national arbitration forum

 

DECISION

 

Roche Products Limited v. alex shvako / qudi

Claim Number: FA1112001417951

 

PARTIES

Complainant is Roche Products Limited (“Complainant”), represented by Elizabeth Atkins of Lathrop & Gage LLP, New York, USA.  Respondent is alex shvako / qudi (“Respondent”), Ukraine.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue are <buyaccutane.us>, registered with eNom, Inc.

 

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.

 

Honorable Paul A. Dorf (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 30, 2011; the National Arbitration Forum received payment on December 1, 2011. The Forum received a hard copy of the Complaint on December 1, 2011.

 

On December 1, 2011, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <buyaccutane.us> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name.  eNom, Inc. has verified that Respondent is bound by the eNom, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).

 

On December 1, 2011, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 21, 2011 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On January 4, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.

 

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 makes the following assertions:

 

1.    Respondent’s <buyaccutane.us> domain name is confusingly similar to Complainant’s ROACCUTANE mark.

 

2.    Respondent does not have any rights or legitimate interests in the <buyaccutane.us> domain name.

 

3.    Respondent registered or used the <buyaccutane.us> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Roche Products Limited, is a research-focused healthcare group in the field of pharmaceuticals and diagnostics with global operations in more than 100 countries. Complainant owns trademark registrations for the ROACCUTANE mark with the United Kingdom Intellectual Property Office (“UKIPO”) (Reg. No. 1,229,969 registered Sept. 3, 1979), the Irish Patents Office (“IPO”) “Reg. No. 96,401 registered Mar. 9, 1979), and the Intellectual Property Corporation of Malaysia (“IPCM”) (Reg. No. 87/03256 registered July 27, 1994), among others.

 

Respondent,  alex shvako / qudi, registered the <buyaccutane.us> domain name on August 27, 2011. The disputed domain name resolves to an online commercial website offering Complainant’s ACCUTANE product for sale, and also offering other pharmaceutical products of third-party competitors of Complainant.

 

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 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)  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

 

Complainant alleges that it has rights in the ROACCUTANE mark by virtue of its trademark registrations with UKIPO (Reg. No. 1,229,969 registered Sept. 3, 1979), the IPO (Reg. No. 96,401 registered Mar. 9, 1979), and the IPCM (Reg. No. 87/03256 registered July 27, 1994), among others. The Panel finds that these trademark registrations successfully prove Complainant’s rights in the mark, even though Respondent does not live or operate where the mark is registered. See The Royal Bank of Scot. Group plc, Direct Line Ins. plc, & Privilege Ins. Co. Ltd. v. Demand Domains, c/o C.S.C., FA 714952 (Nat. Arb. Forum August 2, 2006) (holding that registration of the PRIVILEGE mark with the United Kingdom trademark authority sufficiently established the complainant’s rights in the mark under the Policy); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).

 

Complainant argues that Respondent’s <buyaccutane.us> domain name is confusingly similar to Complainant’s ROACCUTANE mark because Respondent only adds the generic term “buy,” deletes the letters “r” and “o,” and appends the country-code top-level domain (“gTLD”) “.us.” The Panel concludes that deleting letters from Complainant’s mark does not sufficiently alter the mark to distinguish the domain name under Policy ¶ 4(a)(i). See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”); see also Hallelujah Acres, Inc. v. Manila Indus., Inc., FA 805029 (Nat. Arb. Forum Nov. 15, 2006) (holding that the respondent’s <hacrs.com> domain name was confusingly similar to the complainant’s HACRES mark because it omitted the letter “e” from the mark and added the generic top-level domain “.com”). Further, the Panel finds that adding a generic term to the mark within the domain name does not distinguish the domain name from the mark.  See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under UDRP ¶ 4(a)(i)); see also Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end).  Finally, the Panel finds that the ccTLD “.us” has no effect of differentiating a disputed domain name from a mark or in preventing confusing similarity. See Ermenegildo Zegna Corp. v. Lo Prete, FA 192247 (Nat. Arb. Forum Oct. 14, 2003) (concluding that the country-code top-level domain “.us” fails to distinguish the disputed domain name from the mark).  

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant has alleged that Respondent does not have any rights or legitimate interests in the <buyaccutane.us> domain name. The burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii) when the Complainant makes a prima facie case in support of its allegations. The Panel finds that Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume Respondent does not have rights or legitimate interests in the disputed domain name. The Panel will continue to examine the evidence against the Policy ¶ 4(c) factors, however, to determine whether Respondent possesses rights and legitimate interests in the disputed domain name. See Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”); see also Domtar, Inc. v. Theriault, FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the [UDRP].”).

 

There is no evidence in the record to conclude that Respondent owns any service marks or trademarks that reflect the <buyaccutane.com> domain name. Therefore, the Panel finds that Respondent does not have rights or legitimate interests pursuant to Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.us> domain name); see also Pepsico, Inc. v. Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).

 

Complainant contends that it has not authorized Respondent to use the ROACCUTANE mark in any way and has not granted Respondent any license. The WHOIS information for the <buyaccutane.com> domain name lists the registrant as “alex shvako / qudi,” which the Panel determines reveals no nominal connection with the disputed domain name. Based on the available evidence and the lack of Respondent’s contentions otherwise, the Panel concludes that Respondent has not shown rights and legitimate interests in the disputed domain name according to Policy ¶ 4(c)(iii) as it is not commonly known by the disputed domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).

 

Complainant asserts that Respondent’s <buyaccutane.us> domain name resolves to a commercial website offering Complainant’s ACCUTANE product along with other pharmaceutical products of Complainant’s competitors. The Panel finds that exploiting Complainant’s mark to sell both Complainant’s and Complainant’s competitors’ goods is inconsistent with a bona fide offering of goods or services according to Policy ¶ 4(c)(ii) and a legitimate noncommercial or fair use under ¶ 4(c)(iv). See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (finding that use of the complainant’s mark to sell the complainant’s perfume, as well as other brands of perfume, is not bona fide use); see also G.D. Searle & Co. v. Pelham, FA 117911 (Nat. Arb. Forum Sept. 19, 2002) (finding that because the respondent is using the infringing domain name to sell prescription drugs, the panel could infer that the respondent is using the complainant’s mark to attract Internet users to its website for commercial benefit).  

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration OR Use in Bad Faith

 

Complainant alleges that Respondent’s <buyaccutane.us> domain name resolves to Respondent’s own website, located at the <vpxlpillstore.com> domain name, that sells Complainant’s ACCUTANE product and other drug products made by competing pharmaceutical companies. Complainant contends that Respondent’s sale of pharmaceuticals, whether manufactured by Complainant or its competitors, disrupts Complainant’s business by competing with Complainant and detracting from Complainant’s own possible sales. As a result, the Panel finds bad faith registration and use under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business.  The Panel finds this diversion is evidence of bad faith registration and use pursuant to [UDRP] ¶ 4(b)(iii).”); see also Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to UDRP ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website). 

 

Complainant contends that Respondent intentionally incorporated a portion of Complainant’s ROACCUTANE mark into the <buyaccutane.us> domain name in order to capitalize on the reputation of Complainant’s mark to attract consumers to its own online pharmaceutical website. Complainant argues that Respondent aimed to create a likelihood of confusion among consumers as to the source, sponsorship or affiliation of Respondent’s website by advertising both the identifying ROACCUTANE mark and Complainant’s related products on the resolving website. As Respondent’s resolving website is a commercial website offering products for sale, the Panel concludes that Respondent attempted to attract and mislead consumers through use of the disputed domain name for Respondent’s own profit, which is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that the respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell various watch brands where the respondent was not authorized to sell the complainant’s goods); see also Hewlett-Packard Co. v. Ali, FA 353151 (Nat. Arb. Forum Dec. 13, 2004) (“Respondent [used “HP” in its domain name] to benefit from the goodwill associated with Complainant’s HP marks and us[ed] the <hpdubai.com> domain name, in part, to provide products similar to those of Complainant.  Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to [UDRP] ¶ 4(b)(iv).”).

 

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 <buyaccutane.us> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Honorable Paul A. Dorf (Ret.), Panelist

Dated:  January 13, 2012

 

 

 

 

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