Hoffmann-La Roche Inc. v.
Peter c/o ROMB
Claim Number: FA0902001249769
PARTIES
Complainant is Hoffmann-La Roche Inc., (“Complainant”) represented by Elizabeth Atkins, of Lathrop
& Gage LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <buy-accutane.us>, registered with Directi
Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
Judge Ralph Ychnin as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
(the “Forum”) electronically on
On
By letter dated
On March 6, 2009, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of March 29, 2009 by which Respondent could
file a Response to the Complaint, was transmitted to Respondent in compliance
with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the
“Rules”).
Having received no Response from Respondent, the Forum transmitted to
the parties a Notification of Respondent Default.
On
Having reviewed the communications records, the Administrative Panel
(the “Panel”) finds that the Forum has discharged its responsibility under
Paragraph 2(a) of the Rules. Therefore,
the Panel may issue its decision based on the documents submitted and in
accordance with the Policy, the Rules, the Forum’s Supplemental Rules and any
rules and principles of law that the Panel deems applicable, without the
benefit of any Response from Respondent.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Respondent’s <buy-accutane.us> domain name is confusingly similar to Complainant’s ACCUTANE mark.
2.
Respondent does not have any rights or
legitimate interests in the <buy-accutane.us>
domain name.
3.
Respondent registered and used the <buy-accutane.us> domain name in bad
faith.
B. Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant, Hoffmann-La Roche Inc., is one
of the leading manufacturers of pharmaceutical and diagnostic products in the
world. Complainant has registered its
ACCUTANE mark, which is used in connection with its provision of acne
pharmaceuticals; with the United States Patent and Trademark Office (“USPTO”)
(Reg. No. 966,924 issued August 28, 1973).
Respondent registered the disputed <buy-accutane.us> domain name on
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel
to “decide a complaint on the basis of the statements and documents submitted
in accordance with the Policy, these Rules and any rules and principles of law
that it deems applicable.”
In view of
Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of the Complainant's undisputed
representations pursuant to Paragraphs 5(f), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate pursuant to Paragraph 14(b) of
the Rules. The Panel is entitled
to accept all reasonable allegations and inferences set forth in the Complaint
as true unless the evidence is clearly contradictory. See Vertical
Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb.
Forum July 31, 2000) (holding that the respondent’s failure to respond allows
all reasonable inferences of fact in the allegations of the complaint to be
deemed true); see also Talk City,
Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a
response, it is appropriate to accept as true all allegations of the
Complaint.”).
Paragraph 4(a) of the Policy requires that the Complainant must prove
each of the following three elements to obtain an order that a domain name
should be cancelled or transferred:
(1) the domain name registered by the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights; and
(2) the Respondent has no rights or legitimate
interests in respect of the domain name; and
(3) the domain name has been registered or is
being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution
Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent
as applicable in rendering its decision.
Identical
and/or Confusingly Similar
The Panel finds that Complainant’s registration of the ACCUTANE mark with the USPTO adequately confers sufficient rights in the mark upon Complainant pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA] mark pursuant to [UDRP] ¶ 4(a)(i).”); see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO).
Respondent’s <buy-accutane.us> domain name
contains Complainant’s ACCUTANE mark with the following changes: (1) a hyphen
has been added; (2) the generic word “buy” has been added; and (3) the
country-code top-level domain (“ccTLD”) “.us” has been added. The Panel finds that the addition of a ccTLD
is irrelevant. See Lifetouch, Inc. v. Fox Photographics,
FA 414667 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights
or Legitimate Interests
Complainant has asserted that Respondent lacks rights and legitimate interests in the disputed domain name. Once Complainant has set forth a prima facie case supporting its allegations, as it has in this case, the burden shifts to Respondent to prove that is does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of [UDRP] paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”).
There is no evidence in the record to conclude that Respondent owns any
service marks or trademarks that reflect the disputed domain name.
Therefore the Panel finds
that Respondent does not have rights and legitimate interests pursuant to
Policy ¶ 4(c)(i).
See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb.
Forum
Respondent is using the disputed domain name to resolve to a
parked website that features links to third-party websites offering products
and services in direct competition with Complainant. Respondent presumably receives referral fees
from the advertisers listed on its website.
Thus, the Panel finds that Respondent’s use of the disputed domain name
does not constitute a bona fide offering of goods and services pursuant
to Policy ¶ 4(c)(ii), or a legitimate noncommercial or fair use pursuant to
Policy ¶ 4(c)(iv). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent
to divert Internet users seeking Complainant's website to a website of
Respondent and for Respondent's benefit is not a bona fide offering of goods or
services under [UDRP] Policy ¶ 4(c)(i) and it is not a legitimate noncommercial
or fair use under [UDRP] Policy ¶ 4(c)(iii).”); see also Wells Fargo &
Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding
that using a domain name to direct Internet traffic to a website featuring
pop-up advertisements and links to various third-party websites is neither a bona
fide offering of goods or services under UDRP ¶ 4(c)(i)
nor a legitimate noncommercial or fair use under UDRP ¶ 4(c)(iii) because the
registrant presumably receives compensation for each misdirected Internet
user).
There is no evidence within the
record to suggest that Respondent is commonly known by the disputed domain name. The WHOIS information lists Respondent as “Peter c/o ROMB.”
Therefore, the Panel finds that Respondent lacks rights and
legitimate interests pursuant to Policy ¶ 4(c)(iii). See Gallup, Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration
or Use in Bad Faith
Respondent is using the disputed domain name to resolve to a
website that features links to websites offering products and services in
direct competition with Complainant. The
Panel therefore finds that Respondent’s use of the disputed domain name is
intended to disrupt the business of Complainant pursuant to Policy ¶ 4(b)(iii), and thus constitutes bad faith registration and use. See
Respondent’s use of Complainant’s mark within the disputed
domain name creates a likelihood of confusion as to the source and affiliation
of Respondent’s website and the disputed domain name. Further, Respondent is presumed to have
sought out commercial benefit through the accrual and receipt of click-through
referral fees. Therefore, the Panel
finds that Respondent engaged in bad faith registration and use of the disputed
domain name pursuant to Policy ¶ 4(b)(iv). See Asbury Auto. Group, Inc. v.
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <buy-accutane.us> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: April 20, 2009
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