WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Hoffmann-La Roche Inc. v. Doroven / WhoisGuard Protected Case No. D2010-0176 1. The Parties
The Complainant is Hoffmann-La Roche Inc. of New Jersey, United States of America, represented by Lathrop & Gage L.C. of United States of America.
The Respondent is Doroven / WhoisGuard Protected of Nasusuka, Thailand and California, United States of America (“US”). 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 February 5, 2010. On February 8, 2010, the Center transmitted by email to eNom. a request for registrar verification in connection with the disputed Domain Name. On February 8, 2010, eNom, transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and provided the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on February 13, 2010. The Center verified that the Complaint amended 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 February 15, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 7, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 8, 2010.
The Center appointed Ada L. Redondo Aguilera as the sole Panelist in this matter on March 12, 2010. 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 is one of the leading researcher and developers of pharmaceutical and diagnostics products in the world. The ACCUTANE trademark belongs to the Complainant according to the Certificate of Registration issued by the United States Patent and Trademark Office (“U.S.P.T.O”) of August 28, 1973 under registration number 966,924. The trademark has been registered in the International class 005 and US Class 018, for dermatological preparations, and this trademark has been consistently renewed according to the records of the U.S.P.T.O. The Complainant presented the documents above mentioned as evidence in these proceedings.
The Disputed Domain Name was registered on March 25, 2009 with eNom. 5. Parties' Contentions A. Complainant
The Complainant has argued in these proceedings that it is one of the leading researcher and developers world wide among the pharmaceutical and diagnostics products Companies. The ACCUTANE trademark belongs to the Complainant according to the Certificate of Registration issued by the U.S.P.T.O of August 28, 1973 under registration number 966,924. The trademark has been registered in the International class 005 and US Class 018, for dermatological preparations, and has been renewed according to the records of the U.S.P.T.O. The Complainant presented as evidence to these proceedings copies of the documents above mentioned.
The Complainant argues that the trademark ACCUTANE has acquired prestige in the dermatological field in the United States of America, due to its promotional and sales efforts and investments since 1972.
The Complainant also mentioned that its parent company is the owner of the domain name that redirects to the official website “” where the Complainant's costumers obtain information about Accutane, a dermatological preparation product of the Complainant. The Complainant provided, as evidence for this matter, copies of the WhoIs records of the domain names and
The Complainant argues that the Disputed Domain Name contains the Complainant's trademark ACCUTANE that it is therefore similar to the trademark, and also argues that the inclusion of the other words “acne” and “treatment” etc, does not alter the fact that the Disputed Domain Name is confusingly similar to the trademark.
The Complainant submitted evidence to prove its exclusive intellectual property rights in the trademark ACCUTANE and argues that it has never given any authorization, license, permission or any other kind of grant of the use of the trademark ACCUTANE to the Respondent, including permission to use it as a part of a domain name, such as the Disputed Domain Name.
Additionally, the Complainant argues that it is obvious that the Respondent uses the Disputed Domain Name for commercial gain and with the purpose to obtain a financial profit out of the goodwill associated with the Complainant's mark ACCUTANE.
The Complainant also argues that based upon the Respondent's website, it is clear that the Respondent has not been commonly known by the Disputed Domain Name pursuant to the Policy, paragraph 4(c)(ii).
The Complainant argues that the Respondent's only reason in registering and using the Disputed Domain Name is to benefit from the reputation of the trademark ACCUTANE and illegitimately trade on its fame for commercial gain and profit by publishing links and information about competitive products and in connection with other trademarks. The Complainant states that the Respondent offers both a competitor's generic form of isotretinoin as well as other competitive third-party products.
The Complainant also argues that since March 1, 2006 all prescriptions for the sales and distribution of Accutane and any other isotretinoin products in the United States are subject to the mandatory strict parameters of the iPLEDGE program of the U.S Food and Drug Administration, which sets forth the only permissible distribution of Accutane. The Respondent's webpage published at the Disputed Domain Name is unauthorized and, not meet the US regulations according to the Complainant, its sales on this site do.
According to the Complainant the product Accutane cannot be commercialized or sold on the Internet, outside the iPLEDGE program, and the Respondent's webpage is not authorized. Also, the Complainant argues that the registration and use of the Disputed Domain Name by the Respondent, that includes the trademark ACCUTANE, may lead consumers to believe that the Respondent is the source of the Accutane product or that the Respondent's website is affiliated or sponsored by the Complainant. The Complainant argues that such use by the Respondent may lead consumers to believe that the website reached from is an official site, owned and operated by the Complainant.
The Complainant argues that in the present case, the Respondent's appropriation and use of the Complainant's widely-known trademark is a clear attempt to create and benefit from consumer confusion regarding the Respondent's website at the and the Complainant's business.
The Respondent is not using the Disputed Domain Name in order to prepare for or be involved in a bona fide offering of goods or services, nor any noncommercial or fair use. To the contrary, the Complainant argues that the Disputed Domain Name is being used to promote the Complainant's competitors' products and links to online pharmacies.
The Complainant concludes that there is no reason why the Respondent should have any rights or interests in the Disputed Domain Name , because the Respondent has never obtained from the Complainant, any authorization, license or any other kind of permission to use the trademark ACCUTANE in the Disputed Domain Name.
Further, the Complainant claims that the Disputed Domain Name was registered and is being used in bad faith according to the following direct quote from the Complainant.
The Respondent's true purpose in registering the [Disputed Domain Name] which incorporate[s] the Complainant's mark ACCUTANE in its entirety is to capitalize on the reputation of the Complainant's ACCUTANE mark by diverting Internet users seeking Roche group web site(s) to the Respondent's own web sites which solicit orders for third party pharmaceutical products and through which the Complainant's ACCUTANE prescription drug can be purchased through a linked site, as discussed above. The bad faith of the Respondent is […] evident from the fact that:
(a) “Accutaneacnetreatment”[…] [is] not [a] word.
(b) The Complainant's trademark ACCUTANE is an invented and coined mark that has an extremely strong reputation in the United States;
(c) There exists no relationship between the Respondent and the Complainant, and the Complainant has not given the Respondent permission to use its famous mark ACCUTANE in domain names or in copyright notices or to use it in any manner on the Respondent's websites. Importantly, such sales are in clear violation of the iPLEDGE program, which is the only permissible way isotretinoin products may be sold in (to) the USA, such sales also violate the language in the FDA-approved product insert, specifically [the prohibition of] Internet sales of ACCUTANE.
(d) By using the [Disputed Domain Name ] to sell the Accutane product or any third party isotretinoin product, as these are prohibited from sale by Internet pharmacies by the iPLEDGE regulations without permission or license of any kind, the Respondent has intentionally attempted to attract for financial gain Internet users to the Respondent's websites by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the Respondent's websites.”
In conclusion the Complainant claims that the Respondent's use of the Disputed Domain Name is intentionally misleading consumers and confusing them so as to attract them to other websites making them believe that the websites behind those links are associated or recommended by the Complainant. As a result, the Complainant states that the Respondent may generate unjustified revenues for each click-through by on-line consumers of the sponsored links and is also selling a product without fulfilling the US regulations.
For all the foregoing reasons, the Complainant argues that the Respondent registered and has being using the Disputed Domain Name in bad faith, according to the Policy. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Because the Respondent did not respond to the Complaint, the Panel must decide the dispute based upon the Complaint.
Under paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements of its case in order to obtain the requested remedies:
(i) The Respondent's Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) The Respondent's Domain Name has been registered and is being used in bad faith.
The Panel considers each element in the following order. A. Identical or Confusingly Similar.
The Complainant has shown in these proceedings its trademark ownership of the ACCUTANE trademark issued by the U.S.P.T.O on August 28, 1973 and that it has been renewed since then.
The Complainant argues that the Disputed Domain Name is confusingly similar to its trademark.
The Panel must decide whether or not the Disputed Domain Name is confusingly similar to the Complainant's trademark. This Panel finds that the Disputed Domain Name is confusingly similar to the Complainant's trademark ACCUTANE because it entirely incorporates the ACCUTANE trademark and additional words such as “acne” and “treatment” that are descriptive and generic words that do not add or do not give any distinctiveness to the Disputed Domain Name. In fact, these words describe the Complainant's Accutane product, and thus this could confuse Internet users and mislead consumers to think they are visiting the official website of the Complainant, which is specializes in acne treatment when in fact it is not an official website.
The Panel considers the use of the words “acne” and “treatment” together are only describing the product Accutane, and do not give any distinctiveness to the Disputed Domain Name. In Roche Products Inc. v. The Heller Group,WIPO Case No. D2007-1822 the disputed domain name was , and the panel's opinion was: “[T]he disputed domain name includes the Complainant's trademark in its entirety, together with the generic word “treatment”. The addition of the word “treatment” does not dispel the confusing similarity between the domain name and the trademark. Rather, it simply strengthens the association by having people think that it relates to medical or psychotherepeutic treatment using Complainant's product [Valium]. The disputed domain name is therefore confusingly similar to the Complainant's trademark. It is well-established that domain name suffixes are disregarded for the purpose of this comparison. The Panel concludes that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights.” This Panel shares the mentioned opinion because in the present case, we are facing similar conditions. The Complainant's trademark ACCUTANE has been fully incorporated into the Disputed Domain Name along with descriptive words such as “acne” and “treatment”. Consumers may be confused that the Disputed Domain Name relates to the trademark ACCUTANE in relation with “acne treatment”. For this Panel, the words “acne” and “treatment” do not give any distinctiveness to the Disputed Domain Name, in fact those words are describing the trademark ACCUTANE and the Disputed Domain Name is therefore confusingly similar to the Complainant's trademark.
For the foregoing reasons, this Panel finds that the Disputed Domain Name is similar to the Complainant's trademark, and Policy paragraph 4(a)(i) is fulfilled. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exhaustive list of circumstances that can demonstrate the existence of a respondent's rights or legitimate interests in a domain name.
The Complainant must prove that the Respondent has no rights or legitimate interests in the Disputed Domain Name, and then the Respondent must forward a Response to prove that it has rights or legitimate interests in the Disputed Domain Name. In these proceedings, we face the fact that the Respondent did not answer, did not provide any evidence on which the Panel could rely, to confirm the existence of rights or legitimate interests by the Respondent.
Where a complainant has made the necessary allegations and has provided sufficient evidence to establish a prima facie case, it is then for the respondent to come forward with evidence of its rights or legitimate interests, if such evidence exists.
In these proceedings, first, the Complainant proved its trademark rights in the word ACCUTANE, second, the Complainant asserts that it has not licensed or otherwise authorized the Respondent to use the Complainant's ACCUTANE trademark and register it as a domain name. The trademark ACCUTANE, and the name, “accutane” is an original term, and thus it is not likely that the Respondent could be known by or use that name as a proper name (either as an individuals or corporation). Also, the Respondent did not present evidence which the Panel could rely that serves to prove the existence of any rights or legitimate interests in its favor.
According to the Complainant the Disputed Domain Name is being used to promote products of the Complainant's competitors, and links to online pharmacies. The Respondent's commercial use of the Disputed Domain Name therefore demonstrates the Respondent's lack of legitimate noncommercial or fair use of the Domain Name.
The Panel confirms that the website at the Disputed Domain Name has published sales links that are promoting not only the Complainant's Accutane product but also other products that are not related to Accutane. Consumers could be mislead and also confused in relation to the products they are acquiring, believing that they are acquiring original products when this is not the case. Also, according to the Complaint, Accutane cannot be commercialized or sold on the Internet, outside the iPLEDGE program, the Respondent's webpage is not authorized, and the registration and use of the Disputed Domain Name by the Respondent may lead consumers to believe that the Respondent is the source of the Accutane product or that the Respondent's website is affiliated or sponsored by the Complainant. The Complainant argues that such use by the Respondent may lead consumers to believe that the website reached from is the official site owned and operated by the Complainant. This could not be considered by this Panel as use in connection with bona fide offering, and the Respondent's conduct proves that it is not making a legitimate noncommercial or fair use of the Disputed Domain Name without intent of commercial gain.
This Panel shares the opinion of the Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. 2004-0784 that sustains that there is no evidence of bona fide use of a Disputed Domain Name with links to promoting the same product or competitive products.
Likewise, in the present case, the Panel verified that the Disputed Domain Name includes a trademark, without any license or authorization by its owner, that the Respondent is using the Disputed Domain Name in order to obtain commercial benefits out of the notoriety of the trademark ACCUTANE by confusing consumers and leading them to think that when they visit the website they are visiting an official website of the Complainant, which is not the case. This could not be considered as a bona fide or fair use in these proceedings.
Under the present circumstances, including the fact that the Respondent did not rebut the Complainant's prima facie or present any evidence in order to prove its rights or legitimate interests in the Disputed Domain Name, the Panel has found that the Respondent used the disputed Domain Name in order to obtain profit by creating a likelihood of confusion with the Complainant's trademark.
The Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and Policy paragraph (4)(a)(ii) is fulfilled by the Complainant. C. Registered and Used in Bad Faith
According to the Complaint, the Complainant claims that the Disputed Domain Name was registered and is being used in bad faith according to the following arguments that summarized are as follows:
According to the Complainant, the Respondent's true purpose in registering the Disputed Domain Name, which incorporates the Complainant's mark ACCUTANE in its entirety, is to capitalize on the reputation of the Complainant's mark by diverting Internet users seeking the Complainant's websites to the Respondent's own web sites which solicit orders for third party pharmaceutical products and through which the Complainant's Accutane prescription drug can be purchased through a linked site as discussed above, acting in bad faith.
The Complainant argues that the Respondent also acted in bad faith because there is no relationship between the Respondent and the Complainant, and the Complainant has not given the Respondent permission to use its mark ACCUTANE.
By using the Disputed Domain Name to sell the Accutane product without permission or license of any kind, the Respondent has intentionally attempted to attract for financial gain Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the Respondent's website.
In the present case the Panel has confirmed that the website published at the Disputed Domain Name includes links that offer for sale of Accutane products, and competitive products, without the authorization required by the original product owner. These links offer other competitive products and also offer generic products. These links may mislead and confuse consumers, thinking that the products or services are original and putting their health and lives at risk, with the purpose to obtain commercial or financial benefit by trading as the notoriety of the trademark that is part of the Respondent's Domain Name and is being used on the website.
For all the foregoing reasons, the Panel finds that the Disputed Domain Name was registered and is being used in bad faith, according to the Policy paragraph 4(a)(iii). 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the Disputed Domain Name be transferred to the Complainant.
Ada L. Redondo Aguilera
Sole Panelist
Dated: March 26, 2010
Full & Egal Universal Law Academy