F. Hoffmann-La Roche AG v. Namer Domain
Claim Number: FA1711001757165
Complainant is F. Hoffmann-La Roche AG ("Complainant"), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Namer Domain ("Respondent"), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <accutaneotc.us>, registered with NameCheap, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 3, 2017; the Forum received payment on November 10, 2017.
On Nov 06, 2017, NameCheap, Inc. confirmed by email to the Forum that the <accutaneotc.us> domain name(s) is/are 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 November 13, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 4, 2017 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@accutaneotc.us. Also on November 13, 2017, the Written Notice of the Complaint, notifying Respondent of the email 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 December 11, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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
Complainant, a major international pharmaceutical company, has used the ACCUTANE trademark since 1972 in connection with a product that treats acne and related skin conditions. The ACCUTANE mark is registered in various jurisdictions worldwide, and Complainant also claims common law rights in the mark.
The disputed domain name <accutaneotc.us> was registered by Respondent in September 2017. The domain name resolves to what appears to be an online pharmacy website that lists Complainant's product and many other pharmaceutical products. Complainant states that it has not authorized Respondent or the website owner to use its mark. Complainant contends that Respondent is not engaged in a bona fide nominative fair use of the ACCUTANE mark because Respondent is not actually offering authentic ACCUTANE products, it is using the mark to sell other products as well, and its website does not accurately disclose its relationship with Complainant. Complainant suggests that Respondent is likely profiting from the sale of other products that it is passing off as Complainant's, and possibly by collecting users' information for improper purposes. Complainant also notes that Respondent has also registered other domain names that incorporate the marks of well-known pharmaceutical products, evincing a pattern of bad faith registrations.
On these grounds Complainant contends that the disputed domain name <accutaneotc.us> is confusingly similar to Complainant's ACCUTANE mark; that Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was 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 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
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 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.").
The disputed domain name <accutaneotc.us> combines Complainant's registered ACCUTANE mark with the related generic term "otc" and the ".us" top-level domain. These additions do not diminish the similarity between the domain name and Complainant's mark. See, e.g., F. Hoffmann-La Roche AG v. Nickolay Volkoff / Teterevochki LTD, FA 1749745 (Forum Oct. 23, 2017) (finding <accutane365.us> confusingly similar to ACCUTANE); Eli Lilly & Co. v. Raul Mijares, D2015-0348 (WIPO Apr. 28, 2015) (finding <cialisotc.com> confusingly similar to CIALIS). The Panel therefore considers the disputed domain name to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name combines Complainant's registered mark with a related generic term ("otc" signifying "over-the-counter," or availability of a pharmaceutical product without a prescription) and the ".us" top-level domain. The domain name was registered without Complainant's authorization. The only apparent use that Respondent has made of the domain name is for a website that appears to market a wide range of pharmaceutical products, possibly including Complainant's product or generic or counterfeit versions of it, and may also be intended to collect users' personal information for improper purposes. Respondent's use of the mark clearly does not qualify as a nominative fair use. See, e.g., Brooks Sports, Inc. v. Brandon Gibson / Brooks Running Shoes, FA 1748607 (Forum Oct. 5, 2017).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered or has been used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent registered and is using a domain name that incorporates Complainant's trademark for a website that promotes other products. This behavior is indicative of bad faith registration and use under paragraphs 4(b)(iii) and 4(b)(iv) of the Policy. See, e.g., F. Hoffmann-La Roche AG v. Nickolay Volkoff / Teterevochki LTD, supra; Brooks Sports, Inc. v. Brandon Gibson / Brooks Running Shoes, supra. The Panel finds that the disputed domain name was registered or is being used in bad faith.
Having considered the three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <accutaneotc.us> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: December 11, 2017
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