Hoffmann-La Roche Inc. v. Merfy Wendy wendymerfy@ymail.com

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Hoffmann-La Roche Inc. v. Merfy Wendy

Case No. D2012-0392

1. The Parties

The Complainant is Hoffmann-La Roche Inc. of Nutley, New Jersey, United States of America, represented by Hoffmann-La Roche AG, Switzerland.

The Respondent is Merfy Wendy of Monte-Carlo, Monaco.

2. The Domain Names and Registrar

The disputed domain names <buyaccutaneonlinecanada.net> and <buyorlistatxenical120mg.net> are registered with Center of Ukrainian Internet Names (UKRNAMES).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 28, 2012. On February 28, 2012, the Center transmitted by email to UKRNAMES a request for registrar verification in connection with the disputed domain names. On March 2, 2012, UKRNAMES transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant.

On March 8, 2012, the Center notified the Parties that as the language of the registration agreement for the disputed domain name was Russian (as per information provided by the Registrar), the Complainant would need to provide satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English; submit the Complaint translated into Russian; or submit a request for English to be the language of the administrative proceedings. On March 8, 2012 the Complainant confirmed that a request had already been submitted for English to be the language of the proceedings in the Complaint (on page 5; Clause 9.1of the Complaint) providing the reasons for such request. The Respondent did not provide any comments in this regard.

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, and the proceedings commenced on March 20, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 9, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 12, 2012.

The Center appointed Irina V. Savelieva as the sole panelist in this matter on May 3, 2012. 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, together with its affiliated companies, is engaged in research and development of pharmaceutical and diagnostic products. It is a member of the Roche Group, one of the worlds’s leading research-focused healthcare groups and having global operations in more than 100 countries.

The Complainant’s ACCUTANE trademark is registered on behalf of the Complainant in the United States Patent and Trademarks Office as of August 28, 1973 under Registration No. 966,924, with a first use in 1982. Same as the Complainant, Hoffman-La Roche Inc., also F. Hoffman-La Roche AG of Basel, Switzerland, is owned and controlled by Roche Holding AG, a company organized and doing business under the laws of Basel, Switzerland. Aforesaid F. Hoffman-La Roche AG owns and uses the domain name <accutane.com>.

The ACCUTANE trademark is an alternative trademark for the ROACCUTAN trademark, which is protected in a multitude of countries worldwide. For example, reference is made to the International Registration No. R450 092 dated December 13, 1979. Priority date to the ROACCUTAN trademark is August 21, 1979.

The ACCUTANE trademark designates a dermatological preparation in the form of a product indicated for the treatment and prevention of acne. The ACCUTANE trademark was extensively promoted for many years in print advertisements in medical journals, promotional materials, packaging, medical information materials, television advertising and direct mailings. The sales of the product under the ACCUTANE trademark in the United States exceeded hundreds of millions of dollars.

The Complainant’s XENICAL trademark is registered on behalf of the Complainant in the United States Patent and Trademarks Office as of July 18, 1995 under Registration No. 1,906,281. The XENICAL trademark is registered in a multitude of countries worldwide. For example this includes International Registrations Nos. 612908 (dated December 14, 1993) and 699154 (dated July 28, 1998). Priority date for the XENICAL trademark is August 5, 1993.

The XENICAL trademark designates an oral prescription weight loss medication used to help obese people lose weight and keep this weight off. The Complainant holds XENICAL trademark registrations in over one hundred countries on a world-wide basis.

The disputed domain names <buyaccutaneonlinecanada.net> and <buyorlistatxenical120mg.net> were created on February 14, 2012.

5. Parties’ Contentions

A. Complainant

(a) The disputed domain names are confusingly similar to a trademark or service mark in which the Complainant has rights:

- The disputed domain names incorporate the Complainant’s trademarks ACCUTANE and XENICAL in their entirety. According to Hoffman-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” and “adding the prefix “buy” to the Mark does nothing to dispel and serves only to reinforce the connection in the public mind between the word ACCUTANE [or XENICAL] and the Complainant, and therefore increases the risk of confusion”.

- Concerning the disputed domain name <buyaccutaneonlinecanada.net>, according to F. Hoffman-La Roche AG v. Nexton Limited, Ryabov Sergey, WIPO Case No. D2010-0101, the adjunction of generic words such as “buy”, “online” together with geographic references (for example “canada”) does not affect the likelihood of confusion.

- Concerning the disputed domain name <buyorlistatxenical120mg.net> according to Hoffman-La Roche Inc. v. WhoisGuard / Oursafeonlinepharmacy, John O’Sullivan, WIPO Case No. D2010-1023, “Orlistat is the generic term of the medication in question. The mere addition of the term “orlistat”, to the mark, does not change the overall impression of the designations as being domain names connected to the mark”. Also according Roche Products Limited v. Tycoon, WIPO Case No. D2011-1807, the addition of the term “120mg” “which refers to the prescribed does of the drug, is merely descriptive and bears no influence with regards to the confusing similarity resulting from such incorporation.

- Furthermore the Complainant’s use and registration of the ACCUTANE and XENICAL trademarks predates the Respondent’s registration of the disputed domain names.

(b) The Respondent has no rights or legitimate interests in respect of the disputed domain names:

- The Complainant has exclusive rights in ACCUTANE and XENICAL trademarks and has not granted any license, permission or authorization to the Respondent. Furthermore it is obvious that the Respondent uses the disputed domain names for commercial gain and with the purpose of capitalizing on the fame of the Complainant’s ACCUTANE and XENICAL trademarks.

- It appears that Internet users are redirected from both of the disputed domain names to pharmacies online: www.drugsonlinenoprescription.net offering “Generic Accutane” and “Generic Xenical” and to www.aidpharmacy.com offering “Accutane” and “Xenical”.

- According to F. Hoffman-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 legitimate interest in the domain name”.

- According to Pfizer Inc. v. Juan Gonzales, WIPO Case No. D2004-0589, “no good faith can be assumed 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”.

- There is no reason why the Respondent should have and rights or legitimate interest in such domain names.

(c) The disputed domain names were registered and is being used in bad faith:

- The disputed domain names were registered in bad faith since the Respondent upon registration (February 14, 2012) undoubtedly knew of the Complainant’s well-known products and/or ACCUTANE and XENICAL trademarks.

- The disputed domain names are being used in bad faith, which is obvious since when viewing the websites associated with the disputed domain names one can realize that the Respondent has attempted to attract Internet users to the Respondent’s websites by creating likelihood of confusion with the Complainant’s well-known ACCUTANE and XENICAL trademarks as to the source, affiliation and endorsement of the Respondent’s websites. According to Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784, bad faith is established when the “Respondent is using the domain names as a forwarding address to a for-profit on-line pharmacy”.

- According to Pfizer Inc. v. Juan Gonzales, WIPO Case No. D2004-0589, “using the Domain Name to promote and sell, for commercial gain, […] pharmaceutical products [such as “generic Accutane” and “generic Xenical”], which directly compete with Complainant’s genuine [ACCUTANE and XENICAL] […] is further evidence of Respondent’s bad faith registration and use of the Domain Name under paragraph 4(c)(iii) of the Policy.

- The Respondent by using the disputed domain names is intentionally misleading the consumers and confusing them by making them believe that the websites behind the disputed domain names are associated or recommended by the Complainant. As a result the Respondent may generate unjustified revenues and therefore is illegitimately capitalizing on the ACCUTANE and XENICAL trademarks of the Complainant.

B. Respondent

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

6. Discussion and Findings

A. Language of the Proceedings

The language of the registration agreements associated with the disputed domain names is Russian. The Complainant has provided a request for the administrative proceedings to be conducted in English. The Respondent has not responded to the Complaint or on the issue of the language of the proceedings.

In the Complaint the Complainant requests for English to be the language of the administrative proceedings. This is based on the fact that the websites associated with the disputed domain names are completely in English and that the Respondent involved is capable of communicating in English.

The Panel notes the request for English to be the language of the administrative proceedings in the Complaint. The Panel further notes that the Respondent has not filed any Response to the Complaint although duly notified in both languages.

The Panel finds that English should be the language of the administrative proceedings. The Panel finds that the Respondent being properly notified about the proceedings was given an opportunity to present his position on the matter of the language of the administrative proceedings; however, the Respondent has not communicated any response. Taking into account that the Respondent did not file any Response, that the Complaint was originally submitted in English, requesting for English to be the language of the administrative proceedings, and that there is evidence that the websites associated with the disputed domain names are in English the Panel finds it appropriate to conduct these proceedings in English in order to minimize any possible costs associated with the proceedings and to ensure that the proceedings are conducted in an efficient and timely manner.

B. Identical or Confusingly Similar

The Complainant has registered the ACCUTANE trademark in a number of jurisdictions. The Complainant submits that the disputed domain name <buyaccutaneonlinecanada.net>is confusingly similar to their trademark as the disputed domain name incorporates the ACCUTANE trademark in its entirety. As the word “accutane” has no meaning in the English language, the Panel finds the Complainant’s ACCUTANE trademark to be highly distinctive.

In relation to the incorporation in the disputed domain name <buyaccutaneonlinecanada.net>of generic English words “buy”, “online” and the geographic indicator “canada” the Panel finds that the inclusion of generic and/or geographic elements together with a trademark cannot contribute to distinguishing the disputed domain name from a registered trademark where such domain name incorporates a distinctive trademark. The Panel finds that the addition of the merely generic and descriptive elements “buy” and “online” as well as the geographic indicator “canada” in the disputed domain name does not avoid a finding of confusing similarity in this case. Indeed, the inclusion of the terms “buy” and “online” in the disputed domain name may increase the risk of confusion for the Internet users taking into account that the Respondent is using the disputed domain name to link to online pharmacies which offer“generic Accutane” and “Accutane” products for sale. The mere geographic indicator “canada” may also serve to further confuse Internet users that the websites associated with the disputed domain name <buyaccutaneonlinecanada.net> may actually indicate an operation of the Complainant in that country or an operation endorsed with and/or associated with the Complainant.

The Complainant also has registered the XENICAL trademark in a number of jurisdictions. The Complainant submits that the disputed domain name <buyorlistatxenical120mg.net>is confusingly similar to their trademark as the disputed domain name incorporates the XENICAL trademark in its entirety. As the word “xenical” has no meaning in the English language, the Panel finds the Complainant’s XENICAL trademark to be highly distinctive.

In relation to the incorporation in the disputed domain name of generic English word “buy”, a generic medical term “orlistat” and “120mg”, which is a generic prescription dose the Panel finds that the inclusion of generic elements together with a trademark cannot contribute to distinguishing the disputed domain name from a registered trademark where such domain name incorporates a distinctive trademark. The Panel finds that the addition of the merely generic and descriptive elements “buy”, “orlistat” and “120mg” in the disputed domain name does not avoid a finding of confusing similarity in this case. Indeed, the inclusion of the such terms in the disputed domain name may increase the risk of confusion for the Internet users taking into account that the Respondent is using the disputed domain name to link to online pharmacies, which offer “generic Xenical” and “Xenical” products for sale

It is clear in the Panel’s view that in the mind of an Internet user, the disputed domain names <buyaccutaneonlinecanada.net>and <buyorlistatxenical120mg.net> could be directly associated with the Complainant’s trademarks, which is likely to be confusing to the public as suggesting either an operation of the Complainant or one associated with or endorsed by it (see AT&T Corp. v. Amjad Kausar, WIPO Case No. D2003-0327). In fact addition of generic terms used in the disputed domain names words to well-known trademarks only serves to strengthen the assumption in the mind of Internet users that the disputed domain namesare associated or endorsed by the Complainant.

The Panel finds the incorporation of the generic words “buy” and “online” as well as the generic geographic indicator “canada” in the disputed domain name <buyaccutaneonlinecanada.net> does not prevent a finding of confusingly similarity to the Complainant’s ACCUTANE trademark.

The Panel also finds that due to incorporation of the generic words “buy”, “orlistat” and“120mg” the disputed domain name <buyorlistatxenical120mg.net> to be confusingly similar to the Complainant’s trademark XENICAL.

The Panel finds that the Complainant has satisfied its burden of proof under paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain names.

Even though the Respondent has not filed a Response to the Complaint and has not contested the Complainant’s assertions, the Panel will need to consider whether the Respondent’s use of the disputed domain names would indicate the Respondent’s rights or legitimate interests in the disputed domain names.

According to paragraph 4(c) of the Policy the following circumstances, if proved, demonstrate a respondent’s rights or legitimate interests in a domain name:

(i) respondent used or demonstrably prepared to use the domain name or corresponding name in connection with a bona fide offering of goods or services prior to notice of the dispute; or

(ii) respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark rights; or

(iii) respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the complainant’s marks.

A respondent may elect to show rights and legitimate interests, non-exhaustively, by producing proof under paragraphs 4(c)(i)-(iii) of the Policy.

By not responding to the Complainant’s contentions, the Respondent in these proceedings has not attempted to demonstrate its rights and legitimate interests.

The Panel further notes that, there is no evidence that before any notice of the dispute with the Complainant, the Respondent was using the disputed domain names for a bona fide offering of goods and services.

According to the documents submitted by the Complainant the disputed domain names link to online pharmacies that offer for sale “generic Accutane”, “Accutane”, “generic Xenical” and “Xenical” products. It is unclear to the Panel whether the Complainant duly authorized and of these products for sale in such fashion or whether they are counterfeit and/or imitations of the Complainant’s product sold under the ACCUTANE and XENICAL trademarks, however this is beyond the scope of deliberations of the Panel.

The current use of the dispute domain names, in the Panel’s view, cannot constitute a bona fide offering of goods and services in the circumstances of this case, so there is no evidence that the Respondent is able to show rights or legitimate interests in respect of the disputed domain names under paragraph 4(c)(i) of the Policy.

As to paragraph 4(c)(ii) of the Policy, there is no evidence that the Respondent has been commonly known by the disputed domain names.

The Panel recalls that the Respondent registered the disputed domain names on February 14, 2012. The Complainant asserts that the product under the ACCUTANE trademark has been registered since 1973 and that the product is widely known by the ACCUTANE trademark, which is particularly popular and has gained great publicity in North America. The Complainant also asserts that the product under the XENICAL trademark has been registered and in use since 1993 and that the product is widely known by the XENICAL trademark, which is recognized across the world and is registered in various jurisdictions.

Therefore as the disputed domain names have been registered significantly later and after the registration of the Complainant’s ACCUTANE and XENICAL trademarks, it is highly unlikely that the Respondent has been commonly known by the disputed domain names as provided in paragraph 4(c)(ii) of the Policy.

It is the Panel’s view, on the present facts, that the Respondent most likely registered the disputed domain names with full awareness of the Complainant’s trademarks as well as the goodwill associated with them. This is evidenced for example that both trademarks of the Complainant were reflected in registration of the disputed domain names by the Respondent and on the same date.

There is further evidence that the Respondent is possibly making commercial use from the disputed domain names (by linking to online pharmacies). The Respondent is using the disputed domain names to further misleadingly divert customers to other websites that are not associated with the Complainant. Therefore paragraph 4(c)(iii) of the Policy does not apply.

The Panel finds the Complainant has carried out its burden of proof to show that the Respondent has no rights or legitimate interests in the disputed domain names.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances are deemed to be evidence that a respondent has registered and is using a domain name in bad faith:

(i) circumstances indicating that the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainants who is the owner of the trademark or service mark or to a competitor of the Complainants, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or

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

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

The Complainant contends that the Respondent has violated the bad faith provision of the Policy because the disputed domain namesare used in connection with selling of medicines via an online pharmacy, including “generic Accutane”, “Accutane”, “generic Xenical” and “Xenical” products. The Complainant further contends that the disputed domain names were registered and used primarily for the purpose of confusing and misleading the public as to the affiliation of the disputed domain names as well as associated websites with the trademarks of the Complainant.

The Panel finds that the Respondent's use of the disputed domain names has created a risk of confusion with the Complainant’s products and trademarks as to the source, sponsorship, affiliation or endorsement of the disputed domain names and websites associated with them.

The Panel finds that the Complainant has presented evidence that the Respondent was and is in violation of the provisions of paragraph 4(b)(iv) of the Policy in respect of the disputed domain names.

The Panel holds that the Respondent has registered the disputed domain names in bad faith. In the circumstances, the Respondent must have known about the Complainant’s products and should have been aware of the trademarks of the Complainant. The Panel is not aware of the Respondent conducting any legitimate business activity using the disputed domain names. These findings, together with the finding that the Respondent has no rights or legitimate interests in the disputed domain names, lead the Panel to conclude that the disputed domain names were registered by the Respondent in bad faith.

The Panel also draws inferences of bad faith from the lack of any response from the Respondent to the Complaint.

The Panel finds the Complainant has shown that the Respondent registered and used the disputed domain names 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 domain names, <buyaccutaneonlinecanada.net> and <buyorlistatxenical120mg.net> be transferred to the Complainant.

Irina V. Savelieva

Sole Panelist

Dated: May 17, 2012

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