The Complainant is Hoffmann-La Roche Inc. of Nutley, New Jersey, United States of America, represented by Lathrop & Gage LLP of United States of America.
The Respondent is Mihail Pavlishin of Stebnik, Ukraine. 2. The Domain Name and Registrar
The disputed domain name is registered with Dynadot, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 9, 2010. On June 9, 2010, the Center transmitted by email to Dynadot, LLC a request for registrar verification in connection with the disputed domain name. On June 9, 2010, Dynadot, 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 June 21, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 11, 2010. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on July 14, 2010.
The Center appointed Daniel Peña as the sole panelist in this matter on July 22, 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, together with its affiliated companies is one of the leading researchers and developers of pharmaceutical and diagnostic products in the world.
The trademark ACCUTANE of the Complainant is protected as a trademark for a dermatological preparation in the United States.
The trademark ACCUTANE is registered on behalf of the Complainant in the United States Patent and Trademark Office (the “U.S.P.T.O.”), as of August 28, 1973 under Registration No. 966,924.
The trademark ACCUTANE designates a dermatological preparation, namely, a pharmaceutical product indicated for the treatment and prevention of acne.
Isotretinoin is a medication used to the treatment of severe acne. This medication is marketed under the trademark ACCUTANE by the Complainant
The Complainant has used the trademark ACCUTANE for a dermatological preparation since November, 1972 in the United States.
The sales of the ACCUTANE dermatological preparation in the United States have exceeded hundreds of millions of dollars.
The Complainant owns and has registered the domain name . 5. Parties’ Contentions A. Complainant
The disputed domain name contains the entire trademark ACCUTANE owns by the Complainant.
The Respondent has no rights or legitimate interests in the disputed domain name.
The expression “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 or to incorporate the trademark into any domain name.
As a result of the sales, advertising and promotion for the Complainant’s dermatological preparation in the United States under the trademark ACCUTANE, the product has acquired fame and celebrity, symbolizing the goodwill that the Complainant has created in its trademark ACCUTANE in the United States.
The trademark ACCUTANE is still, and will be for some time to come, on sale in pharmacies in the United States.
The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In order for the Complainant to prevail and have the disputed domain name transferred, the Complainant must show the following per the Policy, paragraph 4(a):
(i) the disputed 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 disputed domain name has been registered and is being used in bad faith.
The Complainant bears the burden of proof for each of these elements A. Identical or Confusingly Similar
The Complainant has evidenced registration for the trademark ACCUTANE in the United States of America. The Complainant’s trademarks are registered to protect dermatological preparations.
The disputed domain name contains the Complainant’s distinctive trademark ACCUTANE in its entirety. Neither the addition of the descriptive expression “with no prescription” nor the inclusion of the generic top- level domain “.com” alters the fact that the disputed domain name is confusingly similar to the Complainant’s trademark.
The expressions used together with the trademark ACCUTANE in the disputed domain name do not add any distinctiveness to the domain name . On the contrary, the expression “withnoprescription” has a meaning that relates to a possible circumvention of the United States regulation for the sales and distribution of Accutane and any other isotretinoin products in(to) the United States. The Complainant asserts that these activities are subject to the mandatory strict parameters of the iPLEDGE program of the FDA (U.S. Food and Drug Administration), which sets forth the only permissible distribution system of Accutane and any other isotretinoin product in(to) the United States.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark. Thus, the requirements in paragraph 4(a)(i) of the Policy are fulfilled. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is 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.
A complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
With respect to paragraph 4(c)(i) of the Policy, there is no evidence that Respondent, before any notice of the dispute, used or prepared to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.
With respect to paragraph 4(c)(ii) of the Policy, there is no evidence that indicates that Respondent has ever been commonly known by the disputed domain name.
With respect to paragraph 4(c)(iii) of the Policy, Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed domain name and has not used the disputed domain name, or a name corresponding to it, in connection with a bona fide offering of goods or services.
The Complainant has evidenced that Respondent’s use of the disputed domain name is not in good faith. The Respondent’s domain name resolves to a web site which uses the Complainant’s trademark ACCUTANE. Also, brand packaging is depicted for sale through Respondent’s site, which offers more than a 30 day supply of isotretinoin, which appears to be against FDA regulations. In fact, ACCUTANE and other isotretinoin products, listed and subject to the iPLEDGE program, must not be prescribed, dispensed or otherwise obtained through the Internet or any other means outside the mentioned program. In addition to prescribing doctors and patients, it has been evidenced that wholesalers and pharmacies must also be registered under iPLEDGE and comply with all requirements of the Program in order to distribute and dispense Accutane or any other isotretinoin product in the United States
In the Panel’s view, these actions undertaken by the Respondent may lead a consumer to believe that Respondent is the source of the ACCUTANE product and related information, or that Respondent’s use of the expression “accutane” in the disputed domain name and web site hosted under the domain name is affiliated with or sponsored by Hoffmann-La Roche Inc.
In the absence of a Response, the Panel accepts the arguments and evidence advanced by the Complainant and finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that accordingly, paragraph 4(a)(ii) of the Policy has been satisfied. C. Registered and Used in Bad Faith
Under paragraph 4(b), a respondent has used and registered a domain name in bad faith if, inter alia, the respondent has used the domain name intentionally to attempt 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 site or of a product or service offered on the respondent’s site. Policy paragraph 4(b)(iv).
The Panel finds that the Respondent registered the disputed domain name which corresponds to a widely used trademark in the pharmaceutical sector with prior knowledge of the Complainant’s rights. Only someone who was familiar with the Complainant’s mark would have registered a domain name including therein the distinctive expression “accutane” as such.
In Panel’s view, the disputed domain name is used intentionally by the Respondent to readdress to connected third party web site through which to sell products including isotretinoin of competitors equivalent to Complainant’s ACCUTANE prescription drug products, and other pharmaceutical products of third parties without a license or authorization from the Complainant, all to the confusion of purchasers and detriment of Complainant. The Panel considers that these facts lead to the risk of deception and confusion since it could give the impression that his website is somehow endorsed by the Complainant.
Taken together with the fact that the Respondent has not filed any Response in this proceeding, the Panel believes that the Complainant has demonstrated that the contested registration has been made in bad faith. Moreover, in this case, the Complainant has sent a cease-and-desist letter on April 28, 2010 whereby it requested the immediate transfer of the disputed domain name. The Respondent never answered the mentioned communication. This fact is appreciated by the Panel as another basis to infer a bad faith in the registration as well as the use of the disputed domain name.
The Panel finds the disputed domain name was registered and is being used 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.
Daniel Peña
Sole Panelist
Dated: August 5, 2010
Full & Egal Universal Law Academy