WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hoffmann-La Roche Inc. v. Dean Gagnon
Case No. D2007-1832
1. The Parties
The Complainant is Hoffmann-La Roche Inc., of New Jersey, United States of America, represented by Lathrop & Gage L.C., of United States of America.
The Respondent is Dean Gagnon, of Calgary, Canada.
2. The Domain Name and Registrar
The disputed domain name is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 11, 2007. On December 12, 2007, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On December 18, 2007, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 December 19, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was January 8, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 9, 2008.
The Center appointed Francisco Castillo-Chac�n as the sole panelist in this matter on January 14, 2008. 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
Complainant is the well known pharmaceutical company called Hoffman-La Roche Inc. (“Roche” or “the Complainant”). Roche is the owner of the registered trademark ACCUTANE, a trademark that was first used in November 27, 1972 and registered on August 28, 1973. The trademark ACCUTANE is used by Roche to identify a dermatological preparation mainly used for the treatment of acne.
Complainant submitted evidence to demonstrate that the trademark ACCUTANE is widely known in the pharmaceutical world and that it has been the subject of abundant media coverage, Complainant also submitted evidence that demonstrates ACCUTANE trademark’s fame.
The Panel does not know with certainty the type of business Respondent runs, as Respondent failed to reply on time to this action. The website related to the disputed domain name contains links to several different categories of goods and services, including videos, hair loss products, on line pharmacy and acne treatment products amongst others.
According to the information submitted by the Complainant, the Respondent registered the domain name on June 18, 2007. The website features a list of links to a variety of goods and services offered by what appear to be third parties.
5. Parties’ Contentions
A. Complainant
Complainant contends that it is one of the leading manufacturers of pharmaceutical and diagnostic products in the world.
Complainant further contends that for years it has extensively promoted ACCUTANE in print advertisements, medical journals, promotional materials, packaging, medical information materials, television advertising and direct mailing spending hundreds of millions of dollars, all this promotion has lead to the “fame and celebrity” of the trademark.
Complainant is the owner of the domain name which it uses to promote the dermatological preparation associated which said trademark and also to inform the public about the benefits and risks associated with taking said product.
Complainant contends that as of March 1, 2006 the sale and distribution of ACCUTANE is subject to the parameters set forth by the “iPLEDGE” program, which dictates among other things the legal method through which ACCUTANE is prescribed and dispensed to patients, contending that pharmacies and wholesalers are also bound by the “iPLEDGE” program.
Complainant contends that each of the three elements set forth in paragraph 4(a) of the Uniform Policy are present and applicable to this dispute.
The domain name is confusingly similar to the trademark ACCUTANE which Complainant owns. The disputed domain name contains the entire trademark ACCUTANE which can create a likelihood of confusion as to the source, sponsorship, association or endorsement of the Respondent by the Complainant.
Respondent has no rights or legitimate interest in the domain name and has not been commonly known by the domain name. Complainant argues that Respondent has no legitimate interest in the domain name ; ACCUTANE, is not a common word, it has no meaning and has no valid use other than in connection with the Complainant’s trademark. Respondent is not a licensee, distributor or is in any way associated with the Complainant. Complainant has not authorized the use of the trademark by the Respondent. Respondent’s use of the disputed domain name is purely disreputable. The fact that Respondent offers ACCUTANE, and what respondent calls a generic version of ACCUTANE, causes confusion to the public as to the product that is being offered. Complainant argues that Respondent offers non FDA approved depiction of ACCUTANE, also that the offered product is not approved by the FDA. All of which Complainant argues confuses purchasers as to the source of the product, and whether they are buying an FDA approved product or a non FDA approved version, or a generic product, which damages the trademark owner.
Respondent use of the trademark ACCUTANE is without permission or authorization from Complainant. In addition the sale of ACCUTANE on line by Respondent may be a violation of U.S. Law.
Respondent’s use of Complainant trademark on its domain name, seeks to capitalize on the reputation associated with the trademark ACCUTANE. Respondent attempts to divert Internet users seeking Complainant’s website to a site wholly unrelated to Roche. Respondent’s use of the trademark ACCUTANE is a clear indication of bad faith, and may infringe U.S. law.
Respondent’s use and appropriation of the famous trademark ACCUTANE is a clear attempt to create and benefit from consumer confusion. As such it is clear that Respondent has no rights or legitimate interest in the domain name.
Respondent has not used the domain name for a bona fide offering of goods and services. Respondent is using the disputed domain name to divert Internet users seeking Complainant’s website associated with “www.” to an unrelated website which used the famous trademark without authorization. Respondent’s use of the famous trademark in the disputed domain name is evidence of Respondent’s intent to trade upon the reputation of ACCUTANE. Respondent use of the trademark is infringing therefore it cannot be considered bona fide. Respondent’s unauthorized use of the disputed domain name to solicit sales of ACCUTANE, while using a non FDA approved isotretinoin product and packaging while listing Complainant’s trademark without permission and the sales of prescription only medicine without a prescription, are illegal and cannot constitute a bona fide offering of goods or services.
Respondent is not making a legitimate noncommercial or fair use of the domain name without intent for commercial gain. Complainant submits there is no evidence that Respondent is making a legitimate non commercial or fair use of the domain name without intent for commercial gain.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name comprises four elements. Namely the preposition “about”, then a dash, followed by the Complainant’s trademark, and finally the generic “.info” suffix.
The Panel agrees with the Complainant that the trademark ACCUTANE is not a common word, and therefore its use only makes sense in connection to the product to which it is associated. As a general rule the mere addition of common terms cannot eliminate the similarity. Furthermore in the present case the choice of common elements made by the Respondent far from lessening the likelihood of confusion, adds to it. As the word “about” when used as a preposition, as it is the case in the disputed domain name, implies that the website is concerning, associated or in regards to a certain product, in this case ACCUTANE, to which the generic “.info” suffix has been added.
The Panel finds that the domain name is confusingly similar to the trademark ACCUTANE, to which the Complainant has rights.
B. Rights or Legitimate Interests
Under the Rules, a complainant has the obligation to prove its assertions. Under paragraph 4(a)(ii) of the Policy complainant has to prove a negative which will be more difficult. Therefore the Panel finds in line with UDRP precedent that the obligation of the complainant is to make a prima facie case, having done so, the burden of proof shifts to the respondent.
The Panel finds that Complainant has established prima facie that Respondent has no rights or legitimate interests in the domain name at issue, and that Respondent having defaulted in this case, the Panel has no option but to make a decision based solely on the Complaint and filed evidence.
Paragraph 4(c) of the Policy sets forth a list of circumstances under which, if proved, will demonstrate Respondent’s rights or legitimates interests, none of which appear to apply in this case. On the contrary, it appears that Respondent is attracting Internet users to its website by using the Complainant’s trademark. That website then displays multiple links to third party commercial websites. Such use of the domain name is not bona fide. The Panel finds that Respondent has no rights or legitimate interests in the domain name.
C. Registered and Used in Bad Faith
Having met paragraph 4(a)(i) and 4(a)(ii) is not enough under the Policy, Complainant has to prove Respondent registered and used the domain name in bad faith. The Policy in paragraph 4(b) lists circumstances that are evidence of bad faith. The Panel finds that the circumstances of this case and the use of the disputed domain name as defined in the section above fall squarely within paragraph 4(c)(iv) of the Policy.
The Panel further finds that due to the distinctiveness and fame of the Complainant’s trademark, the fact that Respondent is using it in the disputed domain name cannot be accidental and further indicates bad faith.
The Panel finds that the domain name was registered and is being used in bad faith.
7. Decision
For the aforementioned reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, be transferred to the Complainant.
Francisco Castillo-Chac�n
Sole Panelist
Date: January 28, 2008
Full & Egal Universal Law Academy