The Complainant is Roche Products Limited of Welwyn Garden City, United Kingdom of Great Britain and Northern Ireland, represented by Lathrop & Gage LLP, United States of America.
The Respondent is Private Whois Service of Nassau, Bahamas. 2. The Domain Names and Registrar
The disputed domain names , , , and are registered with I Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 21, 2011. On September 22, 2011, the Center transmitted by email to I Corp. a request for registrar verification in connection with the disputed domain names. On September 23, 2011, I Corp. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On September 24, 2011, I Corp. sent an email to the Center stating that the Respondent offered to settle with the Complainant. On September 26, 2011, the Complainant sent a request for suspension to the Center. On September 27, 2011, the Center notified the suspension of the administrative proceedings until October 27, 2011. On October 27, 2011, the Center received by email a request from the Complainant to extend the suspension due date. On October 31, 2011, the Center confirmed that the suspension of the administrative proceedings further extended to November 27, 2011. On October 31, 2011, the Center received an amendment to the Complaint from the Complainant. The Complainant requested to terminate the proceeding for the disputed domain names and , which were listed in the Complaint and later settled between the Parties. The Complainant also requested to reinstitute the proceedings for the remaining disputed domain names. On November 1, 2011, the Center notified the reinstitution of the proceeding to the Parties and the registrar.
The Center verified that the Complaint together with the amendment to 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 4, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 24, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 28, 2011.
The Center appointed Michael J. Spence as the sole panelist in this matter on December 9, 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 is a multi-national pharmaceutical company which, since 1972, has been using the trade mark ACCUTANE to market the drug isotretinoin, used in the treatment of acne. The trade mark has a firmly established reputation, although the company now mostly uses a variant of the trade mark, ROACCUTANE.
The Complainant claims that the Respondent operates web sites using the disputed domain names that offer for sale “competitive third party product(s) including competitive generic isotretinoin in more than a 30 day supply of isotretinoin, which is against FDA regulations.” 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to its trade marks; that the Respondent has not rights or legitimate interests in the disputed domain names; and that its use to attract customers is a classic case of use in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The disputed domain names contain the Complainant’s trade mark ACCUTANE in its entirety, with the addition of only generic or descriptive material. They are undoubtedly identical or confusingly similar to both that trade mark and its variant ROACCUTANE.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the UDRP Policy. B. Rights or Legitimate Interests
It is for the Complainant to establish, at least prima facie, that the Respondent has no rights or legitimate interests in the disputed domain names (Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110). In this case, the fact that the web site operating under the disputed domain names resolve to sites offering goods for sale in competition with those of the Complainant, establishes at least prima facie the absence of any such rights or legitimate interests. The Respondent has tended no evidence to rebut this prima facie position.
The Panel therefore finds that the Complainant has established the second element of paragraph 4(a) of the UDRP Policy. C. Registered and Used in Bad Faith
The diversion of potential customers by creating confusion with a trade mark for the purpose of offering competing goods for sale is perhaps the most established form of bad faith. Such bad faith is particularly evident in this case in which the products offered for sale are, at least in some jurisdictions, being supplied on terms that would not lawfully be open to the owner of the trade mark on the basis that they are in contravention of relevant regulatory provisions.
The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) of the UDRP Policy. 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.
Michael J. Spence
Sole Panelist
Dated: December 17, 2011
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