WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Hoffmann-La Roche Inc. v. Kevin Chang Case No. D2008-1344 1. The Parties
Complainant is Hoffmann-La Roche Inc., Nutley, New Jersey, United States of America, represented by Lathrop & Gage L.C., United States of America.
Respondent is Kevin Chang, Flushing, New York, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Schlund + Partner. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 3, 2008. On September 3, 2008, the Center transmitted by email to Schlund + Partner a request for registrar verification in connection with the disputed domain name. On September 4, 2008, Schlund + Partner 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 September 9, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was September 29, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 30, 2008.
The Center appointed Bradley A. Slutsky as the sole panelist in this matter on October 13, 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 holds a federal registration in the United States Patent and Trademark Office (“U.S.P.T.O.”) for the trademark ACCUTANE for use in connection with dermatological preparation. The trademark was registered on August 28, 1973 under Reg. No. 966,924 and claims a date of first use of November 27, 1972.
Respondent registered the domain name on January 14, 2007. Complainant attached webpage printouts to its Complaint which show that Respondent's domain name contains Google pay-per-click advertisements, some of which lead to online sales of ACCUTANE and competitive products, including at least one site purporting to ship ACCUTANE and competitive products into the United States of America (“United States”) from Canada. 5. Parties' Contentions A. Complainant
Complainant asserts that it has a registered trademark for ACCUTANE, that ACCUTANE is not a word, and that Respondent's domain name is intended to capitalize on the goodwill in Complainant's trademark. Complainant asserts that Respondent is using the disputed domain name and Complainant's trademark to sell Complainant's product illegally (i.e., over the Internet from Canada in violation of FDA regulations) and to sell a generic competitor to Complainant's product. Complainant asserts that it has not granted Respondent a license to use the ACCUTANE trademark and wrote Respondent a cease and desist letter demanding that he cease using the trademark. The Certified Mail copy of the letter was returned as UNCLAIMED but a copy of the letter was sent by e-mail as well and there is no indication that there was any problem with the e-mail transmission. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Pursuant to Rule 15, panelists in domain name disputes “shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that [they] deem[] applicable”.
Under Rule 4(a), the Complainant must prove the following:
(i) Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) Respondent's domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Under Rule 4(a)(i) the Complainant must show that the disputed domain name is “identical or confusingly similar to a trademark or service mark in which the complainant has rights”.
The registration certificate attached to the Complaint demonstrates that Complainant has rights in the mark ACCUTANE. The dominant part of Respondent's domain name is “accutane”, which of course is identical to Complainant's trademark. The addition of “and acne” at the end of Respondent's domain name does not remove the confusing similarity between Respondent's domain name and Complainant's trademark. See United Consumers Club, Inc. v. Texas International Property Associates,WIPO Case No. D2007-0987 (“[n]umerous [UDRP] Panel decisions have established that the addition of words or letters to a mark used in a domain name does not alter the fact that the domain name is confusingly similar to the mark, 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23:50 (4th ed. 1998).” See General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087 (May 2, 2001).”). In fact, this addition may itself be the source of confusion. Hoffmann-LaRoche Inc. v. sasha rutova,WIPO Case No. D2008-0746 (“The addition of the word … ‘acne' [to the trademark ACCUTANE] even adds to the confusing similarity of the respective domain name and the trademark, since the[] word[] refer[s] … to … the disorder for which [accutane] is prescribed.”). The fact that Respondent registered his domain name in the suffix “.com” gTLD (and that “.com” thus appears at the end of the domain name) also does not remove the confusing similarity between Respondent's domain name and Complainant's trademark. See United Consumers Club, Inc. v. Texas International Property Associates,WIPO Case No. D2007-0987 (“The addition of the .com top level domain also does nothing to dispel the confusing similarity between Respondent's domain name and Complainant's trademark.”).
Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark or service mark in which Complainant has rights, and that Rule 4(a)(i) is satisfied. B. Rights or Legitimate Interests
The Complainant also must demonstrate that the Respondent has “no rights or legitimate interests in respect of the domain name”. Rule 4(a)(ii). “Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [the Respondent's] rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to [Respondent] of the dispute, [Respondent's] use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) [Respondent] (as an individual, business, or other organization) ha[s] been commonly known by the domain name, even if [Respondent has] acquired no trademark or service mark rights; or
(iii) [Respondent is] making a legitimate noncommercial 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.”
Policy, paragraph 4.c.
Complainant asserts that ACCUTANE is not a word and thus has no valid use other than in connection with Complainant's trademark. The Panel did not find ACCUTANE in the dictionary and is not aware of any use of the term other than in connection with Complainant's trademark. Respondent did not respond to the Complaint asserting that he or any organization with which he may be affiliated has been commonly known by the name . Accordingly, the Panel accepts that Respondent has not been commonly known by the domain name.
Respondent is making a commercial use of the disputed domain name in that Respondent is, at a minimum, generating pay-per-click revenue from the website. “The use of a domain name (that is identical or confusingly similar to a trademark) as a parking page that generates click through revenue typically does not give rise to rights or legitimate interests.” MAACO Enterprises, Inc. v. IP Admin / DNAV ASSOCS,WIPO Case No. D2008-0009. In addition, Complainant alleges that Respondent is involved in the sale of ACCUTANE from other sites that are linked on Respondent's website. Complainant does not explain how Respondent is connected to these other websites, but neither does Respondent deny the connection. If true, such use also would constitute a commercial use that does not give rise to rights or legitimate interests. See Hoffmann-La Roche Inc. v. O, Case No. D2007-1806. The sale of competitive products using the Complainant's trademark typically is not considered “bona fide” or “legitimate” or “fair” for purposes of paragraph 4(a)(ii). See Interstate National Dealer Services, Inc. v. Selwyn Colley,WIPO Case No. D2003-0934.
Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the domain name, and that Rule 4(a)(ii) is satisfied. C. Registered and Used in Bad Faith
Complainant also bears the burden of establishing that the “domain name has been registered and is being used in bad faith”. Policy, paragraph 4(a)(iii). As set forth in the Policy, paragraph 4(b):
“[T]he following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that [the Respondent has] registered or [the Respondent has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that 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] 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.”
There is no evidence that either of the first two factors applies. However, ACCUTANE is not a word and any use of it likely is meant to refer to Complainant's trademark. Complainant alleges, and Respondent does not deny, that Respondent is using the trademark without permission. The unauthorized use of Complainant's trademark to generate pay-per-click revenue or to sell competitive products constitutes bad faith under paragraphs 4(b)(iii) and (iv) of the Policy. See MAACO Enterprises, Inc. v. IP Admin / DNAV ASSOCS,WIPO Case No. D2008-0009; Hoffmann-LaRoche Inc. v. sasha rutova,WIPO Case No. D2008-0746.
The factors under paragraph 4(b) of the Policy are nonexclusive. Complainant has presented unrebutted evidence that potentially serious side effects can result from taking ACCUTANE without proper medical supervision. As a result, ACCUTANE is heavily regulated by the FDA and, according to evidence presented by Complainant, it is illegal to purchase ACCUTANE over the Internet and important it into the United States, and potentially dangerous to purchase the drug in this manner and take it without proper medical supervision. The Panel believes these unrebutted allegations also constitute evidence of bad faith. Hoffmann-La Roche Inc. v. Private Whois for RX-ACCUTANE.COM / LAKSH INTERNET SOLUTIONS PRIVATE LIMITED,WIPO Case No. D2008-0682 (“The evidence is clear that the sales of the ACCUTANE product or competitive products were made possible by the use of the website of the Respondent associated with the domain name in dispute to reach online pharmacies, which is illegal in the U.S. and that such sales result from the confusion created by the domain name in dispute and the well known Trademark of the Complainant. These activities have been considered as causing harm to the public and the Complainant and are showing use of the domain name in bad faith”).
Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith, and that Rule 4(a)(iii) is satisfied. 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.
Bradley A. Slutsky
Sole Panelist
Dated: October 27, 2008
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