The Complainant is Roche Products Limited, Welwyn Garden City, United Kingdom, of Great Britain and Northern Ireland, represented by Lathrop & Gage LLP, United States of America.
The Respondent is United Ltd., Hisarustu, Istanbul, Turkey and WhoisGuard, WhoisGuard Protected, Westchester, California, United States of America (the “United States”). 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 January 6, 2011. On January 7, 2011, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On January 7, 2011, 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 January 11, 2011 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 January 11, 2011.
The Center verified that 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 January 13, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 2, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 7, 2011.
The Center appointed Fabio Angelini as the sole panelist in this matter on March 2, 2011. 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 world’s leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics and has global operations in more than 100 countries. The Complainant owns ROACCUTANE, a registered trademark in multiple countries, i.e. The United Kingdom of Great Britain and Northern Ireland, Ireland, Malaysia and Singapore. Furthermore the Complainant's parent company , F. Hoffmann-La Roche AG, owns and has registered the domain name . When Internet users type "" in a web browser's URL address window they are directed to Complainant's web site located at “”, through which they can obtain information as to ROACCUTANE and/or ACCUTANE.
The mark ROACCUTANE designates a drug, namely isotretinoin, indicated for the treatment of severe nodular and/or inflammatory acne conglobata or recalcitrant acne. For many years the mark ACCUTANE, also an isotretinoin medication, was extensively promoted in print advertisements, in medical journals, promotional materials, packaging, medical informational materials, television advertising and direct mailings. ACCUTANE has been used by the Complainant since 1972 and has been the subject of hundreds of millions of dollars in sales and has become famous. The brand is still sold by the Complainant on a limited scale, and the fame of the brand is retained, as demonstrated by the continued use of ACCUTANE in domain names by third parties marketing isotretinoin products.
Little is known about the Respondent, who regisitered the disputed domain name on November 19, 2010 and used (apparently use has now ceased) the disputed domain name for a website where it was possible to acquire Roaccutane or Accuitane “by Roche- Switzerland” [sic] pharmaceuticals products.
After learning of the Respondent's unauthorized registration of the disputed domain name incorporating the mark ACCUTANE, on December 16, 2010, the Complainant, through its counsel, of the law firm Lathrop & Gage LLP, sent a letter by Certified Mail Return Receipt Requested, by facsimile and by e-mail to the Respondent's e-mail address indicated in the WhoIs record for the disputed domain name. In this communication, the counsel for the Complainant advised the Respondent that the registration of the disputed domain name infringed the Complainant's trademark rights and requested that the Respondent transfer the disputed domain name to the Complainant. The certified mail, return receipt requested containing the mentioned letter was returned to the Complainant’s attorneys as “Return to sender – Not Deliverable as Addressed – Unable to forward”, but by all indications the transmission of the letter by e-mail and fax were received by the Respondent. 5. Parties’ Contentions A. Complainant
The Complainant submits that the disputed domain name is identical or confusingly similar to trademarks in which it has rights. The Complainant submits that it has used the ACCUTANE and ROACCUTANE trademark in the United States since 1970 and has expended significant time and resources in promoting its goodwill. The disputed domain name consists of the ACCUTANE trademark, preceded by the term “just” and the mere addition of such descritpive term “just” would not prevent a likelihood of confusion on Internet users.
The Complainant also submits that the Respondent has no rights or legitimate interests in the disputed domain name. “Roaccutane” and “Accutane” are fanciful terms which have no meaning and have no valid use other than in connection with the Complainant's brands of isotretinoin acne medication. The Complainant has not authorized the Respondent to use the mark ACCUTANE or to incorporate the ACCUTANE portion of the ROACCUTANE trademark into any domain name. Furthermore, the Complainant has never granted the Respondent a license to use the mark ACCUTANE or the “Accutane” portion of the ROACCUTANE trademark in any manner. The Respondent's use of the disputed domain name indicates that the Respondent’s domain name was selected and is being used because of the goodwill created by the Complainant in its ROACCUTANE and ACCUTANE trademarks. Based upon the Respondent's web site, it is clear that neither the Respondent nor its web site has been commonly known by the disputed domain name pursuant to the Policy, paragraph 4(c)(ii).
The Complainant also argues that the Respondent is not therefore using the domain name to make a bona fide offering of goods or services or making a fair, noncommercial use of it. The Respondent is using the disputed domain name to divert Internet users seeking the Complainant's group web site associated with the domain name or the ACCUTANE dermatological preparation product(s) to an unrelated web site which uses the ACCUTANE and ROACCUTANE marks without license or authorization of any kind to promote the sale of pharmaceutical products.
Finally, the Complainant submits that the Respondent registered and is using the disputed domain name in bad faith. The Complainant submits that the Respondent's true purpose in registering the disputed domain name which incorporates the mark ACCUTANE in its entirety, so similar to the ROACCUTANE mark, is to capitalize on the reputation of the ACCUTANE mark by diverting Internet users to Respondent's web site, without any permission from Complainant, to solicit orders of ACCUTANE, and to actually sell ROACCUTANE and/or ACCUTANE. The bad faith of the Respondent is clearly evident from the fact that “accutane” is not a word but an invented and coined mark that has an extremely strong reputation in North America. Furthermore by using the disputed domain name to sell ROACCUTANE and/or ACCUTANE, without permission or license of any kind, under the ACCUTANE trademark in a domain name and on the Respondent’s web site, the Respondent has intentionally attempted to attract for financial gain Internet users to the Respondent's web site by creating a likelihood of confusion with the ACCUTANE mark, and the nearly identical ROACCUTANE mark, as to the source, sponsorship, affiliation or endorsement of the Respondent's web site or the goods sold on or through the Respondent's web site. The Complainant concludes that use of the disputed domain name to promote sales of ACCUTANE and/or ROACCUTANE through use of the famous ACCUTANE mark, so similar to the ROACCUTANE mark, demonstrates bad faith use. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Complainant has the burden of showing that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trade mark 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.
In the Panel's view, the Complainant has met its burden in the circumstances of this case, for the reasons set out below. A. Identical or Confusingly Similar
This Panel agrees with the Complainant 's view that a user of a mark may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it. This is the more true when the earlier mark has an inherent high degree of distinctiveness being a fanciful artificially coined word with no meaning whatsoever like ACCUTANE is. Here, the Respondent’s domain name incorporates the whole of the ACCUTANE mark and adds the term “just” and similarly to what was held in earlier panel decisions, it is the Panel's view that the addition of a descriptive term like “just” does not prevent the likelihood of confusion in this case. See America Online, Inc. v. Anson Chan,WIPO Case No. D2001-0004. B. Rights or Legitimate Interests
The Complainant is required to proffer a prima facie case that the Respondent lacks rights or interests in the disputed domain name. The burden then shifts to the Respondent to demonstrate the existence of such rights or interests: see the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.1 and cases cited therein.
Paragraph 4(c) of the Policy outlines a number of means by which a respondent may be able to demonstrate rights or interests in a given disputed domain:
(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.
It is the Panel view that the Complainant has met its burden of proof with regard to the Respondent's lack of rights or interests in the disputed domain name.
The Complainant has clearly demonstrated that the Respondent is not affiliated with the Complainant or any of its related companies. It has also demonstrated that the Respondent is not a licensee and it has established that the Respondent is not commonly known by the domain name. It is also the Panel's view, from the Panel's examination of the screenshot of the web site at the time the Complaint was notified to Respondent that the Complainant has proffered a prima facie case that the Respondent's s use of the disputed domain name cannot be described either as a bona fide offering of products or service or legitimate noncommercial use or without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. As a matter of fact the Panel agrees with the Complainant's argument that Internet users, among which US consumers, might easily be led into believing to have accessed a web site connected with or authorized by the Complainant while, on the contrary, the Respondent’s web site offered ACCUTANE products, a non-FDA approved isotretinoin product not authorized for sale in(to) the United States, without license or permission of any kind from the Complainant.
Thus, the Panel agrees that under these circumstances it was not possible for the average Internet users to be certain what was going to really be shipped or purchased, if ACCUTANE - which is not allowed to be sold over the Internet, or in over a 30 day supply- or ROACCUTANE, which is not FDA-approved for sale in the United States in any manner, although the Respondent claimed, (“falsely” according to the Complainant and in the absence of any Respondent's rebuttal that such an allegation is admitted) that all of its medications were FDA approved.
In the Panel's view, the possibility that promoting and offering for sale isotretinoin products without a prescription to customers who may never have personal visits with physicians, may pose a significant risk is a compelling argument that seems to confirm the conclusion that use of the disputed domain name by the Respondent cannot be described either as a bona fide offering of products or service or legitimate noncommercial use or without intent for commercial gain and was capable to both misleadingly divert consumers and to tarnish the trademark or service mark at issue.
The Respondent did not reply to the Complainant's contentions and thus, in the Panel's view, the Complainant has established the second element of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy enumerates several ways that, if found by the Panel to be present, shall be evidence of the use and registration of the disputed domain name in bad faith.
The Complainant contends that, by using the disputed domain name, the Respondent has intentionally attempted to attract Internet users to the disputed domain name. Such use causes confusion and has intentionally attempted to attract for financial gain Internet users to the Respondent's web site by creating a likelihood of confusion with the ACCUTANE mark, and the nearly identical ROACCUTANE mark, as to the source, sponsorship, affiliation or endorsement of the Respondent's web site or the goods sold on or through Respondent's web site.
On the evidence available to it, the Panel finds that, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the disputed domain name by creating a likelihood of confusion between the disputed domain name and the Complainant's ACCUTANE and ROACCUTANE trademarks and this attempt demonstrates bad faith registration and bad faith use (see Hoffmann-La Roche Inc. v. Samuel Teodorek,WIPO Case No. D2007-1814, citing Pfizer Inc. v. jg a/k/a/ Josh Green,WIPO Case No. D2004-0784 citing Casio Keisanki Kabushiki (Casio Computer Co., Ltd.) v. Jonchan Kim),WIPO Case No. D2003-0400).
The fact that the Respondent's website no longer show the products at issue is immaterial, given that Respondent's halted its activity only after the Complaint had been notified and that use of the disputed domain name to promote sales of ACCUTANE and/or ROACCUTANE might very well start again.
Accordingly, on the evidence available to it, the Panel finds that the third element has been met. 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.
Fabio Angelini
Sole Panelist
Dated: March 7, 2011
Full & Egal Universal Law Academy