Complainant is Hoffmann-La Roche Inc. of Nutley, New Jersey, United States of America, represented by Lathrop & Gage LLP, United States of America.
Respondent is Pavlishin Mihail of Stebnik, Lviv Oblast, Ukraine. 2. The Domain Name and Registrar
The disputed domain name is which is registered with UK2 Group Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 13, 2010. On July 13, 2010, the Center transmitted by email to UK2 Group Ltd a request for registrar verification in connection with the disputed domain name. On July 13, 2010, UK2 Group Ltd. 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 Respondent of the Complaint, and the proceedings commenced on July 19, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 8, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 9, 2010.
The Center appointed Gerardo Saavedra as the sole panelist in this matter on August 12, 2010. This Panel finds that it was properly constituted. This 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
Complainant is a corporation organized under the laws of New Jersey, United States of America, engaged, together with its affiliated companies, in the research and development of pharmaceutical and diagnostic products.
Complainant has rights over the trademark ACCUTANE, which it registered under registration No. 966,924 with the United States Patent and Trademark Office in 1973, international class 5, covering dermatological preparation.
The disputed domain name was created on May 8, 2010. 5. Parties’ Contentions A. Complainant
Complainant’s assertions may be summarized as follows:
Complainant, together with its affiliated companies, is one of the leading researchers and developers of pharmaceutical and diagnostic products in the world.
Since 1972 Complainant has used the ACCUTANE trademark in the United States for a dermatological preparation, namely, a pharmaceutical product indicated for the treatment and prevention of acne.
Complainant’s parent company, F. Hoffmann-La Roche AG, registered the domain name .
For many years Complainant's trademark ACCUTANE was extensively promoted, without limitation, in print advertisements, in medical journals, promotional materials, packaging, medical informational materials, television advertising and direct mailings. Sales in the United States of America of the ACCUTANE dermatological preparation exceeded hundreds of millions of dollars. As a result of the foregoing, the product acquired fame and celebrity, symbolizing the goodwill that Complainant has created in its ACCUTANE trademark.
After learning of Respondent's unauthorized registration of the disputed domain name, on May 17, 2010, Complainant, through its counsel, by email and courier advised Respondent that the registration of the disputed domain name infringed Complainant’s trademark rights and requested the transfer of the disputed domain name. The letter sent by courier to Respondent was returned to Complainant's attorneys. However, the letter transmitted by e-mail was, by all indications, received by Respondent.
The disputed domain name incorporates the entire of Complainant’s trademark and adds the term “canadian”; the addition of such word does not prevent the likelihood of confusion. Respondent's domain name is identical or confusingly similar to Complainant's ACCUTANE trademark.
Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has not authorized Respondent to use its trademark ACCUTANE or to incorporate the trademark into any domain name. Complainant has never granted Respondent a license, authorization or permission to use the ACCUTANE trademark. Furthermore, “Accutane” is not a word but rather an invented and coined mark which has no valid use other than in connection with Complainant's trademark.
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 Complainant in the ACCUTANE trademark.
Based upon Respondent's web site, it is clear that neither Respondent nor its web site has been commonly known by the disputed domain name.
Respondent’s site offers competitive third party products for treating acne, including generic isotretinoin in a 30, 60 and 90 day supply (which is against regulations of the U.S. Food and Drug Administration), as well as other third party pharmaceutical skin care products and other pharmaceutical products of Complainant’s competitors for sale.
Respondent’s unauthorized use of the disputed domain name to solicit sales of third party competitors’ isotretinoin products depicted with Complainant’s brand ACCUTANE packaging and sales of other pharmaceutical products of Complainant’s competitors though a web site making use of the ACCUTANE mark without Complainant’s permission, renders such activities not a bona fide offering of goods and services under the Policy.
Respondent's web site has no affiliation or connection whatsoever with Complainant and such uses of Complainant's mark ACCUTANE are not only clear indications of bad faith on the part of the Respondent.
Such uses by Respondent may lead consumers to believe that the website reached from the disputed domain name is a site owned and/or operated by Complainant.
Respondent's appropriation and use of Complainant's famous trademark is a clear attempt to create and benefit from consumer confusion regarding Respondent's activities and Complainant's bona fide business. As such, it is clear that Respondent has no rights or legitimate interests in the domain name.
There is no evidence that Respondent is making a legitimate non-commercial or fair use of the disputed domain name without intent for commercial gain.
Respondent’s use of the disputed domain name therefore demonstrates Respondent’s lack of a legitimate non-commercial interest in, or fair use of the domain name.
Respondent registered and is using the disputed domain name in bad faith.
Respondent's true purpose in registering the disputed domain name which incorporates Complainant's mark ACCUTANE in its entirety is to capitalize on the reputation of Complainant's ACCUTANE trademark by diverting Internet users seeking Complainant group web site(s) to Respondent's own web site.
Respondent's registration and use of the disputed domain name creates a strong likelihood of confusion as to source, sponsorship, association or endorsement of Respondent's web site associated with the disputed domain name by Complainant.
The bad faith of Respondent is clearly evident from the fact that: (a) “accutane” is not a word, (b) Complainant's mark ACCUTANE is an invented and coined mark that has an extremely strong reputation in the United States, (c) there exists no relationship between Respondent and Complainant, and Complainant has not given Respondent permission to use its famous mark ACCUTANE in a domain name or to use it in any manner on Respondent's web site.
Respondent has intentionally attempted to attract for financial gain Internet users to Respondent's web site by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation or endorsement of Respondent's web site or the goods sold on or through Respondent's web site. Such unauthorized use of Complainant's ACCUTANE mark by Respondent suggests opportunistic bad faith.
Use of the disputed domain name to promote sales of competitors’ products through use of the famous ACCUTANE mark and use of ACCUTANE product packaging demonstrates bad faith use.
Complainant requests that the disputed domain name be transferred to Complainant. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
The lack of response from Respondent does not automatically result in a favorable decision for Complainant1. The burden for Complainant, under paragraph 4(a) of the Policy, is to show: (i) that the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that 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. A. Identical or Confusingly Similar
The Complainant has demonstrated that it has rights in the ACCUTANE mark.
The disputed domain name entirely incorporates the ACCUTANE trademark, adding the prefix “canadian”; the addition of such word is not enough to avoid similarity, nor does it add anything to avoid confusion. Prior panel decisions have found that the addition of a geographic descriptor does not change the confusing nature of the similarity (Cfr. America Online, Inc. v. Dolphin@Heart,WIPO Case No. D2000-0713; eBay Inc., v. G L Liadis Computing, Ltd. and John L. Liadis d/b/a G L Liadis Computing Ltd., WIPO Case No. D2000-1463; PepsiCo, Inc. v. QWO,WIPO Case No. D2004-0865).
Therefore, this Panel finds that the disputed domain name is confusingly similar to Complainant’s ACCUTANE trademark. B. Rights or Legitimate Interests
Complainant has alleged and Respondent has failed to deny that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Complainant asserts that it has never authorized Respondent to use its trademark or to incorporate it into any domain name. Likewise, Complainant asserts that Respondent has never been known by the ACCUTANE trademark.
Complainant asserts that Respondent's web site has no affiliation or connection whatsoever with Complainant, furthermore it leads consumers to believe that the web site reached from the disputed domain name is a site owned and/or operated by Complainant.
It is undisputed that Respondent is using the website associated with the disputed domain name to offer generic isotretinoin depicted with Complainant’s brand ACCUTANE packaging and other third party pharmaceutical skin care products and other pharmaceutical products of Complainant’s competitors. Complainant asserts that such Respondent’s use is with the clear purpose to attract consumers creating confusion regarding Complainant's business. As established in prior cases, such use is not a bona fide offering of products or services2.
Further, the unauthorized appropriation of another’s trademark in a domain name and the commercial use of the corresponding website cannot confer rights or legitimate interests upon Respondent (Cfr. Hoffmann-La Roche Inc. v. Aneko Bohner,WIPO Case No. D2006-0629).
Given the longstanding and extensive use and exposure of the ACCUTANE trademark, and in the absence of any explanation from Respondent as to why it might consider it has a right or legitimate interest in using such trademark, albeit with a geographic descriptor or element, this Panel considers that Complainant has established prima facie that Respondent has no rights or legitimate interests in the disputed domain name3.
Thus this Panel concludes that Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Complainant contends that Respondent’s registration and use of the disputed domain name is in bad faith.
Complainant has evidenced that the ACCUTANE pharmaceutical product indicated for the treatment and prevention of acne has been extensively used and sold by the Complainant long before Respondent registered the disputed domain name. It is clear that Respondent should have been fully aware of the existence of Complainant’s trademark and the product marketed thereunder at the time it obtained the registration of the disputed domain name4.
Respondent is using the website associated with the disputed domain name to offer generic isotretinoin depicted with Complainant’s brand ACCUTANE packaging and other third party pharmaceutical skin care products and other pharmaceutical products of Complainant’s competitors. This Panel is of the view that the use of the disputed domain name for a website that is used to market products of Complainant’s competitors constitutes an improper use of Complainant’s mark and is evidence of Respondent’s bad faith5.
In light of the above, this Panel finds that the registration of the disputed domain name was, on the face of it, made in bad faith and it 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, this Panel orders that the disputed domain name be transferred to Complainant.
Gerardo Saavedra
Sole Panelist
Dated: August 26, 2010
1 See Berlitz Investment Corp. v. Stefan Tinculescu,WIPO Case No. D2003-0465: “the panel finds that as a result of the default, Respondent has failed to rebut any of the factual assertions that are made and supported by evidence submitted by Complainant. The panel does not, however, draw any inferences from the default other than those that have been established or can fairly be inferred from the facts presented by Complainant and that, as a result of the default, have not been rebutted by any contrary assertions or evidence”.
2 See Pfizer Inc v. The Magic Islands,WIPO Case No. D2003-0870, where it is established: “The facts that the disputed domain name is confusingly similar with the Complainant’s trademark and is used to sell a competing product in this manner deprive the Respondent’s offering of services of the “bona fide” character required to satisfy Article 4(c)(i) of the Policy”.
3 See Intocast AG v. Lee Daeyoon,WIPO Case No. D2000-1467: “For methodical reasons it is very hard for the Complainant to actually prove that Respondent does not have rights or legitimate interests in respect of the domain name, since there is no strict logical means of verifying that a fact is not given... Many legal systems therefore rely on the principle negativa non sunt probanda. If a rule contains a negative element it is generally understood to be sufficient that the complainant, by asserting that the negative element is not given, provides prima facie evidence for this negative fact. The burden of proof then shifts to the respondent to rebut the complainant’s assertion”.
4 See Hoffmann-La Roche Inc. v. Aneko Bohner,WIPO Case No. D2006-0629: “The Panel finds that Respondent in all likelihood had Complainant’s well-known mark ACCUTANE in mind when registering the Domain Name. ACCUTANE is a fanciful mark; that combination of letters has no known meaning other than as a reference to Complainant’s product”.
5 See Philip Morris Incorporated v. Alex Tsypkin,WIPO Case No. D2002-0946: “Respondent is not confining his use of the disputed domain name to the resale of Complainant’s cigarettes by reference to Complainant’s mark. He is trading on the fame of Complainant’s mark to sell, inter alia, the products of Complainant’s competitors”.
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