The Complainant is Roche Products Limited of Selwyn Garden City, United Kingdom of Great Britain and Northern Ireland, represented by Lathrop & Gage L.C. of United States of America.
The Respondent is Dmitri Orlov of Volgograd, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name (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 November 3, 2010. On November 4, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On November 4, 2010, eNom 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 November 10, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 30, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 1, 2010.
The Center appointed Kar Liang Soh as the sole panelist in this matter on December 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 together with its affiliated companies is a leader in the fields of pharmaceuticals and diagnostics with global operations in over 100 countries. The Complainant uses the trade mark ROACCUTANE in relation to a drug, namely isotretinoin, indicated for treatment of severe nodular and/or inflammatory acne conglobata or recalcitrant acne.
The trade mark ROACCUTANE has been registered in various jurisdictions including:
Jurisdiction
Trade mark no
Registration date
United Kingdom
1119969
September 3, 1979
Ireland
96401
September 3, 1979
Malaysia
87/03256
July 27, 1987
Singapore
83324
December 3, 1979
The Complainant has also been using the trade mark ACCUTANE in relation to isotretinoin medication since 1972 and has promoted the trade mark extensively. The Complainant’s parent company owns the domain name which redirects to their website at ””. Information about ROACCUTANE and ACCUTANE is available on that website.
The Disputed Domain Name was registered on August 30, 2010. Little is known about the Respondent beyond what is available in the Complaint. At the time the Complaint was filed, the website associated with the Disputed Domain Name made reference to the trade mark ACCUTANE in relation to isotretinoin products and purports to offer them for sale. The Complainant, through its lawyers, sent a letter to the Respondent on October 6, 2010 by FedEx and email alleging trade mark infringement by the Respondent and requesting transfer of the Disputed Domain Name. It does not appear from the evidence that the Respondent replied to the letter. 5. Parties’ Contentions A. Complainant
The Complainant contends that:
1) The Disputed Domain Name is confusingly similar to the Complainant’s trade marks ACCUTANE and ROACCUTANE. The Disputed Domain Name incorporates the whole of ACCUTANE and adds the letters “rx”. The letters “rx” do not prevent the confusing similarity with the trade mark ACCUTANE from arising;
2) The Respondent has no rights or legitimate interests in the Disputed Domain Name and is not commonly known by the Disputed Domain Name. The Complainant has not authorized or granted a licence to the Respondent to use the trade mark ACCUTANE. The Respondent adopted the use of the Disputed Domain Name to create and benefit from consumer confusion regarding the Respondent’s activities and the business of the Complainant. The Respondent has not used the Disputed Domain Name for a bona fide offering of goods or services. The Respondent is not making a legitimate noncommercial or fair use for the Disputed Domain Name without intent for commercial gain;
3) The Respondent registered and is using the Disputed Domain Name in bad faith. The trade mark ACCUTANE has extremely strong reputation. The manner of sales of isotretinoin products on the Respondent’s website is in violation of FDA regulations. The Respondent has intentionally attempted to attract for financial gain Internet users to the Respondent’s website by creating a likelihood of confusion with the trade mark ACCUTANE as to 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
In order to be successful in this proceeding, the Complainant must show the following:
1) The Disputed Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights;
2) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
3) The Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant clearly has trade mark rights in the trade mark ROACCUTANE by virtue of the trade mark registrations. Although no evidence has been provided by the Complainant as to the registration of the trade mark ACCUTANE, the Panel has taken note that ACCUTANE is a registered as a trade mark in the United States in the name of Hoffman La-Roche Inc (registration number 0966924). Unfortunately, although it is likely that Hoffman La-Roche Inc is related to the Complainant, there is insufficient evidence in the Complaint to indicate that the Complainant derived any rights from this United States registration. In any event paragraph 4(a) of the Policy is not limited to registered trade marks. Past panels have consistently upheld the position that the Policy does not discriminate against unregistered trade marks (e.g, The British Broadcasting Corporation v. Jaime Renteria,WIPO Case No. D2000-0050; XIHA Oy v. Qiu Shengjie, Chen Qing Mei,WIPO Case No. D2010-1204). Based on the evidence provided, the Panel is of the view that ACCUTANE is clearly used by the Complainant as a trade mark in relation to the its goods, namely isotretinoin products, and that it has become a distinctive identifier associated with the Complainant and the Complainant’s goods prior to the registration date of the Disputed Domain Name. Therefore, for purposes of the Policy, the Panel finds that the Complainant has rights in both the ACCUTANCE AND ROACCUTANE trade marks.
The trade mark ACCUTANE is incorporated in its entirety in the Disputed Domain Name. The only difference between the Disputed Domain Name and the trade mark ACCUTANE is the suffix “rx”. It is unclear what this suffix “rx” represents. Regardless, it does not add any significant feature to the Disputed Domain Name. In addition, the website which used to be associated with the Disputed Domain Name appears from the evidence to use the mark ACCUTANE without the “rx” suffix. The suffix is obviously a cosmetic and technical addition to the word “accutane” contained in the Disputed Domain Name and does not successfully distinguish the Disputed Domain Name from the trade mark ACCUTANE.
Therefore, the Panel holds that the Disputed Domain Name is confusingly similar to the trade mark ACCUTANE. For similar reasons, the Panel is also of the opinion that the Disputed Domain Name is confusingly similar to the trade mark ROACCUTANE as it entirely reproduces the dominant part of such trade mark.
The first limb of paragraph 4(a) of the Policy is established. B. Rights or Legitimate Interests
The Complainant has denied any relationship with the Respondent and there is nothing to suggest that the Respondent is commonly known by the Disputed Domain Name.
The Respondent has declined to provide any explanation or to demonstrate any circumstances which may suggest any rights or legitimate interests. Since the Respondent did not file a Response, the Panel is only left with the information that has been submitted in the Complaint.
In the circumstances, in accordance with established principles, the Panel holds that the Complainant has shown a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name. Since the Respondent has failed to rebut the prima facie case, the second limb of paragraph 4(a) of the Policy is also established. C. Registered and Used in Bad Faith
Based on the evidence submitted by the Complainant, the Panel accepts that even though the trade mark ACCUTANE is now used on a limited scale, the past use has been sufficiently extensive to constitute it as prima facie well-known.
The Respondent’s use of ACCUTANE in relation to isotretinoin products on the website resolved from the Disputed Domain Name strongly suggests that the Respondent is well aware of the trade mark ACCUTANE at the time of the registration of the Disputed Domain Name . Even though the products on the Respondent’s website are generic isotretinoin products and not original products under the ACCUTANE trade mark, it is inconceivable that the Respondent chose the trade mark ACCUTANE by mere coincidence. The selection of the Disputed Domain Name by the Respondent together with the use of the Complainant’s trade mark ACCUTANE on the Respondent’s website clearly exhibits a deliberate intent to associate with the Complainant’s trade mark. The offering of products on the website indicates that the website was intended to promote commercial gain.
The use of the Disputed Domain Name on the website in the manner indicated above shows opportunistic bad faith registration and use. Such use takes unfair advantage of the reputation in the Complainant’s trade marks (e.g., Hoffmann-La Roche Inc v. Samuel Teodorek,WIPO Case No. D2007-1814; Birkenstock Orthopädie GmbH & Co. KG v. Chen Yanbing,WIPO Case No. D2010-0746; Privatbrauerei Eichbaum GmbH & Co. KG v. Hamit Karaca,WIPO Case No. D2010-0258; Nintendo of America, Inc. v. Gray West International,WIPO Case No. D2000-1219).
In addition, the Panel is of the view that the Disputed Domain Name falls within the scenario identified under paragraph 4(b)(iv) of the Policy as bad faith registration and use.
Therefore, the Panel accepts the Complainant’s arguments that the Disputed Domain Name is registered and used in bad faith under paragraph 4(a) 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.
Kar Liang Soh
Sole Panelist
Dated: January 7, 2011
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