F. Hoffmann-La Roche AG v. Nickolay Volkoff / Teterevochki LTD
Claim Number: FA1709001749745
Complainant is F. Hoffmann-La Roche AG (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Nickolay Volkoff / Teterevochki Ltd (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <accutane365.us>, registered with NameCheap, Inc.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 19, 2017; the Forum received payment on September 21, 2017.
On Sep 19, 2017, NameCheap, Inc. confirmed by e-mail to the Forum that the <accutane365.us> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the names. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 September 25, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 16, 2017 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@accutane365.us. Also on September 25, 2017, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On October 20, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
As set forth more fully below, Complainant owns a certain trademark and makes extensive use of it such that it has become famous.
Complainant is the owner of the distinctive and famous ACCUTANE, ROACCUTANE, and ROACCUTAN trademarks (collectively, the “ACCUTANE Marks”). At least as early as 1972, and long prior to the creation of the <Accutane365.us> domain, Complainant commenced use of the ACCUTANE Marks in connection with what has become one of the most well-known pharmaceutical preparations for the treatment of acne and related skin conditions.
Complainant’s company history dates back 120 years when Mr. Fritz Hoffman-La Roche founded a company that has become a pioneer of medical research and pharmaceutical production. Today, Complainant employs over 91,000 people worldwide and enjoyed sales of over US$48 Billion in 2015 alone. It maintains its headquarters in Switzerland but also has offices in various locations around the world including the United States of America, Canada, the United Kingdom, India, Brazil, Europe, South Africa, Pakistan, and others. Complainant’s parent company, Roche Holding AG, is publicly traded on various stock exchanges under the ticker symbol “AG” and currently has a market capitalization of over US$218 Billion.
Complainant‘s ACCUTANE Marks have been used in international commerce and these marks have gained both common-law and registered trademark rights. The Marks have been extensively used through both conventional advertising and, digitally, on such media such as WebMD.com, the American Osteopathic College of Dermatology website, and on Acne.org. The results of Complainant’s efforts can be seen in the press and consumer attention its ACCUTANE Marks have received over the years.
The ACCUTANE Marks are also aggressively protected through registration and enforcement. Complainant owns trademark registrations for the ACCUTANE Marks ACCUTANE, ROACCUTAN, and ROACCUTANE.
Respondent’s registration of the <Accutane365.us> domain violates the Policy.
(a) The <Accutane365.us> domain is identical or confusingly similar to one of the ACCUTANE Mark under Policy ¶4(a)(i). Apart from its addition of the generic word “cheap” and the use of the .com TLD Respondent’s <Accutane365.us> domain is identical, on its face, to Complainant’s registered ACCUTANE Mark.
It has been held, in decisions too numerous to mention, that the mere addition of generic terms does not avoid the creation of a confusingly similar domain name. See, e.g., Pepsico, Inc. v. Richard Leeds d/b/a NeonGecko, Inc., FA 117870 (Forum Sept. 7, 2002) (“The addition of the generic term ‘bottling’ does not create the distinction necessary to overcome the confusing similarity” between the pepsibottling.us domain and complainant’s PEPSI trademark); Comerica Bank v. Private Registration, WhoisGuardService.com, Case No. D2014-0529 (WIPO 2014) (In ordering the domain <comericaonline.com> transferred, the Panelist held that, “[i]n accordance with the consensus of past UDRP panels, the addition of descriptive suffixes and prefixes to a trademark does not normally serve to distinguish the resulting combination as a domain name from the trademark.”); Swarovski Aktiengesellschaft v. Simon Zhang, Case No. D2014-0583 (WIPO 2014) (Adding the word “save” to the SWAROVSKI mark held to “not change the conclusion that there is confusing similarity”); Disney Enterprises, Inc. v. ORIENTS RUGS & MORE / NA, FA1555495 (Forum Apr. 24, 2014) (Inserting the word “India” after the famous DISNEY trademark does “not diminish the similarity between the domain name and Complainant’s mark.”).
Similar to the above-cited decisions, Respondent in the present dispute initially attracts searchers to its website by using an identical copy of Complainant’s ACCUTANE Mark and merely adding the suffix “365” and utilizing the “.com” extension, thereby making visitors to its websites think that they are being linked to one of Complainant’s legitimate sites. See Focus Do It All Group v. Athanasios Sermbizis, Case No. D2000-0923 (WIPO 2000) (Complainant’s trademark rights and use of its mark “make it likely beyond real doubt that consumers who know that mark will think that ‘focus-do-it-all.com’ is their address.
Even if searchers discover they are not at Complainant’s site, they may be led to believe that Complainant endorsed, sponsored or affiliated itself with the goods and services offered at the <Accutane365.us> website. Respondent here uses the ACCUTANE Mark in its site’s domain name as well as in the title and body of its website. It only makes sense that if searchers see the Marks listed in the body of the web pages of the <Accutane365.us> domain and the products offered on that page reference or are related to those offered by Complainant, searchers will be confused and led to believe that Respondent’s website originates with Complainant or is at least affiliated with, endorsed or sponsored by Complainant.
At a minimum, the domain is confusingly similar to Complainant’s Mark as supported by past decisions involving the ACCUTANE Marks. See, e.g., F. Hoffmann-La Roche AG v. Marina Kovtun, Case No. D2016-0852 (WIPO 2016) (Confusion found where “[t]he disputed domain name <accutane365.click> consists of ‘accutane’ which is Complainant’s registered trademark in its entirety and ‘365’.”); F. Hoffmann-La Roche AG v. Roman Batalak, Case No. D2016-0672 (WIPO 2016) (buyaccutaneonline.org found confusingly similar to the ACCUTANE Mark).
Finally, the addition of the .us gTLD does nothing to alleviate confusion between the ACCUTANE Marks and the <Accutane365.us> domain. See, Orange Glo International, Inc. v. Jeff Blume, FA 118313 (Forum Oct. 4, 2002) (“Because the addition of a top-level domain, such as “.us,” is required of domain name registrants, it is inconsequential when conducting a Policy ¶4(a)(i) “confusingly similar” analysis”); Chan Luu Inc. v. hurry cater, FA1211001473620 (Forum Jan. 14, 2013), citing Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
(b) Respondent has no rights or legitimate interest in the <Accutane365.us> domain under Policy ¶4(a)(ii). Section 4(c) of the Policy sets out certain circumstances which, if proven by the evidence presented, may demonstrate Respondent’s rights or legitimate interests to the <Accutane365.us> domain. None of these circumstances apply to Respondent in the present dispute.
Respondent’s actions are not a bona fide offering of goods or services under Policy ¶4(c)(i). The <Accutane365.us> domain resolves to what appears to be a framed version of a third-party website known as the Online Pharmacy (the “Website”). Neither Respondent nor the owner of the Website are affiliated with, or authorized by Complainant to use the <Accutane365.us> domain but the Website gives the false impression that they are, in fact, so affiliated and authorized.
Respondent may claim that it is merely using Complainant’s ACCUTANE Mark in its domain to resolve to a page at the Website which features product bearing that brand. However, even assuming, arguendo, that the business operating at the Website does actually sell any authentic ACCUTANE branded products, it does not meet the bona fide use standards set out in the seminal case of Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. In Oki Data, the panel formulated a test for determining whether a reseller can be making a bona fide offering of goods and services and thus has a legitimate interest in the disputed domain name. Under this test, the conduct of a respondent must comply with all of the following requirements:
(1) Respondent must actually be offering the goods of Complainant;
(2) Respondent must use the website to sell only the trademarked goods of Complainant;
(3) the website of Respondent must accurately disclose the registrant’s relationship with the trademark owner; and
(4) Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.
Id.
In the present case, Respondent fails at least the first, second, and third prongs of the Oki Data test.
With regard to the first Oki Data prong, the page of the Website to which the <Accutane365.us> domain redirects prominently features the ACCUTANE Mark suggesting that Respondent is authorized to distribute official branded products under such Mark. Without extensive and expensive investigation, it is not possible to determine whether any goods are actually offered through the Website or if they are, in fact, legitimate ACCUTANE products. In fact, it has not been determined whether any products at all are sold at this site (it is possible that the entire Website is a mere scam designed to collect personal information from visitors). As such, Complainant believes that Respondent’s website is not “actually … offering the goods of Complainant” as required in Oki Data.
As to the second Oki Data prong, the <Accutane365.us> domain uses the ACCUTANE Mark to promote the sale of goods and services at the Website that are unrelated to Complainant. All pages of the Website have various menus and search fields which mention or lead to third-party products which are not made, sold, or licensed by Complainant including those intended for sufferers of arthritis, diabetes, hair loss, etc. A number of these are competing acne medications such as A-Ret® Gel, Aziderm® Cream, and others. The appearance of these links and search fields and of these products at the Website indicates that Respondent is intending to promote competing third-party products using Complainant’s ACCUTANE Mark. This is clearly outside the boundaries of the second Oki Data factor and is, in fact, a clear infringement of the ACCUTANE Mark under both United States and international trademark law. See, e.g., 4 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, § 24:70 (4th ed.); LEGO Juris A/S, supra, (Par. 4(a)(ii) of the Policy satisfied where “the fact that Respondent sells both Lego related products together with other products excludes the bona fide offering of goods or services….”); Bayerische Motoren Werke AG v. Manuel Zan, Cristian Morzan, WIPO Case No. D2015-0247 (domain bmwrepuestos.com (BMW “parts”) fails Oki Data test where “the website at this disputed domain name contains what appears to be a link to spare parts for other car brands (e.g., Dodge, Jeep and Chrysler).”); Clipsal Australia Pty Ltd v. DIGITCOM Technology, Claim No. FA 1417710 (Forum Jan. 6, 2012) (Citing Oki Data, Panel found that “Respondent does not meet the requirement that it must sell on the website only the trademarked goods to prevent a Respondent from using the trademark goods to attract buys and then guiding them towards buying the products other than the trademarked goods.”). In the present case, Respondent’s use of the <Accutane365.us> domain is not bona fide since it promotes the products and services of other companies, some of which compete with Complainant.
Finally, Respondent fails the third prong of the Oki Data test because there is no notice whatsoever on the Website which clearly discloses the lack of any relationship between Respondent or the Website owner and Complainant. The bottom of the Website contains the notation “Copyright © 2017 All Rights Reserved” but no information about the lack of any relationship with Complainant. Even the “About Us” page at the Website offers nothing to inform users that it is not related to Complainant or any of the other companies whose products are sold at the site. Given the appearance of the ACCUTANE Mark on the Website, internet searchers may not quickly and easily determine whether or not the site is that of an authorized – or even unauthorized – ACCUTANE distributor. In the F. Hoffmann-La Roche AG v. Roman Batalak decision, supra, a prior case by Complainant with facts nearly identical to the present dispute, the Panel held that “from the submitted screenshots it follows that Respondent uses the disputed domain name to resolve to an online pharmacy that also sells other goods than the trademarked goods, and without disclosing Respondent’s relationship with Complainant. The Panel finds that this makes 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.” See also, LEGO Juris A/S v. Whois Data Protection Sp. z o.o. / Mirek Nowakowski ROSTALCO Sp. z o.o., WIPO Case No. D2012-0607 (Par. 4(a)(ii) of the Policy satisfied where “Respondent’s website does not contain a disclaimer disclosing its relationship with the LEGO trademark owner.”); AB Electrolux v. Ong Bui Trung Kien, WIPO Case No. D2012-1091 (“Oki Data requires that the accused website accurately disclose its relationship to Complainant and many cases have found the absence of a disclaimer to be virtually dispositive against bona fide use.”))
Thus, Respondent fails at least the first, second, and third prongs of the Oki Data test. In light of the above, Respondent’s use of its <Accutane365.us> domain is not bona fide nor legitimate under both the Oki Data standards as well as United States and international laws pertaining to trademark infringement.
With respect to Policy ¶4(c)(ii), according to the Whois record for the disputed domain, Respondent is listed as Nickolay Volkoff / Teterevochki Ltd, a name having no bearing whatsoever to the ACCUTANE Mark. Further, there is no evidence that Respondent operates a legitimate business or other organization under this mark or name or that it owns any trademark or service mark rights in the ACCUTANE name.
Next, Respondent is not making a legitimate noncommercial or fair use of the <Accutane365.us> domain without intent for commercial gain, and so its actions do not fall within Policy ¶4(c)(iii). Instead, Respondent is using the domain name to confuse and misleadingly divert consumers, or to tarnish the ACCUTANE Marks. In Athanasios, supra, the Panel found that respondent’s use “could in no way be characterized as fair, because consumers would think that they were visiting a site of Complainant until they found that instead they were in a directory which would do Complainant potential harm”. Here, searchers for Complainant’s ACCUTANE products, who used the <Accutane365.us> domain, would be confused and think they were visiting a site of Complainant’s until they discovered that they had arrived at another website claiming to offer a variety of competing and other goods. Such use cannot be considered fair and it certainly does not fit into any accepted definition of fair use such as news reporting, providing political information, criticism, or even a fan site. Furthermore, Respondent cannot seriously claim that it is using the unique and coined ACCUTANE Marks for some generic meaning based on the function of the <Accutane365.us> domain as redirecting to a pharmacy site claiming to sell precisely that branded product.
Lastly, Respondent’s use has tarnished and diluted the ACCUTANE Marks. Respondent has diminished consumers’ capacity to associate the Mark with the quality goods offered by Complainant through use of the ACCUTANE Marks in association with an unrelated and suspicious site that claims to provide products which are competitive to Complainant’s quality branded goods. Respondent’s use creates the very real risk that Complainant’s Mark is not only being associated with numerous products and services not related to Complainant’s branded products, but also to products and services over which Complainant has no quality control.
(c) Respondent Registered And Used The <Accutane365.us> domain In Bad Faith Under Policy ¶4(a)(iii). The Policy clearly explains that bad faith can be found where a Respondent, by using a domain name, intentionally attempts to attract, for commercial gain, Internet searchers to its website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location. See Policy ¶4(b)(iv).
Respondent intentionally registered and used the Mark without consent from Complainant. Respondent was on actual notice of Complainant’s rights in its ACCUTANE Marks through Complainant’s extensive and long-standing use of the famous ACCUTANE Marks which long predates the common creation date of the <Accutane365.us> domain. See, F. Hoffmann-La Roche AG v. Binero AB, Netfirms AB / Igor Ivanov, Binero AB, Netfirms AB / Tigran Mosisyan, Private Person, Kseniya S Dzhabbarova, Kseniya Dzhabbarova, Wuxi Yilian LLC / Alexis Uvarovis, Flee Ventures 4, Vladimir Kiskov, Konayem Temirtassova, Kravtsov Alexander, Alexander Kravtsov, Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org / Danilo Krasko, Case No. D2016-0517 (WIPO 2016) (“Complainant has used these [ACCUTANE] trademarks decades before the registration of the Domain Names. The trademarks are also well known.”) ; F. Hoffmann-La Roche AG v. Domain Admin, Whois Privacy Corp. Case No. D2016-0353 (WIPO 2016) (“Respondent’s registration of the disputed domain names on January 28, 2016 is well after Complainant’s registration of the ACCUTANE and XENICAL marks which are internationally known.”). Respondent here is insidiously using the <Accutane365.us> domain to pass off the goods sold at the Website as ACCUTANE branded products and possibly to collect credit card and other personal information about users for improper purposes. Therefore, Respondent knowingly and intentionally used the Mark in violation of Complainant’s registered and common-law rights in the Mark.
Respondent is obtaining commercial gain from its use of the <Accutane365.us> domain. When a visitor inputs this domain and arrives at the Website it may purchase one of the products which appear there. In that event, Respondent receives compensation as the owner of the Website and third-party manufacturers of the products which appear there, also receive money. The panel in F. Hoffmann-La Roche AG v. Marina Kovtun, supra, held that Respondent’s use of the disputed domain name to resolve to “an online pharmacy that sells both the trademarked goods and other goods, without disclosing Respondent’s relationship with Complainant” constituted bad faith registration and use. Similarly in Amazon.com, Inc. v. Shafir, FA196119 (Forum Nov. 10, 2003), the panel stated that Respondent registered and used the domain name in bad faith because the disputed domain name was in direct competition with Complainant and gave the appearance of being affiliated with Complainant. See also, Roche Products Limited v. Andrew Palanich / Merchservice, Claim No. FA 1354115 (Forum, November 29, 2010) (“Once users arrive at the resolving website they are given the opportunity to buy the generic version of ACCUTANE from Complainant’s competitors. The Panel finds that this use supports findings of bad faith under Policy ¶4(b)(iii).”) As Respondent’s use of the <Accutane365.us> domain generates sales and profits at the Website which promotes third-party goods and services, some of which are competitive with those provided by Complainant, this alone constitutes commercial gain. See AllianceBernstein, LP v. Texas International Property Associates - NA NA, WIPO Case No. D2008-1230. Moreover, Respondent’s use of the <Accutane365.us> domain for such competitive purposes clearly demonstrates its bad faith intent to infringe upon Complainant’s famous trademark when it both registered and used the domain.
Of course, as the owner of the <Accutane365.us> domain, Respondent is entirely and solely responsible for its function and must bear the consequences of any content on the website to which the domain redirects. See Disney Enterprises, Inc. v. ll, FA1007001336979 (Forum Aug. 31, 2010) (Respondent acted in bad faith, despite its claimed lack of control over the content on its parked, pay-per-click website); MasterCard International Incorporated v. Banu Asum Kilich, WIPO Case No. D2009-1525 (Panel agreed with complainant’s assertion that “as the owner of the disputed domain name, [respondent] is responsible for the contents of the website, regardless of whether a third party profits from the links placed on the website.)
Additional evidence supporting Respondent’s bad faith is the fact that, as detailed in the Complaint, it has engaged in a pattern of registering domain names that copy well-known pharmaceutical brands.
Respondent’s ownership of other obviously infringing domain names is highly relevant to the consideration of bad faith in the present case since it shows that Respondent has engaged in a pattern of conduct designed to infringe upon the trademarks of others and is well-familiar with the practice of leveraging the fame of trademarks to earn revenue. See Toray Industries, Inc. v. Serge Yassievich, FA 998100 (Forum July 12, 2007) (“Respondent’s registration of the domain name at issue continues his pattern of preventing trademark owners from reflecting their marks in domain names, which represents bad faith registration or use pursuant to Policy ¶4(b)(ii).”); Boston Medical Center Corporation v. Ryan G Foo / PPA Media Services, FA1586917 (Forum Dec. 23, 2014) (“The Panel finds that Respondent’s history of bad faith supports Complainant’s contentions and therefore finds Respondent has engaged in a pattern of bad faith use and registration pursuant to Policy ¶4(b)(ii).”)
Even if the Panel does not determine that Respondent’s conduct demonstrates a pattern of conduct under Policy ¶4(b)(ii), the factors listed in ¶4(b) are not exhaustive. Therefore, this Panel may consider Respondent’s actions as evidence of its state of mind in the present dispute. Commonwealth Bank of Australia v. Howard Johns Consultancy P/L, Case No. DCO2014-0033 (WIPO, 2014) (“The examples of bad faith registration and use in paragraph 4(b) are not exhaustive of all circumstances from which such bad faith may be found…”).
Furthermore, Respondent’s registration of multiple domains that infringe on other well-known brands demonstrates its familiarity with such brands and its specific intent to copy Complainant’s ACCUTANE Marks, rather than use the word in any other manner
Finally, on August 30, 2017, Complainant’s Representative sent a demand letter to Respondent insisting that the improper use of the <Accutane365.us> domain promptly stop. In response, Respondent sent an email with the phrase “fuck off.” Id. Such a disrespectful and uncooperative response clearly indicates that Respondent has no hesitation to disrespect Complainant’s rights in this matter.
Thus, all of the factors under Policy ¶4(b)(iv) strongly demonstrate that Respondent has registered and used the <Accutane365.us> domain in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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."
Paragraph 4(a) of the Policy requires Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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.
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 (Forum July 31, 2000) (holding that 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.”).
Complainant claims rights in the ACCUTANE mark based upon its international registration of the mark under the Madrid Protocol (Reg. No. 840371, registered Dec. 6, 2004). The trademark registration shows the mark was also registered in Switzerland as well (Reg. No. 528329, registered Sep. 21, 2004). Registration of a mark under the Madrid Protocol is sufficient to establish rights in the mark under Policy ¶4(a)(i). See Vapiano AG v. Sex-Escort, FA 829126 (Forum Dec. 13, 2006) (“Complainant has registered the VAPIANO mark…with the Madrid Protocol for the International Registration of Marks. These trademark registrations sufficiently demonstrate Complainant’s rights in the mark pursuant to Policy ¶4(a)(i).”). Similarly, registration with a governmental national trademark agency, such as the Swiss Federal Institute of Intellectual Property, is sufficient to prove Policy ¶4(a)(i) rights in a mark even if Respondent is located in another country. See Glashütter Uhrenbetrieb GmbH v. li zilin / QQ869292929, FA 1575562 (Forum Sept. 23, 2014) (holding, “Trademark registrations with a governmental authority are sufficient to prove rights in a mark pursuant to Policy ¶4(a)(i)”). Complainant has rights in the ACCUTANE mark under Policy ¶4(a)(i).
Complainant claims the <accutane365.us> domain name is confusingly similar to the ACCUTANE mark because the domain name contains the mark in its entirety, merely adding the generic term “365” and the gTLD “.us.” The addition of a generic term such as “365” is insufficient to distinguish a domain name from a mark under Policy ¶4(a)(i). A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶4(a)(i).); see also Omnitel Pronto Italia S.p.A. v. Bella, D2000-1641 (WIPO Mar. 12, 2001) (finding that the contested <omnitel2000.com> domain name is confusingly similar to the OMNITEL trademark). Further, the addition of the “.us” ccTLD is irrelevant under the Policy. See Allied Bldg. Prods. Corp. v. Henkel, FA 827652 (Forum Dec. 11, 2006) (holding that “it is well established that the top-level domain, here “.us,” is insignificant with regard to UDRP analysis” when determining confusing similarity). The <accutane365.us> domain name is confusingly similar to the ACCUTANE mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶4(a)(ii) before the burden shifts to Respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant claims Respondent has no rights or legitimate interests in the <accutane365.us> domain name because Respondent is not commonly known by the disputed domain name and Complainant has not authorized Respondent to use the ACCUTANE mark in any way. Absent information in the record to the contrary, the WHOIS information and common sense allow the Panel to decide Respondent is not commonly known by the disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that Respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶[4(c)(iii)], as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The WHOIS information of record identifies Respondent as “Nickolay Volkoff / Teterevochki LTD.” There is no obvious connection between “Nickolay Volkoff / Teterevochki LTD.” and the disputed domain name. There is not a hint of a suggestion in the record to indicate Respondent was authorized to register a domain name using a complainant’s mark. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that Respondent was not commonly known by the disputed domain name where Complainant had never authorized Respondent to incorporate its NAVISTAR mark in any domain name registration). The Panel has no hesitation to find Respondent has not been commonly known by the <accutane365.us> domain name under Policy ¶4(c)(iii).
There is nothing in record which indicates Respondent has any rights in a mark identical to the disputed domain name which would serve to satisfy Policy ¶4(c)(i) (even though Complainant does not explicitly make the argument). See Pepsico, Inc. v. Becky, FA 117014 (Forum Sept. 3, 2002) (holding that because 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)). Respondent has the burden of proving such an argument. Respondent has no rights under Policy ¶4(c)(i).
Complainant claims Respondent’s lack of rights or legitimate interests in the <accutane365.us> domain name is demonstrated by its failure to use the name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. The domain name resolves to a website which prominently features the ACCUTANE mark in an attempt to confuse Internet users about the origin of the advertised goods. Respondent offers the products of other companies, some of which compete with Complainant. Complainant doubts the products advertised bearing Complainant’s mark are genuine, which precludes Respondent from acquiring any rights. Such use is not indicative of rights or legitimate interests under Policy ¶¶4(c)(ii) or (iv). See Nokia Corp. v. Eagle, FA 1125685 (Forum Feb. 7, 2008) (finding Respondent’s use of the disputed domain name to pass itself off as Complainant in order to advertise and sell unauthorized products of Complainant was not a bona fide offering of goods or services pursuant to Policy ¶[4(c)(ii)], or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶[4(c)(iv)]); see also General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶[4(c)(ii)] or a legitimate noncommercial or fair use pursuant to Policy ¶[4(c)(iv)].”). The website resolving from <accutane365.us> is a framed version of a third-party website known as “the Online Pharmacy” which displays the ACCUTANE mark and purports to sell goods and services, some of which compete with Complainant’s business. Respondent lacks rights and legitimate interests under Policy ¶¶4(c)(ii) and (iv).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent’s registration of the <accutane365.us> domain name is part of a pattern of bad faith domain name registration. UDRP Policy ¶4(b)(ii) provides “[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 [Respondent has] engaged in a pattern of such conduct…” A little bit of research indicates Complainant has registered the <accutane.com> domain name. This means Complainant cannot prevail under Policy ¶4(b)(ii). However, registration of multiple famous marks does fall under the penumbra of Policy ¶4(b). This constitutes bad faith registration and use under Policy ¶4(b).
Complainant claims Respondent uses the <accutane365.us> domain name to create confusion among Internet users to gain commercially. Using a disputed domain name to confuse Internet users about the domain name’s ownership and sell competing goods constitutes Policy ¶4(b)(iv) bad faith. See Toyota Motor Sales U.S.A. Inc. v. Clelland, FA 198018 (Forum Nov. 10, 2003) (“Respondent used <land-cruiser.com> to advertise its business, which sold goods in competition with Complainant. This establishes bad faith as defined in Policy ¶4(b)(iv).”). The domain name resolves to a website which displays the ACCUTANE mark and purports to sell pharmaceutical products which compete with those offered by Complainant. Respondent registered and used the domain name in bad faith under Policy ¶4(b)(iv).
Complainant claims Respondent had actual knowledge of Complainant's rights in the ACCUTANE mark. Respondent's web site offers products for sale which bear Complainant’s mark. It is hard to say Respondent didn’t know about the existence of the mark because Respondent is actually using it. Offering Complainant’s branded products (either genuine or counterfeit) and competing products at the resolving website shows Respondent had actual knowledge of Complainant's mark and rights. Respondent has registered multiple domain names incorporating pharmaceutical marks, indicating Respondent has more than a passing knowledge of the pharmaceuticals market. see Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name"). This Panel finds Respondent had actual knowledge of Complainant's rights in the ACCUTANE mark and falls under the penumbra of Policy ¶4(b).
Respondent had a very pithy initial reply of “Fuck you” in response to Complainant’s demand letter. This Panel takes that as tantamount to consent to transferring the disputed domain name in light of the fact it was the initial response to Complainant’s more polite demand letter.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the usTLD Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <accutane365.us> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, October 23, 2017
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