WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION F. Hoffmann-La Roche AG v. Tommy Lee Case No. D2008-1346 1. The Parties
1.1 The Complainant is F. Hoffmann-La Roche AG, of Basel, Switzerland, represented by Jérôme Rhein, Switzerland.
1.2 The Respondent is Tommy Lee, of Colorado Springs, Colorado, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with GoD, Inc. (the “Registrar”). 3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 3, 2008. On September 4, 2008, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the domain name at issue. On September 4, 2008, GoD, 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”).
3.2 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 10, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was September 30, 2008. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on October 1, 2008.
3.3 The Center appointed Matthew S. Harris as the sole panelist in this matter on October 8, 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
4.1 The Complainant is together with its affiliated companies one of the world's leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics having global operations in more than 100 countries.
4.2 The Complainant uses the terms “roaccutan” and “roaccutane” for a drug indicated for the treatment of severe nodular and/or inflammatory acne conglobata or recalcitrant acne. The drug is also known as “Accutane” in the United States.
4.3 The Complainant is the owner of the trade marks ROACCUTAN and ROACCUTANE in various countries. For example, it is the owner of International Trade Mark registration No. R450 092 for the word “roaccutan”, dated August 21, 1979. This international mark designates various countries including Cuba, Russia, France, Italy, and Portugal. It is also the owner of the United Kingdom registered trade mark No. 1119969 for the word “roaccuante”, dated September 3, 1979.
4.4 The Respondent would appear to be an individual based in the United States.
4.5 The Domain Name was registered on September 18, 2003.
4.6 In September 2008, the Domain Name was being used for a website that offers to sell ACCUTANE. That website continues to operate at the date of this decision. It claims to “sell and ship only original Roches Accutane/Roaccutane (Isotretinoin) that manufactured by Hoffman-Roche, a Swiss Company. Roche in U.S., Nutley N.J.” However, it offers for sale not only Roche product but also “Accutane (generic)” manufactured by Mega. On the left hand side of the home page of the website operating from the Domain Name is a long list of “Top Selling Drugs”.
4.7 The website appears to offer these various drugs for sale in US dollars but carries the statements “FREE Express to UK address” and “we cannot ship to the U.S.A.” No company name appears on the website but at the bottom of each page is the addresss “3508 Van Teylingen Dr Colorado Springs CO 80917 USA” and what appears to be a fax number with a Nevada state area code. 5. Parties' Contentions A. Complainant
5.1 The Complainant contends that the Domain Name involves a “purposeful misspelling” of its ROACCUTANE mark and reference is made to Wachovia Corporation v. Peter Carrington,WIPO Case No. D2002-0775.
5.2 The Complainant also refers to a decision of the Portuguese Industrial Property on October 19, 2006, refusing Portuguese Trade Mark Application No. 393.098 for ROACNE in Class 5 due to the possibility of confusion with the Complainant's mark ROACCUTAN.
5.3 The Complainant, therefore, claims that the Domain Name is confusingly similar to a trade mark of the Complainant.
5.4 The Complainant makes reference to the fact that the Respondent's website is an on-line pharmacy offering both ACCUTANE and other competitive medications such as Cleocin T, Diane-35, Differin or Eryacne. Citing the decisions of Pfizer Inc. v. jg a/k/a Josh Green,WIPO Case No. D2004-0784 and Pfizer Inc v. Juan Gonzales,WIPO Case No. D2004-0589, the Complainant contends that “[t]here is no reason why the Respondent should have any right or interest in such domain name”.
5.5 On the issue of bad faith registration and use the Complainant contains that at the time of registration “the [Respondent] had, no doubt, knowledge of the Complainant's well-known product/mark ROACCUTAN”. Further the Respondent is said to be “intentionally attempting (for commercial purpose) to attract Internet users to the Respondent's website, by creating a likelihood of confusion with the Complainant's well-known mark as to the source, affiliation and endorsement of Respondent's website”.
5.6 The content of the website is also said to be such as to “create a likelihood of readers being mislead into thinking that the website has the Complainant's approval”. Reference is made again to Pfizer Inc. v. jg a/k/a Josh Green,WIPO Case No. D2004-0784, which is said to be authority for the proposition that where a respondent is using a domain name as a forwarding address to a for-profit on-line pharmacy and using the domain name to promote the sale of products in competition with a complainant's products, that there is bad faith use.
5.7 Lastly, the Complainant contends that the Respondent “by directing Internet users to an on-line pharmacy which sells pharmaceuticals without requiring proof of a physical examination by a physician …, the use of the [Domain Name] is potentially harmful to the health of Internet users, who purchase ROACCUTAN products under the mistaken impression that they are dealing with the Complainant”. B. Respondent
5.8 The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
6.1 This Panel does not find that there are any exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.
6.2 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects under the Rules set out in paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
6.3 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel “shall draw such inferences therefrom as it considers appropriate”. A. Identical or Confusingly Similar
6.4 The Complainant contends that the Domain Name is a misspelling of its ROACCUTANE mark. Certainly the term “roacne” has no obvious meaning in its own right. The Panel is not convinced that the term comprises a “misspelling” of the Complainant's mark. However, it does accepts that a reasonable interpretation of this word is that it is a portmanteau comprising a contraction of the terms “roaccutane” and “acne”, and that “acne” is the condition that the Complainant's product is designed to treat. It also accepts that the “roacne” term can be produced by removing the central “cuta” letter sequence from the ROACCUTANE mark.
6.5 Whilst not determinative, the Panel also notes that the Portugusese trade mark registry has previously rejected an application for the mark ROACNE due to its similarity to the Complainant's ROACCUTAN mark. Further, the Panel also takes notice of the fact that there have been a large number of decisions under the Policy that have suggested that the confusing similarity test involves a “low threshold” (see for example, Asset Marketing Systems, LLC v. Silver Lining,WIPO Case No. D2005-0560 and Linear Technology Corporation v. Spiral Matrix,WIPO Case No. D2006-0699).
6.6 In the circumstances, the Panel accepts that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights and that the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
6.7 The Panel accepts the Complainant's contentions that the Respondent is using the Domain Name for an on-line pharmacy. It also seems reasonably clear from the content of the website operating from the Domain Name that the Respondent does not otherwise use the term “roacne” to describe or refer to its business.
6.8 Essentially, therefore, the Respondent is using a domain name that is similar to a trade mark for the purposes of selling goods under that trade mark. The legitimacy of this activity was addressed in Oki Data Americas, Inc v. ASD, Inc,WIPO Case No. D2001-0903. As paragraph 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (the “WIPO Overview”) explains, this has been an issue of some debate. Nevertheless, the view that is most favourable to domain name registrants and which is described in the WIPO Overview as the “majority view”, is that if such use is ever to give rise to a right or legitimate interest then the use of the domain name must comply with a number of minimal requirements. These include the actual offering of goods and services at issue, the use of the site only to sell only the trade marked goods and the site accurately disclosing the registrant's relationship with the trade mark owner. The respondent must also not try to corner the market in domain names that reflect the trade mark.
6.9 The Respondent has not attempted to claim a right or legitimate interest on this basis in this case. This is significant, since as this Panel held in Owens Corning v. NA, WIPO Case D2007-1143, it is for a respondent to raise and bring forward evidence in support of any such claim1. Further, it seems clear that even if it had done so it could not have fulfilled the necessary requirements.
6.10 First, as the Complainant correctly asserts, the Respondent is clearly selling products other than ROACCUTANE, ROACCUTAN or ACCUTANE on the website. It is not, therefore, only selling the trade marked products.
6.11 Second, in the opinion of the Panel the website does not sufficiently disclose the nature of the relationship that exists (or does not exist) with the website owner. As this Panel previously held in Sanofi-aventis v. M72 Hosting,WIPO Case No. D2007-1937, if a website is to adequately describe the nature of the relationship between the domain name and website owner and the trade mark owner, it is necessary that the website fully and honestly discloses who is operating the website and what the purpose of the website is. In this case the purpose of the website is clear i.e. to operate as an on-line pharmacy. However, it is far from clear who exactly is operating that website. An address is given, but no company or individual trader is identified. There is also the fact that the fax number provided appears to relate to a US state that is different from the address.
6.12 Last, and by no means least, it is highly questionable whether a respondent can claim a reseller right when the domain name comprises the sort of a distortion of a complainant's mark as has been used in the current case.
6.13 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
6.14 In this case the Panel accepts that the Domain Name is being used in bad faith. Given the similarity of the Domain Name with the Complainant's mark and the fact that the Respondent is not using the “roacne” term for any other purpose than as a domain name, the only realistic conclusion is that the Domain Name is being used with the hope and the expectation that this will cause confusion on the part of internet users and that this will result in greater numbers of Internet users visiting the Respondent's on-line pharmacy. This is bad faith use within the meaning of paragraph 4(b)(iv) of the Policy.
6.15 The Panel is less convinced that Internet users on seeing the Respondent's website will necessarily come to the conclusion that the website has the Complainant's approval. However, even if on reaching the site it is clear that the Domain Name is being used by an entity unconnected with the Complainant, the Panel still believes that there would in this case be bad faith use.
6.16 The Complainant also needs to show that in this case the registration of the Domain Name was in bad faith. The Complainant does not address this aspect of the Policy requirements in any detail. It does little more than to note that at the time of registration “the defendant had, no doubt, knowledge of the Complainant's well known product/ mark ROACCUTAN[E]”. The date of registration was over five years ago and the Complainant has not brought forward any evidence as to the reputation of the Complainant's mark at the date of registration, nor for that matter any evidence as to how the Domain Name has been used prior to August 2008.
6.17 Nevertheless, in the absence of any statement, argument or evidence to the contrary from the Respondent regarding the circumstances of registration, the Panel is prepared to infer from the present use of the Domain Name that it was with such use or at least a similar use in mind that the Domain Name was registered. Accordingly, the Panel concludes on balance that the Domain Name was also registered in bad faith.
6.18 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy.
6.19 In coming to this conclusion the Panel has not taken any notice of the Complainant's assertion by the Complainant that by directing Internet users to an on-line pharmacy that sells pharmaceuticals without requiring proof of a physical examination by a physician, the Respondent is endangering Internet users' health. For the reasons that are set out in greater detail in the decisions in Sanofi-aventis v. M72 Hosting,WIPO Case No. D2007-1937 and Sanofi-aventis v. Rx World, Nils Bor,WIPO Case No. D2007-1773, the Panel does not consider this to be relevant to the issue of bad faith registration and use. 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.
Matthew S. Harris
Sole Panelist
Dated: October 13, 2008
1 This aspect of the case has also been cited with approval in various decisions including Dell Inc. v. Radvar Computers LLC, WIPO Case No. D2007-1420; Compagnie Gervais Danone v. yunengdonglishangmao(beijing)youxiangongsi,WIPO Case No. D2007-1918; Philip Morris Products S.A. v. Keyword Marketing, Inc.,WIPO Case No. D2008-0031; Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., Ermenegildo Zegna Corporation v. Varentinuo inc. reg by ,WIPO Case No. D2008-0186; and Deutsche Post AG v. Yonghua Zhang,WIPO Case No. D2008-0326.
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