WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hoffmann-La Roche Inc. v. Guillaume Ansart
Case No. D2008-1005
1. The Parties
The Complainant is Hoffmann-La Roche Inc., Nutley, New Jersey, United States of America, represented by Lathrop & Gage L.C., United States of America.
The Respondent is Guillaume Ansart, New York, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with EstDomains, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 2, 2008. On July 3, 2008, the Center transmitted by email to EstDomains, Inc. a request for registrar verification in connection with the domain name at issue. On July 4, 2008, EstDomains, Inc. 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 July 9, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was July 29, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 30, 2008.
The Center appointed William F. Hamilton as the sole panelist in this matter on August 5, 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
The Complainant, together with its affiliated companies, is one of the leading manufacturers of pharmaceutical and diagnostic products in the world. The ACCUTANE mark is protected as a trademark for a dermatological preparation in the United States and other countries. ACCUTANE is registered to the Complainant in the United States Patent and Trademark Office (“U.S.P.T.O.”), as of August 28, 1973 under Reg. No. 966,924, having a first use date of November 27, 1972.
The mark ACCUTANE designates a dermatological preparation, namely, a pharmaceutical product indicated for the treatment and prevention of acne. For many years the Complainant's mark ACCUTANE has been extensively promoted in print advertisements in medical journals, promotional materials, packaging, medical informational materials, television advertising and direct mailings. Sales of the Accutane dermatological preparation in the U.S. have exceeded hundreds of millions of dollars.
The Respondent registered the contested domain name on November 12, 2007.
5. Parties' Contentions
A. Complainant
The Complainant asserts that the Respondent has utilized the Complainant's well-known ACCUTANE mark in the contested domain name for commercial purposes. The Complainant contends that the Respondent is not licensed nor authorized to use the ACCUTANE mark and has no legitimate rights or interest in the domain name. The Complainant asserts that the contested domain name was registered and is being used in bad faith by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) the domain name is identical or confusingly similar to the Complainant's trademarks or service marks; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
The Complainant must carry its burden of proof by a preponderance of evidence. Bootie Brewing Company v. Deanna D. Ward and Grabebootie Inc.,WIPO Case No. D2003-0185.
A. Identical or Confusingly Similar
The contested domain name contains the entire ACCUTANE trademark of the Complainant. The mere addition of generic or descriptive words before and after the Complainant's mark does little to avoid the conclusion that the contested domain name is confusingly similar to the Complainant's ACCUTANCE mark. See e.g. Hoffmann-La Roche Inc. v. sasha rutova,WIPO Case No. D2008-0746 (transferring ); Hoffmann- La Roche Inc. v. Online Pharma,WIPO Case No. D2006-0628 (transferring ).
The addition of a generic word to a trademark will not avoid a determination that the contested domain name is confusingly similar. “The fact that a domain name wholly incorporates a Complainant's trademark is sufficient to establish identity or confusing similarity for the purpose of the Policy, despite the addition of other words to such marks.” Oki Data Americas, Inc. v. ASD, Inc,WIPO Case No. D2001-0903. The addition of a generic term does not serve to distinguish the domain name from the trademark, but may reinforce the association of the Complainant's trademark with a domain name. Viacom International Inc. v. Frank F. Jackson and Nancy Miller,WIPO Case No. D2003-0755; Caterpillar Inc. v. Roam the Planet, Ltd.,WIPO Case No. D2000-0275; Société Air France v. R Blue,WIPO Case No. D2005-0290.
The Panel concludes the Complainant has met its burden under paragraph 4(a)(i).
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out in particular, but without limitation, three circumstances which, if proved by the Respondent, shall be evidence of the Respondent's rights to or legitimate interests in the domain name for the purpose of paragraph 4(a)(ii), namely:
(i) before any notice of the dispute to the Respondent, the Respondent's use of, or demonstrable preparation to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has not provided any explanation for the use of the Complainant's mark. The Complainant has specifically alleged that the Respondent's use is not authorized and that the Respondent has never been a licensee of the Complainant. The Respondent's website is not a criticism site or a website designed to provide merely informational content with no commercial purpose. ACCUTANE is an invented and coined mark. There is no evidence that the Respondent is making a legitimate non-commercial or fair use of the disputed domain names without intent for commercial gain. See the Policy, paragraph 4(c)(iii).
The Complainant has established a prima facie case which has not been rebutted by the Respondent. Accordingly, the Complainant has established that the Respondent has no legitimate rights or interest in the contested domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith, namely:
(i) circumstances indicating that Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) 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; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product.
The Complainant must establish that the domain name was registered in bad faith and continues to be used in bad faith. Sanofi-aventis, Avnetis Pharmaceuticals Holdings Inc. v. Babak Azizzadeh,WIPO Case No. D2007-1727.
The Respondent has provided no explanation as to why the contested domain name was chosen. The Respondent is clearly aware of the widely known ACCUTANE mark. Indeed, the apparent commercial purpose of the “www.” site is to promote the sale of Accutane while also promoting competing and unrelated products.
Accordingly the Panel concludes that the contested domain name was registered and is being used in bad faith.
7. Decision
For all the foregoing 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.
William F. Hamilton
Sole Panelist
Dated: August 19, 2008
Full & Egal Universal Law Academy