WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Hoffmann-La Roche Inc. v. WhoisGuard Protected/Nils Bor, RX World Case No. D2008-1681 1. The Parties
The Complainant is Hoffmann-La Roche Inc., of Nutley, New Jersey, of United States of America, represented by Lathrop & Gage L.C., United States.
The Respondent is WhoisGuard Protected/Nils Bor, RX World, of Westchester, California and Nashville, Tenessee respectively, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 4, 2008. On November 4, 2008, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On November 4, 2008, eNom transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 10, 2008 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on November 10, 2008. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 November 17, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 7, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 9, 2008.
The Center appointed Harry L. Arkin as the sole panelist in this matter on January 15, 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 registered the trademark ACCUTANE in the United States Patent and Trademark Office (“USPTO”) as of August 28, 1973, (the domain name was created and registered initially in 1997) a copy of which certificate of registration was attached to the Complaint as exhibit 3. Said registration was renewed as of May 17, 2003 based upon a status report of the TARR printout from the USPTO. The use of the name (with connection with a dermatological preparation sold by the Complainant) by the Complainant has been continuous and has been the subject of medical, academic, and media publications.
The Complainant's parent company is the owner and registered the domain name in 1997. The disputed domain name, registered by the Respondent is registered on July 25, 2008. The Complainant, through its counsel, learned of the Respondent's unauthorized registration to the disputed domain name registered by the Respondent, and attempted to send a letter and email to the Respondent at its address indicated in the WhoIs record for that domain name. The letter was returned “undeliverable”. No evidence was presented as to whether the email was or was not delivered. Both of those communications request that the Respondent transfer the disputed domain name, i.e., that registered by the Respondent containing the word “accutane”, as described above, to the Complainant. No such transfer occurred.
When one enters the Respondent's domain name , they are automatically redirected to a separate webpage “” offering competing products, which includes the language “no prescription or doctor approved required”. 5. Parties' Contentions A. Complainant
(1) The factual contentions as set forth by the Complainant are essentially contention that:
(a) the domain name registered by the Respondent creates a “strong likelihood of confusion as to the source, sponsorship, association and/or endorsement of the Respondent's website associated with its registered domain name described above, since it contains the entire trademark of the Complainant.
(b) that the returned letter requesting the transfer as described above indicates that the further contact information being used by the Respondent is false and thus evidence of bad faith and in that the Complainant has never granted the Respondent a license to use the ACCUTANE trademark into any domain name, trade name or part of a copyright notice.
(c) that the Respondent's use of the disputed domain name further is deceptively identical and confusingly similar to the over thirty five (35) years, previously registered by the Complainant, trademark and domain name, nor has the Complainant licensed the Respondent to use the Complainant's trademark name described above.
(d) that the pharmacy distribution systems of ACCUTANE (in the United States) are subject to “the mandatory strict parameters of the iPLEDGE program of the FDA (United States Food and Drug Administration) for sales and distribution of ACCUTANE in the United States. The iPLEDGE program requires distribution only by prescription, i.e., from your doctor and prescriptions for isotretinoin may be filled only by pharmacy licensed in the United States and are regulated and accredited in the iPLEDGE program.
(2) The legal contentions made by the Complainant are:
(a) that the contact information provided by the Respondent is false, based upon the letter of the Complainant addressed to the Respondent being returned as “undeliverable” as evidence of bad faith as held in the Oxygen Media LLC v. Primary Source,WIPO Case No. D2000-0362.
(b) that the Respondent “may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it,” citing McCarthy on Trademarks and Unfair Competition para 23:50 (4th edition, 1998) a 1998 Treatise and General Electric Company v. CPIC NET and Hussayn Syed, WIPO Case No. D2001-0087 and other cases of authority.
(c) that bad faith was exhibited by the Respondent to create an impression of association with the Complainant, its products, and to attract business from the Complainant by misleading the direct members of the public to a generic substitute for the product of the Complainant thus causing damage the Complainant's reputation and business citing prior panel decision in another case.
(d) that the “use of the Respondent's mark in its domain name described above, conflicts with the rights and legal interest of the Complainant for the purpose of substituting products of the Complainant's company and links to online pharmacies” citing another panel decision as evidence of the Respondents bad faith and evidence of the lack of fair use and bona fides citing further prior UDRP decisions. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
The Panel finds the following: A. Identical or Confusingly Similar:
As shown by exhibit nine (9) of the Complaint, the Respondent's domain name incorporates the entire Complainant's mark merely adding the word “prices” in the disputed domain name it caused to be registered. There is thus no question, and the Panel thus finds that the Respondent's registered disputed domain name is confusingly similar within the meaning of they Policy paragraph 4 a (i), in which the Complainant has rights. B. Rights or Legitimate Interests:
The Complainant demonstrated by the exhibits to its Complaint that the Respondent does not offer the Complainant's trademarked product ACCUTANE, but rather only an unauthorised generic substitute for the Complainant's trademark product and has in the Panel's view violated the requirements of the U.S. Food and Drug Administration (FDA) by also advertising that for such generic substitute for the Complainant's product “no prescription or doctor approval (is) required” with respect to the use of the Complainant's trademark product or any of the generic substitutions for which the Respondent proposed to charge. This demonstrates the Respondent's lack of a legitimate, noncommercial interest or use in the disputed domain name. Moreover, the Complainant has not authorized the Respondent's use of ACCUTANE mark. As a result of the latter, the Panel finds that there is no legitimate interest and there are no rights of the Respondent in the domain name which the Respondent has registered. C. Registered and Used in Bad Faith:
The Complainant has never granted the Respondent a license to use the Complainant's mark and the Respondent thus is attempting to infringe upon the same by use of the domain name registered by the Complainant. The commercial purpose of the Respondent is clearly shown in the content of that disclosed when one enters the domain name of the Respondent as outlined above. Thus there is no question that by the use of the Complainant's trade name the Respondent attempts to promote products in competition to that of the Complainant through its link to an online pharmacy. The Panel thus finds that the registration of the disputed trade name by the Respondent and its use as a diversion to interested users seeking information relating to the trademark of the Complainant has been done 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.
Harry L. Arkin
Sole Panelist
Dated: February 6, 2009
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