WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Hoffmann-La Roche Inc. v. Michail Sidorenko Case No. D2010-0581 1. The Parties
The Complainants are Hoffmann-La Roche Inc. of Nutley, New Jersey, United States of America and Genentech, Inc. of South San Francisco, United States of America, represented by Lathrop & Gage LLP, United States.
The Respondent is Michail Sidorenko of Kiev, Ukraine. 2. The Domain Name and Registrar
The disputed domain name is registered with Moniker Online Services, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 15, 2010. On April 16, 2010, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On April 16, 2010, Moniker Online Services, LLC 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 April 26, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 16, 2010. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on May 18, 2010.
The Center appointed Ashwinie Kumar Bansal as the Sole Panelist in this matter on May 27, 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 Complainants, together with its affiliated companies are involved in the research and development of pharmaceutical and diagnostic products. Hoffmann-La Roche Inc. (“the Complainant No.1”) had got the trademark ACCUTANE registered with the United States Patent and Trademark Office (“U.S.P.T.O.”) on August 28, 1973 under Registration No. 966,924 for dermatological preparation in class 18 (International Class 5) having first use on Nov 27, 1972. The other Complainant Genentech, Inc. is a member of the Roche group of companies. The parent company of Roche, F. Hoffmann-La Roche AG had registered the domain name on April 17, 1997 as per the WhoIs record. 5. Parties' Contentions A. Complainant
The Complainants submit that the disputed domain name contains the entire ACCUTANE trademark of the Complainant No. 1. The Complainant No. 1 had through its counsel sent a letter via FedEx and also by email to the Respondent's addresses indicated in the WhoIs record for the disputed domain name. But the letter was returned by FedEx with the remark “incorrect address” and email was returned as “could not be delivered”. The Respondent had supplied false contact information which is an additional evidence of bad faith. The Respondent's site offers skin care products of the Complainants and their competitors and it also uses ACCUTANE brand package for sale without license or permissions of any kind from the Complainants. ACCUTANE is an invented and coined mark which has a strong reputation in the United States and it has no valid use other than in connection with the trademark of the Complainants.
In the light of the Complainants' registered trademark ACCUTANE and the domain name controlled by the Roche group, the Respondent's registration and use of the disputed domain name creates a strong likelihood of confusion as to source, sponsorship, association or endorsement of the Respondent's web site associated with its domain name by the Complainants. The disputed domain name is identical and confusingly similar to the trademark ACCUTANE in which the Complainants have rights.
Furthermore, the Complainants also submit that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Finally, the Complainants submit that the disputed domain name was registered and is being used in bad faith by the Respondent. B. Respondent
The Respondent did not reply to the Complainants' contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Paragraph 15(a) of the Rules instructs the Panel as to the principles to use in rendering its decision: “A Panelist shall 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 sets out the three elements which must be present for the proceeding to be brought against the Respondent, and which the Complainants must prove to obtain a remedy. It provides as follows:
“4(a). Applicable Disputes. You (the Respondent) are required to submit to a mandatory administrative proceeding in the event that a third party (a “Complainant”) asserts to the applicable Provider, in compliance with the Rules of Procedure, that
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith. In the administrative proceeding, the complainant must prove that each of these three elements are present.”
The Complainants have established that Complainant No. 1 has registered trademark rights in the mark ACCUTANE. Addition of generic terms, “buy” and “generic” to “accutane” does not eliminate the likelihood of confusion between the disputed domain name and the trademark ACCUTANE as “accutane” is the prominent portion in the disputed domain name.
The disputed domain name wholly incorporates the registered trademark ACCUTANE of the Complainant No. 1, which is sufficient to establish confusing similarity for the purpose of the Policy despite the addition of the words “buy” and “generic” to the trademark. Many panels have decided in similar circumstances that such a disputed domain name is confusingly similar to the trademark1.
By simply affixing the generic terms to the trademark ACCUTANE of the Complainant No. 1 and registering such combination of words, the Respondent did create a confusing similarity between the disputed domain name and the trademark of the Complainant No. 1. This view is consistent with the opinion expressed in a number of UDRP decisions2.
The Panel finds that the disputed domain name is confusingly similar to the trademark ACCUTANE of the Complainant No. 1. B. Rights or Legitimate Interests
The Complainant No. 1 has registered the trademark ACCUTANE since 1973 and it has used the mark for a long time. The Complainants have not authorized or permitted the Respondent to use the trademark ACCUTANE.
Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Administrative Panel to be proved, may demonstrate the Respondent's rights or legitimate interests to the domain name for the purposes of paragraph 4(a)(ii). Paragraph 4(c) reads:
“4(c). How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name in Responding to a complaint. When you receive a complaint, you should refer to Paragraph 5 of the Rules of Procedure in determining how your response should be prepared. 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 your rights or legitimate interests to the domain name for purposes of Paragraph 4(a) (ii):
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.”
The Respondent has not filed his Response and so failed to demonstrate his rights to or legitimate interests in the disputed domain name as per paragraph 4(c) of the Policy.
The Respondent's use of the disputed domain name cannot be considered to be in connection with a bona fide offering of goods or services. The print outs from the website of the Respondent indicate that he has used trade name “Generic Accutane” and he also offers ACCUTANE products as well as products of competitors of the Complainants on his website. The website also gives detailed information on description, uses, doses, warning, side effects, storage, etc. of ACCUTANE products.
In order to be bona fide, the offering of goods or services by a reseller must meet minimum requirements including: (i) the site must accurately disclose the registrant's relationship with the trademark owner, and (ii) the Respondent must use the site to sell only the trademarked goods3.
The website “www.” does not disclose that it has no relationship with the Complainant No. 1, the owner of the trademark ACCUTANE products.
The administrative Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name . Nor are any of the items in paragraph 4(c) of the Policy demonstrated by the Respondent. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by the Administrative Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) is reproduced below:
“4(b). Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the 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 you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.”
Each of the four circumstances in paragraph 4(b) of the Policy, if found, is an instance of “registration and use of a domain name in bad faith”. Circumstances (i), (ii), and (iii) are concerned with the intention or purpose of the registration of the domain name, and circumstance (iv) is concerned with an act of use of the domain name.
The Complainants are required to prove both that the disputed domain name was registered in bad faith and that it is being used in bad faith because in paragraph 4(a)(iii) of the Policy, the provision contains the conjunction “and” rather than “or” and it refers to both the past tense (“has been registered”) and the present tense (“is being used”) hence circumstances at the time of registration and thereafter have to be considered by the Panel. The Complainants are required to prove that the registration was undertaken in bad faith and that the circumstances of the case are such that the Respondent is continuing to act in bad faith.
As the Panel sees it the Respondent's true purpose in registering the disputed domain name which incorporates the trademark ACCUTANE of the Complainant No. 1 is to capitalize on the reputation of the trademark ACCUTANE by diverting Internet users seeking the Complainants' web site(s) to the Respondent's own web site, and the site to which it directs purchasers for sale which solicits orders for an Internet pharmacy for ACCUTANE and multiple prescription pharmaceutical products stating that no prescriptions are needed. The Respondent's web site has no legitimate business connection with the Complainants or their ACCUTANE dermatological preparation. The Complainants have not granted the Respondent permission or a license of any kind to use its trademark ACCUTANE. Such unauthorized use of the trademark ACCUTANE by the Respondent suggests opportunistic bad faith. Use of the disputed domain name to promote sales of the Complainants' preparation and also to promote competitors' products demonstrates bad faith use by the Respondent.
The case is squarely covered by paragraph 4(b)(iv) of the Policy.
The Panel finds that the disputed domain name has been registered and is being used by the Respondent 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 disputed domain name, be transferred to the Complainant No. 1 Hoffmann-La Roche Inc.
Ashwinie Kumar Bansal
Sole Panelist
Dated: June 10, 2010
Full & Egal Universal Law Academy