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 Valerij Rudko, Kharkov, Ukraine. 2. The Domain Names and Registrar
The disputed domain names and are registered with Center of Ukrainian Internet Names (UKRNAMES). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 3, 2011. On May 3, 2011, the Center transmitted by email a request for registrar verification in connection with the disputed domain names. On May 10, 2011, Center of Ukrainian Internet Names (UKRNAMES) 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 notified the Complainant that as the language of the registration agreement for each of the disputed domain names was Russian (as per information provided by the Registrar), the Complainant would need to provide satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English; submit the Complaint translated into Russian; or submit a request for English to be the language of the administrative proceedings. On May 12, 2011 the Complainant submitted an Amended Complaint in which the Complainant requested English to be the language of the administrative proceedings.
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 May 19, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 8, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 17, 2011.
The Center appointed Irina V. Savelieva as the sole panelist in this matter on July 13, 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 field of pharmaceuticals and diagnostics and has global operations in more than 100 countries. The Complainant owns the ROACCUTANE trademark, a registered trademark in multiple countries, e.g. in the United Kingdom, Ireland, Malaysia and Singapore. Certain trademark registrations date back to 1979 and are still in use.
The ROACCUTANE trademark of the Complainant designates a drug, namely isotretinoin, indicated for treatment of severe nodular and/or inflammatory acne conglobata or recalcitrant acne. The Complainant has also for many years marketed a drug under the ACCUTANE trademark, also an isotretinoin medication, which has been extensively promoted by the Complainant. The ACCUTANE trademark has been used by the Complainant since 1972 and has become famous through hundreds of millions of dollars of sales. The drug under the ACCUTANE trademark is still sold by the Complainant on a limited basis and the fame of the brand is retained, which is demonstrated by the continued use of the ACCUTANE trademark in domain names by third parties marketing isotretinoin products.
The disputed domain names and were both registered on January 13, 2011. 5. Parties’ Contentions A. Complainant
(a) The disputed domain names are confusingly similar to a trademark or service mark in which the Complainant has rights:
- The disputed domain names at issue contain the entire ACCUTANE trademark of the Complainant. Further the ROACCUTANE trademark adds only “RO”, the first two letters of Roche (the Complainant), the owner of these names and marks comprising or containing ACCUTANE. In light of this, the Respondent’s registration of the disputed domain names creates a strong likelihood of confusion as to the source, sponsorship, association or endorsement of the websites associated with the disputed domain names.
- The Complainant further attempted to contact the Respondent prior to these proceedings advising the Respondent that the registrations of the disputed domain names infringed trademarks of the Complainant. However all correspondence was returned, thus indicating that the information provided for the registrations was false. According to Oxygen Media LLC v. Primary Source,WIPO Case No. 2000-0362, providing false contact information is evidence of bad faith. Such acts by the Respondent create confusion in the marketplace and causes harm to the Complainant and the public.
- Numerous cases have established that adding descriptive language, in this case the words “prescription”, “with” and “no” does not prevent the likelihood of confusion. In this case the disputed domain names incorporate the whole ACCUTANE trademark of the Complainant (similar to ROACCUTANE trademark) and add the terms “prescription”, “with” and “no”. The websites associated with the disputed domain names offer ACCUTANE branded products (depicting ACCUTANE packaging of the Complainant) but in fact supply “generic Accutane”, i.e. isotretinoin products of the competitors of the Complainant. The websites associated with the disputed domain names provide isotretinoin products in 30, 60 and 90-day supply (while according to FDA regulations only a 30 day supply is permitted). The websites mentioned also provide skin care products and multiple pharmaceutical products of the Complainant’s competitors for sale without license or permission of any kind from the Complainant. It also appears that the isotretinoin products offered are being offered without prescription, which is illegal.
(b) The Respondent has no rights or legitimate interests in respect of the disputed domain names:
- “Roaccutane” and “Accutane” are not words and have no valid use other than in connection with the Complainant’s brands of isotretinoin acne medication. The Complainant did not authorize the Respondent to use the ACCUTANE trademark of to incorporate the ACCUTANE part of ROACCUTANE trademark in any domain names. Furthermore the Complainant has never granted the Respondent a license to use the ACCUTANE trademark or the ACCUTANE portion of the ROACCUTANE trademark in any manner. The Respondent’s use of the disputed domain names clearly indicates that the disputed domain names were clearly selected and are being used because of the goodwill created by the Complainant in its ACCUTANE and ROACCUTANE trademarks. Based on the websites associated with the disputed domain names it is clear that neither the Respondent nor the websites that are associated with the disputed domain names have been commonly known by the names forming the disputed domain names.
- The Respondent’s use of the disputed domain names is purely disreputable. The websites associated with the disputed domain names offer ACCUTANE products, but supply a third party generic isotretinoin, apparently illegally and without a prescription as well as other products of third party competitors of the Complainant. Such activity is likely to confuse purchasers and cause damage to the Complainant and possible harm to the purchasing public. All of the Respondent’s uses of the ACCUTANE trademark are without permission or authorization from the Complainant.
- The actions undertaken by the Respondent may lead a consumer to believe that the Respondent is a source of the ACCUTANE products and related information or that the Respondent is affiliated or sponsored by the Complainant. Alternatively it may also lead consumers to believe that the websites associated with the disputed domain names are owned and/or operated by the Complainant.
- The Respondent by registering and using the disputed domain names is seeking to capitalize on the reputation associated with trademarks held by the Complainant. The Respondent is seeking to use such recognition to divert Internet users to websites associated with the disputed domain names that are completely unrelated to the Complainant. Such use of the ACCUTANE trademark and its near identical ROACCUTANE trademark is clear indication of bad faith on part of the Respondent.
- The Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services. A respondent’s use of the disputed domain names, which intentionally trades on goodwill of marks of the Complainant, cannot constitute a bona fide offering of goods or services.
- The Respondent was further not authorized by the Complainant to offer products and services related to the Complainant and this further cannot constitute a bona fide offering of goods and services.
- There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names. The Respondent is using the Complainant’s trademarks in the disputed domain names in order to link to websites that sell isotretinoin products, amongst others, without any license or authorization from the Complainant, which cannot present a legitimate noncommercial or fair use.
- The disputed domain names use the Complainant’s trademarks in order to promote generic forms of isotretinoin products and products of the Complainant’s competitors, which cannot constitute a legitimate non-commercial or fair use.
(c) The disputed domain names were registered and are being used in bad faith:
- The Respondent’s real purpose in registering the disputed domain names, which incorporate the ACCUTANE trademark in its entirety and part of the ROACCUTANE trademark, is to capitalize on the reputation of the ACCUTANE trademark by diverting Internet users to websites associated with the disputed domain names without any permission from the Complainant to solicit orders. The bad faith is evidenced by the fact that “accutane” is not a word, the ACCUTANE trademark has been coined and invented and has a strong reputation in North America, while the sale of isotretinoin products without permission or license and requiring prescription can be construed as illegal. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Language of the Proceedings
The language of the registration agreement for each of the disputed domain names is Russian. The Complainant has provided a request for the administrative proceedings to be conducted in English. The Respondent has not responded in any way to the Complaint.
In the Amended Complaint the Complainant requests for English to be the language of the administrative proceedings. This is based on the fact that the websites associated with the disputed domain names are fully in English, prices listed are in U.S. dollars and the shipment is to customers in the United States of America. Therefore it is clear that the Respondent is able to do business in English.
The Panel notes the request for English to be the language of the administrative proceedings in the Amended Complaint. The Panel further notes that the Respondent has not filed any Response to the Complaint in either language.
The Panel finds that English should be the language of the administrative proceedings. The Panel finds that the Respondent being properly notified about the proceedings was given an opportunity to present his position on the matter of the language of the administrative proceedings; however, the Respondent has not communicated any response. Taking into account that the Respondent did not file any Response and that the Complaint was originally submitted in English, with an Amended Complaint requesting for English to be the language of the administrative proceedings, the Panel finds it appropriate to conduct these proceedings in English in order to minimize any possible costs associated with the proceedings and to ensure that the proceedings are conducted in an efficient and timely manner. The Panel further notes that all of the Center’s communications have been transmitted in both Russian and English. B. Identical or Confusingly Similar
The Complainant has registered the ROACCUTANE trademark in a number of jurisdictions. The Complainant also trades and has traded products since 1972 under the ACCUTANE trademark. The Complainant submits that the disputed domain names are confusingly similar to its trademarks as the disputed domain names incorporate the ACCUTANE trademark in its entirety and part of the ROACCUTANE trademark. As the word “accutane” has no meaning in the English language, the Panel finds the Complainant’s ACCUTANE and ROACCUTANE trademarks to be highly distinctive. Further to this, in Roche Products Limited v. Domains by Proxy, Inc. / Christian Hunter,WIPO Case No. D2010-1892 it was held that “The Complainant holds rights in the ROACCUTANE and ACCUTANE trademarks… (and the disputed domain names, containing ACCUTANE and descriptive words) are confusingly similar with the Complainant’s ROACCUTANE and ACCUTANE trademarks”. Thus it has been already established that the ACCUTANE and ROACCUTANE trademarks are highly distinctive and that the disputed domain names incorporate the ACCUTANE trademark in its entirety and part of the ROACCUTANE trademark.
In relation to the incorporation in the disputed domain names of generic words such as “prescription”, “with” and “no” the Panel finds that the inclusion of generic elements together with a trademark cannot contribute to distinguishing the disputed domain names from the registered trademarks where such domain names incorporate distinctive trademarks. The Panel finds that due to the high distinctiveness of the ACCUTANE and ROACCUTANE trademarks of the Complainant, the addition of the merely generic or descriptive elements “prescription”, “with” and “no” in the disputed domain names does not avoid a finding of confusing similarity in this case. Indeed, the inclusion of these terms in the disputed domain names together with the name of the drug being sold may increase the risk of confusion for the Internet users taking into account that the Respondent is using the disputed domain names to link to websites that are offering the ability to purchase drugs online.
It is clear in the Panel’s view that in the mind of an Internet user, the disputed domain names could be directly associated with the Complainant’s trademarks, which is likely to be confusing to the public as suggesting either an operation of the Complainant or one associated with or endorsed by it (See AT&T Corp. v. Amjad Kausar,WIPO Case No. D2003-0327).
Accordingly, the Panel finds the incorporation of the merely generic or descriptive words “prescription”, “with” and “no” in the disputed domain names and does not prevent a finding of confusingly similarity to the Complainant’s trademarks ACCUTANE and ROACCUTANE.
The Panel finds that the Complainant has satisfied its burden of proof under paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain names.
Even though the Respondent has not filed a Response to the Complaint and has not contested the Complainant’s assertions, the Panel needs to consider whether the Respondent’s has rights or legitimate interests in the domain names.
According to paragraph 4(c) of the Policy the following circumstances, if proved, demonstrate a respondent’s rights or legitimate interests in a domain name:
(i) respondent used or demonstrably prepared to use the domain name or corresponding name in connection with a bona fide offering of goods or services prior to notice of the dispute; or
(ii) respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark rights; or
(iii) 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 complainant’s marks.
A respondent may elect to show rights or legitimate interests, non-exhaustively, by producing proof under paragraphs 4(c)(i)-(iii) of the Policy.
By not responding to the Complainant’s contentions, the Respondent in these proceedings has not attempted to demonstrate its rights or legitimate interests.
The Panel further notes that, there is no evidence that before any notice of the dispute with the Complainant, the Respondent was using the disputed domain names for a bona fide offering of goods or services.
According to the documents submitted by the Complainant the disputed domain names link to a website that is in the business of offering for sale various medicines, including those that are sold under the ACCUTANE trademark. The Complainant further contends that the products that are marketed under the ACCUTANE trademark of the Complainant are in fact generic products that could not have been authorized for sale in such fashion by the Complainant.
This use of the dispute domain names, in the Panel’s view, cannot constitute a bona fide offering of goods and services in the circumstances of this case, so there is no evidence that the Respondent is able to show rights or legitimate interests in respect of the disputed domain names under paragraph 4(c)(i) of the Policy.
As to paragraph 4(c)(ii) of the Policy, there is no evidence that the Respondent has been commonly known by the disputed domain names.
The disputed domain names were registered on January 13, 2011. The Complainant asserts that the product under the ACCUTANE trademark has been registered and in use since 1972 and that the product is widely known by the ACCUTANE trademark, which is particularly popular and has gained great publicity in North America.
Therefore as the disputed domain names have been registered more than 30 years after the registration of the Complainant’s ACCUTANE trademark, it is highly unlikely that the Respondent has been commonly known by the disputed domain names as provided in paragraph 4(c)(ii) of the Policy.
It is the Panel’s view, on the present facts, that the Respondent most likely registered the disputed domain names with full awareness of the Complainant’s trademarks as well as the goodwill associated with them.
There is further evidence that the Respondent is possibly making commercial use from the disputed domain names (by linking to a website that offer medicines for sale). The Respondent is using the disputed domain names to further misleadingly divert customers to other websites that are not associated with the Complainant. Therefore paragraph 4(c)(iii) of the Policy does not apply.
The Panel finds the Complainant has carried out its burden of proof to show that the Respondent has no rights or legitimate interests in the disputed domain names. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances are deemed to be evidence that a respondent has registered and is using a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of the complainants, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant mark as to the source, sponsorship, affiliation or endorsement of its website or location or of a product or service on its website or location.
The Complainant contends that the Respondent has violated the bad faith provision of the Policy because the disputed domain names are used in connection with the offer for sale of other medicines via a website, including those that are direct competitors to the product of the Complainant associated with the ACCUTANE trademark, generic Accutane products, as well as other medical products. The Complainant further contends that the disputed domain names were registered and used primarily for the purpose of confusing and misleading the public as to the affiliation of the disputed domain names as well as associated websites with the trademarks of the Complainant.
The Panel finds that the Respondent's use of the disputed domain names has created a risk of confusion with the Complainant’s products and trademarks as to the source, sponsorship, affiliation or endorsement of the disputed domain names and websites associated with them.
The Panel finds that the Complainant has presented evidence that the Respondent is in violation of the provisions of paragraph 4(b)(iv) of the Policy in respect of the disputed domain names.
The Panel holds that the Respondent has registered the disputed domain names in bad faith. In the circumstances, the Respondent must have known about the Complainant’s products and should have been aware of the trademarks of the Complainant. The Panel is not aware of the Respondent conducting any legitimate business activity using the disputed domain names. These findings, together with the finding that the Respondent has no rights or legitimate interests in the disputed domain names, lead the Panel to conclude that the disputed domain names were registered and used by the Respondent in bad faith.
Moreover, the Panel draws inferences of bad faith from the fact that the websites associated with the disputed domain names are offering drugs for sale online that would normally require a prescription and consultation/monitoring from a qualified doctor.
The Panel also draws inferences of bad faith from the lack of any response from the Respondent to the Complaint.
The Panel finds the Complainant has shown that the Respondent registered and used the disputed domain names in bad faith. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, and be transferred to the Complainant.
Irina V. Savelieva
Sole Panelist
Dated: July 27, 2011
Full & Egal Universal Law Academy