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent registered and uses the disputed domain name in bad faith. The Respondent must have had knowledge of the earlier ACCUTANE trademark at the time of registration of the disputed domain name. Furthermore, the Respondent intentionally attempts to attract Internet users to an online pharmacy store with its use of the disputed domain name. The Complainant requests the Panel to issue an order that the disputed domain name be transferred to the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings While it is clear from the record that the Respondent has agreed to transfer the disputed domain name to Complainant based on the submitted settlement form, for the sake of completeness, the Panel proceeds to discuss the Policy elements. To make its case, the Complainant must meet all requirements under paragraph 4(a) of the Policy. The Complainant must prove that: (i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name (paragraph 4(a)(ii)); and (iii) the disputed domain name has been registered and is being used in bad faith (paragraph 4(a)(iii)). The Panel notes that in making its case, the Complainant made reference to several national trademark registrations for ROACCUTANE. Copies of these registrations that were submitted show that these are owned by a different legal entity, which the Complainant states it is its subsidiary in the United Kingdom of Great Britain and Northern Ireland. Although a licensee of a trademark or a company related to the registered owner ( e.g ., a subsidiary) of a trademark may have rights in a trademark under the UDRP, evidence of such license and/or authorization should be submitted (see, e.g ., Komatsu Deutschland GmbH v. Ali Osman / ANS , WIPO Case No. D2009-0107 ). The Complainant did not submit such evidence of a licence and/or authorization. Nevertheless, the Panel notes that the Complainant has provided sufficient evidence in its ACCUTANE mark for the purposes of the Policy. A. Identical or Confusingly Similar To meet the first requirement of the UDRP, the disputed domain name must be identical or confusingly similar to a trademark owned by the Complainant. In general, this means that the relevant trademark needs to be recognizable as such within the disputed domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent threshold Internet user confusion. This involves a straightforward visual or aural comparison of the trademark with the alphanumeric string in the disputed domain name. The Panel finds that the Complainant owns the trademark ACCUTANE that is fully incorporated in the disputed domain name. This already provides sufficient base to find that the disputed domain name is identical or confusingly similar to the Complainant’s trademark ACCUTANE (see, e.g ., Mejeriforeningen Danish Dairy Board v. Cykon Technology Limited , WIPO Case No. D2010-0776 ). The additions “buy” and “online” do not take away this identity or confusing similarity at all. See for similar cases, e.g ., F. Hoffmann-La Roche AG v. Bulent Sedef , WIPO Case No. D2008-0636 ; and Hoffmann-La Roche Inc. v. Wei-Chun Hsia , WIPO Case No. D2008-0923 . The generic Top-Level Domain “.org” also does not distinguish the disputed domain name from the Complainant’s trademark ACCUTANE. Based on the above, the Panel concludes that the Complainant has met the first requirement under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests As it is generally recognized that it is hard for complainants to prove a negative, the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests. If such a prima facie case is made, the burden of production shifts to the Respondent to rebut the same. If the Respondent fails to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name, the Complainant will be deemed to have satisfied paragraph 4(a)(ii) of the Policy ( Croatia Airlines d.d. v. Modern Empire Internet Ltd. , WIPO Case No. D2003-0455 ). The Panel finds that from the submitted screenshots it follows that the Respondent uses the disputed domain name to resolve to an online pharmacy that also sells other goods than the trademarked goods, and without disclosing the Respondent’s relationship with the Complainant. The Panel finds that this makes the Complainant’s prima facie case (see, e.g., Oki Data Americas, Inc. v. ASD, Inc. , WIPO Case No. D2001-0903 ; and Research in Motion Limited v. One Star Global LLC , WIPO Case No. D2009-0227 . The Respondent did not respond to the allegations of the Complainant and has indicated it no longer wants the disputed domain name. The Panel therefore concludes that the Complainant has met the second requirement under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith From the Complainant’s undisputed admissions it follows that the Respondent uses the disputed domain name to direct Internet users to an online pharmacy that sells both the trademarked goods and other goods, without disclosing the Respondent’s relationship with the Complainant. These admissions support the view that the Respondent has knowledge of Complainant’s trademark and deliberately uses the disputed domain name in order to mislead consumers into visiting the Respondent’s website for commercial gain ( F. Hoffman-La Roche AG v. Pinetree Development, Ltd , WIPO Case No. D2006-0049 ; and Pfizer Inc. v. jg a/k/a/ Josh Green , WIPO Case No. D2004-0784 ). The Panel finds that the above sufficiently constitutes a registration and use in bad faith pursuant to paragraph 4(a)(iii) UDRP. 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 <buyaccutaneonline.org> be transferred to the Complainant. Gregor Vos Sole Panelist Date: July 8, 2016
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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