WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Hoffmann-La Roche Inc. v. Thomas Morgensterns Case No. D2010-0194 1. The Parties
The Complainant is Hoffmann-La Roche Inc. of Nutley, New Jersey, United States of America, represented by Lathrop & Gage L.C., United States of America.
The Respondent is Thomas Morgensterns of Westchester, California, United States of America. 2. The Domain Name and Registrar
The disputed domain name (“Disputed Domain Name”) is registered with Az.pl, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 9, 2010. On February 10, 2010, the Center transmitted by email to Az.pl, Inc. a request for registrar verification in connection with the Disputed Domain Name. On February 11, 2010, Az.pl, 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” 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 Michael A. Albert as the sole panelist in this matter on March 16, 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 world's leading researchers and developers of pharmaceutical and diagnostic products. The Complainant holds a United States trademark registration for the ACCUTANE mark (the “Mark”) for a dermatological preparation, namely, a pharmaceutical product indicated for the treatment and prevention of acne.
The Complainant first used the ACCUTANE mark in 1972 and obtained a trademark registration for the Mark from the United States Patent and Trademark Office in 1973. The parent company of the Complainant, F. Hoffmann-La Roche AG, has registered the domain names and , with the former resolving to the latter.
The Respondent registered the Disputed Domain Name on November 8, 2009. The Disputed Domain Name, , contains the entire ACCUTANE mark of the Complainant.
The Respondent used the Disputed Domain Name to offer the Accutane product for sale. On December 22, 2009, the Complainant attempted to deliver to the Respondent by certified mail a letter requesting that the Respondent cease sales of the Accutane product and transfer the Disputed Domain Name to the Complainant. When the postal service was unable to deliver the letter, the Complainant attempted to deliver the letter to the Respondent by email, but received no response.
Subsequently, the Complainant filed the Complaint with the Center on February 9, 2010, requesting transfer of the Disputed Domain Name. 5. Parties' Contentions A. Complainant
The Complainant contends that the ACCUTANE mark was extensively promoted for many years in print advertisements in medical journals, promotional materials, packaging, medical informational materials, television advertising and direct mailings. The Complainant further contends that sales of the Accutane product in the United States have exceeded hundreds of millions of dollars.
The Complainant further contends that the Accutane product has acquired fame and and celebrity, symbolizing the goodwill that the Complainant has created in its mark ACCUTANE in the United States.
The Complainant further contends that the Disputed Domain Name is identical or confusingly similar to the Complainant's Mark. Specifically, the Disputed Domain Name, which contains the entire ACCUTANE mark, creates a strong likelihood of confusion as to source, sponsorship, association or endorsement by the Complainant of the Respondent's website.
The Complainant further contends that Internet users who visit the Disputed Domain Name are redirected to an online pharmacy, “”, when a customer clicks to buy the Accutane product. This website, in turn, offers the Accutane product for sale without the Complainant's authorization, as well as a generic product (third party competitor's isotretinoin product) which depicts an ACCUTANE brand package. This website allegedly offers third-party pharmaceutical products of the Complainant's competitors for sale.
The Complainant further contends that the Respondent has no rights or legitimate interests in the Disputed Domain Name. Specifically, the Complainant contends that the Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services because the Respondent is diverting Internet users seeking the Complainant's Accutane product to third-party websites which offer competing products.
The Complainant further contends that the Respondent's website demonstrates that neither the Respondent nor its website has been commonly known by the Disputed Domain Name. “Accutane” is not a word and has no valid use other than in connection with the Complainant's trademark. The Complainant has not authorized the Respondent to use its trademark ACCUTANE.
The Complainant further contends that the Respondent lacks a legitimate noncommercial interest in, or fair use of, the Disputed Domain Name as demonstrated by the Respondent's practice of redirecting Internet users to a website which offers for sale competing third-party products alongside the Complainant's product.
The Complainant further contends that the Respondent has registered and used the Disputed Domain Name in bad faith. The Respondent has offered the Complainant's Accutane product for sale on the Internet even though the United States Food and Drug Administration has prohibited online sales of this product.
The Complainant further contends that the Respondent's true purpose in registering the Disputed Domain Name is to capitalize on the reputation of the Complainant's ACCUTANE mark by diverting Internet users seeking the Complainant's website(s) to the Respondent's own website, and the online pharmacy to which the Respondent's website directs purchasers, which offers for sale competing pharmaceutical products. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that the Disputed Domain Name should be cancelled or transferred:
(i) the Disputed Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
The Respondent provided no Response, and the deadline for so doing expired on March 7, 2010. Accordingly, the Respondent is in default. Given the Respondent's default, the Panel can infer that the Complainant's allegations are true where appropriate to do so. Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. Nonetheless, the Complainant retains the burden of proving the three requisite elements of paragraph 4(a). A. Identical or Confusingly Similar
The Complainant has provided sufficient evidence showing that it is the owner of the ACCUTANE mark. The Complainant does not have a trademark registration of the term “buyaccutaneusuk”. The Disputed Domain Name and the Complainant's trademark are not identical. Therefore, the issue is whether the Disputed Domain Name and the Complainant's trademark are confusingly similar.
The Disputed Domain Name combines three elements: (1) the Complainant's ACCUTANE trademark; (2) the prefix “buy” and the suffixes “us” and “uk”; and (3) the suffix “.com.” The relevant comparison to be made is with the second-level portion of the domain name only (i.e., “buyaccutaneusuk”), as it is well-established that the top-level domain name (i.e., “.com”) should be disregarded for this purpose. Playboy Enterprises International, Inc. v. John Taxiarchos,WIPO Case No. D2006-0561.
Prior WIPO UDRP panels have recognized that the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to the Complainant's registered mark. AT&T Corp. v. William Gormally,WIPO Case No. D2005-0758 (finding confusingly similar to ATT); Quixtar Investments, Inc. v. Dennis Hoffman,WIPO Case No. D2000-0253 (finding legally identical to QUIXTAR).
Moreover, the addition of the terms “buy” as a prefix and “us” and “uk” as suffixes to the ACCUTANE mark does not mitigate the confusing similarity between the Disputed Domain Name and the Complainant's trademark. First, the prefix “buy” is an ordinary descriptive word which exploits the trademark signification of ACCUTANE by leading customers to understand the Disputed Domain Name to offer for sale the Complainant's product. Adding the prefix “buy” to the Mark does nothing to dispel and serves only to reinforce the connection in the public mind between the word “accutane” and the Complainant, and therefore increases the risk of confusion. Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti,WIPO Case No. D2005-0037 (finding confusingly similar to LANTUS).
In addition, the mere addition of geographically descriptive suffixes such as “us” and “uk” does not negate the confusing similarity between the Mark and the Disputed Domain Name. PepsiCo, Inc. v. Kieran McGarry,WIPO Case No. D2005-0629 (finding confusingly similar to PEPSI); Dell Computer Corporation .v. MTO C.A. and Diabetes Education Long Life,WIPO Case No. D2002-0363 (finding confusingly similar to DELL).
For the all of the foregoing reasons, this Panel finds that the Disputed Domain Name is confusingly similar to the Complainant's ACCUTANE mark, in which the Complainant has established rights. Therefore, the Panel finds that the Complainant has proven the first element of the Policy. B. Rights or Legitimate Interests
Under the Policy, paragraph 4(c), legitimate interests in domain names may be demonstrated by showing that:
(i) before any notice of this dispute, Respondent used, or demonstrably prepared to use, the domain names or a name corresponding to the domain names in connection with a bona fide offering of goods or services;
(ii) Respondent has been commonly known by the domain names, even if no trademark or service mark rights have been acquired; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue.
The Complainant contends that the Respondent has no rights to use the ACCUTANE mark. The Complainant has alleged, and the Respondent has not denied, that the Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services, is not commonly known by the Disputed Domain Name, and is misleading customers for commercial gain.
For all of the foregoing reasons, this Panel finds that the Complainant has proven that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. Therefore, the Panel is convinced that the Complainant has proven the second element of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances of the registration and use of a domain name in bad faith. One of the illustrations of bad faith, Policy paragraph 4(b)(iv), occurs when the Respondent attempts to attract, for commercial gain, Internet users to the Respondent's website or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or of a product or service on the Respondent's website.
The Panel finds compelling circumstantial evidence that the Respondent likely knew of the Complainant's Mark when it registered the Disputed Domain Name. The ACCUTANE mark appears to have been in use for nearly forty years in connection with the sale of voluminous quantities of the Accutane product. Because the ACCUTANE mark is not descriptive of anything and has no valid use other than in connection with the Complainant's Mark, it is very unlikely that the Respondent would have registered a domain name incorporating the Mark without knowledge of the Mark. Based on the foregoing circumstantial evidence, the Panel finds that the Respondent registered the Disputed Domain Name in bad faith. See Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415 (“It defies common sense to believe that Respondent coincidentally selected these precise domain names without any knowledge of Complainant and its PROFORCE Trademarks.”).
The Panel also finds that the Respondent used the Disputed Domain Name in bad faith. It is well-established that using a domain name which incorporates a trademark to offer the products of competitors of the trademark owner is likely to cause confusion among consumers as to the source of products or to confusingly suggest sponsorship by the trademark owner. See e.g., Six Continent Hotels, Inc. v. The Omnicorp,WIPO Case No. D2005-1249; Exel Oyj v. KH Trading, Inc.,WIPO Case No. D2004-0433.
Here, the Respondent appears to have intended to use the Disputed Domain Name to promote both the Complainant's Accutane products as well as competing products by redirecting would-be buyers to the online pharmacy, “”, which offers these products for sale.
For all of the foregoing reasons, this Panel finds that the Complainant has proven that the Respondent registered and is using the Disputed Domain Name in bad faith. Therefore, the Panel is convinced that the Complainant has proven the third and final element of the Policy. 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 Disputed Domain Name, , be transferred to the Complainant.
Michael A. Albert
Sole Panelist
Dated: March 31, 2010
Full & Egal Universal Law Academy