WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hoffmann-La Roche Inc. v. Alisia Uzun
Case No. D2008-1138
1. The Parties
The Complainant is Hoffmann-La Roche Inc., New Jersey, United States of America, of United States of America, represented by Lathrop & Gage L.C., United States of America.
The Respondent is Alisia Uzun, Birmingham, Alabama, United States of America.
2. The Domain Name and Registrar
The disputed domain name is is registered with Registrar Company, Inc., f/k/a B Digital Communications, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 25, 2008. On July 28, 2008, the Center transmitted by email to Registrar Company, Inc., a request for registrar verification in connection with the domain name at issue. After several reminders, on August 7, 2008, Registrar Company, Inc., transmitted by email to the Center its verification response, confirming that 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 Paragraphs (2) (a) and 4(a) of the Rules, the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 11, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was August 31, 2008, Respondent did not submit any response. Accordingly, the Center notified Respondent's default on September 1, 2008.
The Panel finds that on the available record, the Center discharged its obligations under the Rules paragraph 2 a).
The Center appointed John E. Kidd as the sole panelist in this matter on September 12, 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.
All efforts by the Center to contact Respondent at its designated contact address were returned as undeliverable.
4. Factual Background
Complainant, together with its affiliated companies (“Roche”), is one of the leading manufacturers of pharmaceutical and diagnostic products in the world. The ACCUTANE mark of Roche is protected as a trademark for a dermatological preparation in the United States (“U.S.” or United States”). ACCUTANE is registered to 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.
Complainant's trademark ACCUTANE is an invented and arbitrary coined mark with a worldwide reputation. The mark ACCUTANE designates a dermatological preparation, namely, an isotretinoin pharmaceutical product indicated for the treatment and prevention of acne. For many years, Complainant's mark ACCUTANE had been extensively promoted, in print advertisement in medical journals, promotional materials, packaging, medical information materials, television advertising and direct mailings. The unrefuted evidence establishes that sales of ACCUTANE dermatological preparation in the U.S. have exceeded hundreds of millions of dollars.
Roche's parent company, F. Hoffman-La Roche AG (collectively, “Roche”), owns and has registered the domain name, . When an Internet user types the domain name in a web browser's URL address window, he or she is directed to Roche's web site located at “/products” through which Complainant's customers obtain information as to the ACCUTANE dermatological preparation product manufactured and sold by Roche.
After learning of Respondent's unauthorized registration of a domain name incorporating the mark ACCUTANE, on April 11, 2008, Roche, through its counsel, sent a letter by email to Respondent's addresses indicated in the WhoIs record for the disputed domain name. In the April 11 communication, Roche's counsel advised Respondent that the registration of the disputed domain name infringed Roche's trademark rights and requested that Respondent transfer the disputed domain name to Roche. The letter sent to Respondent by Certified Mail Return Receipt Requested was returned to Complainant's attorneys as “unable to forward.” The letter transmitted by email to Respondent was returned to Complainant's attorneys as “Undeliverable.”
The domain name in dispute incorporates the whole of Complainant's mark and adds the descriptive terms “prescription” and “online.” Respondent's domain name uses Complainant's registered trademark ACCUTANE as part of domain name through which ACCUTANE “Brand and Generic” (and a competitive generic form) is provided to purchasers on “”.
As of March 1, 2006, all prescriptions for the sales and distribution of ACCUTANE, its generic equivalents, or any other isotretinoin product in(to) the United States are subject to the mandatory strict parameters of the iPLEDGE program of the U.S. Food and Drug Administration (“FDA”), which sets criteria for the only permissible distribution system of ACCUTANE and any other isotretinoin product in(to) the United States. Because of ACCUTANE's teratogenicity and high risk of birth defects and other serious side effects, ACCUTANE is approved for marketing only under a special, restricted distribution program approved by the FDA. More specifically, the product labeling insert approved by the FDA contains the following language: “Accutane must not be prescribed, dispensed, or otherwise obtained through the Internet or any other means outside of the iPLEDGE program. Only FDA-approved Accutane products must be distributed, prescribed, dispensed, and used. Patients must fill Accutane prescriptions only at U.S. licensed pharmacies.”
In addition, prescribing doctors and patients, wholesalers and pharmacies must also be registered under iPLEDGE and comply with all of the iPLEDGE program requirements in order to distribute and dispense ACCUTANE or any other isotretinoin product in(to) the United States.
5. Parties Contentions
A. Complainant
Respondent's sales are in violation of the FDA's iPLEDGE program. It is clear that ACCUTANE must not be prescribed, dispensed, or otherwise obtained through the Internet or any other means outside the iPLEDGE program.
Respondent's domain name is identical or confusingly similar to Complainant's ACCUTANE trademark within the meaning of the Policy, paragraph 4(a)(i).
Respondent has no rights or legitimate interests in the name . “Accutane” is an arbitrary, invented word and has no valid use other than in connection with Complainant's trademark. Complainant has not authorized the Respondent to use its trademark ACCUTANE or to incorporate the trademark into any domain name.
Respondent's uses of Complainant's incontestable ACCUTANE trademark are without authorization or permission from Complainant.
Based upon Respondent's web site, it is clear that neither Respondent nor its web site has been commonly known by the domain name pursuant to the Policy, paragraph 4(c)(ii).
Since all communication efforts with Respondent are “undeliverable,” this indicates that the contact information being used by Respondent is false.
Furthermore, Complainant has never granted Respondent a license to use the ACCUTANE mark. In fact, Respondent's use of the disputed domain name indicates that Respondent's domain name was selected and is being used because of the goodwill created by Complainant in the ACCUTANE trademark.
Respondent seeks to use that recognition to divert Internet users seeking Complainant's web site to a website wholly unrelated to Roche. Respondent's website has no affiliation or connection whatsoever with Complainant and such uses of Complainant's mark ACCUTANE are not only clear indications of bad faith on the part of Respondent, but, as stated above, do not comply with the iPLEDGE program, the only permissible way that ACCUTANE or any other isotretinoin product may be sold in the U.S.
Respondent's true purpose in registering the disputed domain name which incorporates Complainant's mark ACCUTANE in its entirety is to capitalize on the reputation of Complainant's ACCUTANE mark by diverting Internet users seeking Complainant's web site to Respondent's own web site which solicits orders for Complainant's ACCUTANE prescription drug, as well as providing a competitor's generic version of isotretinoin.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Respondent has incorporated Complainant's registered trademark in its entirety in the domain name in dispute. Under the Policy, courts and numerous UDRP panels, this is generally sufficient to establish that the domain name in dispute is identical or confusingly similar. See Rhino Entertainment Company v. DomainS, WIPO Case No. D2006-0968 and SurePayroll, Inc. v. Texas International Property Associates,WIPO Case No. D2007-0464. The Panel finds that inclusion of the generic words “prescription-online” does not add distinctive matter so as to distinguish it from Complainant's trademark. Generally, a user of a trademark may not avoid likely confusion by appropriating another's trademark and adding descriptive or non-distinctive matter to it. Thus, the descriptive language added here, namely “prescription” and “online” does not prevent likelihood of confusion in this case. The Panel finds that the domain name in dispute is confusingly similar to Complainant's ACCUTANE mark pursuant to the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
In the present case, the Panel finds that it is unrefuted and inescapable that Respondent's appropriation and use of Complainant's trademark is a clear attempt to create and benefit from consumer confusion regarding the association between Respondent's activities and Complainant's bona fide business.
The Panel finds that Respondent is not using the domain name in dispute in connection with a bona fide offering of goods or services, but rather is using it to divert Internet users seeking Complainant's website associated with the domain name or the ACCUTANE dermatological preparation product to an unrelated web site which uses the Complainant's trademark ACCUTANE without license or authorization of any kind.
The Panel also finds under the circumstances of this case that as Respondent's use intentionally trades on the fame of Complainant's trademark, it cannot constitute a bona fide offering of goods and services. See Madonna Ciccone p/k/a Madonna v. Dan Parisi and “M”,WIPO Case No. D2000-0847.
The Panel concludes that Respondent's unauthorized use of the disputed domain name to solicit sales of Complainant's ACCUTANE dermatological preparation product and to supply various isotretinoin products, including a competitor's generic product(s) through a website making use of the ACCUTANE mark without permission from the trademark owner, with such sales in any event being in violation of the FDA's iPLEDGE program because “ACCUTANE must not be prescribed, dispensed, or otherwise obtained through the Internet…” as discussed above, making such activities on and through the domain name in dispute not a bona fide offering of goods and services under the Policy, paragraph 4(c)(i).
The Panel also finds that there is no evidence that Respondent is making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain. See the Policy, paragraph 4(c)(iii). The Panel concludes that Respondent is trading on Complainant's goodwill and is using the domain name in dispute to offer and sell Complainant's ACCUTANE prescription drug and a competitive isotretinoin product without a license or authorization from Complainant, to the detriment of Complainant, the trademark owner. Such activity does not represent a bona fide offering of goods or service under the Policy, paragraph 4(c)(i) or a legitimate, noncommercial or fair use under the Policy, paragraph 4(c)(iii).
The evidence suggests that the domain name in dispute is being used to promote products of Complainant's competitors, and provides links to online pharmacies. Respondent's use of the disputed domain name therefore demonstrates Respondent's lack of a legitimate noncommercial interest in, or fair use of, the domain name. Hoffmann-La Roche Inc. v. Samuel Teodorek,WIPO Case No. D2007-1814, citing Pfizer Inc. v. jg a/k/a Josh Green,WIPO Case No. D2004-0784. “Respondent is likely receiving some pecuniary benefit…in consideration of directing traffic to [sales] site[s]”. See The Bear Stearns Companies Inc. v. Darryl Pope,WIPO Case No. D2007-0593 (citing COMSAT Corporation v. Ronald Isaacs,WIPO Case No. D2004-1082).
The unauthorized appropriation of another's trademark in a domain name and the commercial use of the corresponding website cannot under the circumstances of this case confer rights or legitimate interests upon Respondent. See, e.g. America Online, Inc. v. Xianfeng Fu,WIPO Case No. D2000-1374 (“it would be unconscionable to find… a bona fide offering of services in a respondent's operation of [its] web-site using a domain name which is confusingly similar to the complainant's mark and for the same business”), cited in Hoffmann-La Roche Inc. v. Aneko Bohner,WIPO Case No. D2006-0629”. Hoffman-La Roche Inc. v. Samuel Teodorek,WIPO Case No. D2007-1814.
In view of the above, under Policy, paragraph 4(a)(ii), the Panel finds that the Respondent has no rights or legitimate interest in the domain name in dispute.
C. Registered and Used in Bad Faith
The Panel finds that Respondent has shown bad faith in registering and using the domain name in dispute since (a) the domain name is not a word, whereas the trademark ACCUTANE is an invented and coined mark by Complainant, with a worldwide reputation; (b) Respondent appears to have has supplied false contact information, which, in itself, is evidence of bad faith; (c) Complainant has not granted Respondent permission or a license of any kind to use its trademark ACCUTANE; (d) sales by Respondent are in clear violation of the FDA iPLEDGE program, which is the only permissible way isotretinoin products may be sold in or to the United States of America; and, (e) unauthorized use of Complainant's trademark to promote sales of Complainant's ACCUTANE and also to promote competing products demonstrates bad faith use.
Under the facts of this case, the Panel cannot envision any plausible good faith basis upon which the Respondent could have concluded that it was free to register and use a domain name including the Complainant's trademark, ACCUTANE and finds that the above evidence is sufficient to establish that Respondent registered and used the domain name in dispute in bad faith pursuant to the Policy, paragraph 4(a)(iii).
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.
John E. Kidd
Sole Panelist
Dated: September 26, 2008
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