WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Hoffmann-La Roche Inc. v. WhoisGuard Protected / HashlogLtd, Denis Kozenko Case No. D2010-0806 1. The Parties
The Complainant is Hoffmann-La Roche Inc. of South San Francisco, California, United States of America, represented by Lathrop & Gage LLP, United States of America.
The Respondent is WhoisGuard Protected / HashlogLtd, Denis Kozenko of California, United States of America and Victoria, Seychelles, respectively. 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 May 20, 2010. On May 20, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On May 20, 2010, 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 May 31, 2010 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 amended Complaint on June 3, 2010. The Center verified that the Complaint together with the 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 June 4, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 24, 2010. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on June 25, 2010.
The Center appointed Adam Taylor as the sole panelist in this matter on July 6, 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 part of a well-known pharmaceutical group. The Complainant's products include Accutane, a dermatological product for the treatment and prevention of acne. The Complainant has used the mark ACCUTANE in the United States since November 1972.
For many years, the Complainant has extensively promoted the mark ACCUTANE including in print advertisements, medical journals, promotional materials, packaging, medical informational materials, television advertising and direct mailings. Sales of the Complainant's product in the United States have exceeded hundreds of millions of dollars.
The Complainant owns a United States registered trade mark no. 966,924 dated August 12, 1973 for ACCUTANE in international class 5.
The disputed domain name was registered on March 11, 2010.
As of April 28, 2010, there was a website at the disputed domain name. The home page, branded , comprised purportedly factual information about the Complainant's product. There was a link to an online pharmacy which offered for sale the Complainant's Accutane product as well as products of other pharmaceutical companies. The disputed domain name also appeared at the bottom of the page adjacent to a copyright symbol. 5. Parties' Contentions A. Complainant Identical or Confusingly Similar
As a result of the sales, advertising and promotion of the Complainant's dermatological preparation in the United States under the mark ACCUTANE, the product has acquired fame and celebrity, symbolizing the goodwill that the Complainant has created in its mark ACCUTANE in the United States.
The Complainant's parent company owns the domain name , which is used for a website to provide information about the Complainant's product.
Numerous UDRP panel decisions have established that the addition of words, letters or numbers to a mark used in a domain name does not alter the fact that the domain name is confusingly similar to the mark. The descriptive language added here, namely, “buying” does not prevent the likelihood of confusion in this case.
Thus the disputed domain name is identical or confusingly similar to the Complainant's ACCUTANE trade mark. Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in the disputed domain name. “Accutane” is not a word and has no valid use other than in connection with the Complainant's trade mark.
The Complainant has not authorized the Respondent to use its trade mark ACCUTANE or to incorporate the trade mark into any domain name or trade name or as a part of a copyright notice. The Complainant has never granted Respondent a license to use the ACCUTANE mark.
The Respondent's use of the disputed domain name indicates that the disputed domain name was selected and is being used because of the goodwill created by the Complainant in the ACCUTANE trade mark. Based upon the Respondent's website, it is clear that neither the Respondent nor its website has been commonly known by the disputed domain name.
In addition, as of March 1, 2006, all prescriptions for the sales and distribution of the Complainant's product in or to the United States are subject to the mandatory strict parameters of the iPLEDGE program of the Food and Drug Administration (“FDA”). The Respondent's sales are in violation of the FDA's iPLEDGE program.
The Respondent seeks to capitalize on the reputation associated with the Complainant's ACCUTANE trade mark. The Respondent seeks to use that recognition to divert Internet users seeking the Complainant's website to a website wholly unrelated to the Complainant.
The Respondent's appropriation and use of the Complainant's famous trade mark is a clear attempt to create and benefit from consumer confusion regarding the Respondent's activities and the Complainant's bona fide business. As such, it is clear that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. The Respondent is using the disputed domain name to divert Internet users seeking the Complainant or its product to unrelated websites which use the Complainant's famous trade mark ACCUTANE without license or authorization of any kind.
There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain. Clearly, the Respondent is trading on the Complainant's goodwill, and is using the Complainant's ACCUTANE mark in a copyright notice, in the disputed domain name, and on a website through which to sell the Complainant's prescription drug products and other products, including competitive products, without a license or authorization from the Complainant, all to the confusion of purchasers and the detriment of the Complainant, the trade mark owner, and contrary to FDA regulations. Registered and Used in Bad Faith
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 ACCUTANE mark by diverting Internet users seeking the Complainant or its product to the Respondent's own website, and the site to which it directs purchasers for sale, which solicits orders on an Internet pharmacy despite the fact Internet sales of such products are not permitted by the FDA regulations.
The Complainant's mark ACCUTANE is an invented and coined mark that has an extremely strong reputation in the United States.
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 a domain name, trade name or in a copyright notice, or to use it in any manner on the Respondent's website.
The only reasonable conclusion is that the Respondent was aware of the ACCUTANE trade mark and used it in a domain name, in a trade name and in a copyright notice, which leads the public to believe that the Respondent has a relationship with the Complainant, when in fact the Respondent has no license or permission from the Complainant whatsoever. The Respondent is aware of the well-known ACCUTANE trade mark and has connected the disputed domain name with a website linked with pharmaceutical sales sites which sell products under the Complainant's well-known registered trade mark, as well as third party competitor pharmaceuticals, all to the confusion of the public and the detriment of the Complainant.
The Respondent has intentionally attempted to attract for financial gain Internet users to 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 or the goods sold on or through the Respondent's website. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has established rights in the marks ACCUTANE by virtue of its registered trade mark as well as its extensive trading activities under that name.
The disputed domain name is confusingly similar to the Complainant's mark. It differs only by adding as a prefix the generic term “buying” plus a hyphen. These differences are insufficient to distinguish the domain name and trade mark. On the contrary, the addition of “buying” enhances the connection as it denotes a means of purchasing the Complainant's Accutane product.
The Complainant has therefore established the first element of the Policy. B. Rights or Legitimate Interests
The Complainant must establish at least a prima facie case under this heading and, if that is made out, the evidential onus shifts to the Respondent to rebut the presumption of absence of rights or legitimate interests thereby created. See, e.g., Atlas Copco Aktiebolag v. Accurate Air Engineering, Inc.,WIPO Case No. D2003-0070.
The Complainant has not licensed or otherwise authorized the Respondent to use its trade mark.
As to paragraph 4(c)(i) of the Policy, the Panel has concluded below that the Respondent has used the disputed domain name to intentionally attempt to attract, confuse and profit from Internet users seeking the Complainant's products and services. Such use of the disputed domain name could not be said to be bona fide.
There is no evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply.
The Panel finds that the Complainant has established a prima facie case of lack of rights and legitimate interests and there is no rebuttal by the Respondent.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of the Policy. C. Registered and Used in Bad Faith
The Panel has little difficulty in concluding that the disputed domain name was registered and used in bad faith.
Given the similarity between the disputed domain name and the Complainant's distinctive mark, it is obvious that that the Respondent registered the disputed domain name with the Complainant's trade mark in mind.
The Respondent has not come forward to deny the Complainant's assertions of bad faith. It is difficult to conceive of any good faith reason why the Respondent would wish to register the disputed domain name and the Respondent has offered no explanation.
On the contrary, the disputed domain name has been used for a website which appears to offer information about the Complainant's product (and which formerly included the Complainant's mark prominently in the title on the home page as well as in the copyright notice) but whose real purpose is apparently to drive traffic to another website offering for sale the Complainant's products as well as those of the Complainant's competitors. Clearly this was intended to generate commercial gain.
The Panel concludes from the foregoing that the Respondent has registered and used the disputed domain name in bad faith in accordance with paragraph 4(b)(iv) of the Policy. The Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant's trade mark.
The Panel therefore finds that the Complainant has established the third 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 domain be transferred to the Complainant.
Adam Taylor
Sole Panelist
Dated: July 20, 2010
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