The Complainant is Roche Products Limited of Welwyn Garden City, United Kingdom of Great Britain and Northern Ireland / Genentech, Inc. of California, United States of America, (both being companies apparently within the same corporate group) represented by Lathrop & Gage LLP, United States of America.
The Respondents are Global Domain Privacy of Bergamo, Italy and Shamsud Doha of High Wycombe, United Kingdom of Great Britain and Northern Ireland (“the UK”). 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with R SpA. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 7, 2011. On October 10, 2011, the Center transmitted by email to R SpA a request for registrar verification in connection with the Domain Name. On October 12, 2011, R SpA transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 19, 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 amendment to the Complaint on October 19, 2011.
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 both Respondents of the Complaint, and the proceedings commenced on October 21, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 10, 2011. Neither Respondent submitted any response. Accordingly, the Center notified the Respondents’ default on November 11, 2011.
The Center appointed Steven A. Maier as the sole panelist in this matter on November 24, 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. Change of Registrant
In this proceeding, it appears from available WhoIs information that the identity of the Registrant changed from Global Domain Privacy to Shamsud Doha on October 11, 2011, the one day in between the Center requesting registrar verification from R and that verification being provided.
While the Complainant filed an amendment to the Complaint to include Shamsud Doha, it made no consequential amendments to the substantive parts of its Complaint, other than to assert that the second Respondent’s address was in the UK. The Panel therefore deems the Complainant’s substantive submissions as against the Respondent Global Domain Privacy to be made similarly as against the Respondent Shamsud Doha. 5. Factual Background
The Complainant is the proprietor of trademarks including the UK registered trademark ROACCUTANE number 1119969 registered on September 3, 1979 in International Class 5.
The Domain Name was registered on June 5, 2011. On October 7, 2011, being the date of submission of the Complaint, the registrant of the Domain Name was Global Domain Privacy. On October 11, 2011 the Registrant of the Domain Name was changed to Shamsud Doha. 6. Parties’ Contentions A. Complainant
The Complainant submits that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant is a pharmaceutical company. It owns the trademarks ROACCUTANE and ACCUTANE which is has used since the 1970s. The marks are registered in numerous territories worldwide. The Complainant’s marks designate the drug isotretinoin which is used in the treatment of acne. The Complainant’s products sold under the marks have been the subject of millions of dollars of sales and extensive advertising and are world-famous.
The Domain Name incorporates the Complainant’s marks ROACCUTANE and ACCUTANE and is identical or confusingly similar to those marks. The addition of the descriptive or non-distinctive term “buy” does not serve to distinguish the Domain Name or alter the fact that it is confusingly similar to the Complainant’s marks.
The Complainant submits that the Respondents have no rights or legitimate interests in respect of the Domain Name. The distinctive part of the Domain Name has no meaning other than to refer to the Complainant’s products and marks. The Complainant has never granted the Respondents any license to use the marks in any manner.
Moreover the Respondent’s use of the Domain Name is disreputable. While the Respondent uses the mark ROACCUTANE its website actually offers the product Accutane which is misleading. Further, the Respondent is misrepresenting to the public that its website is associated with or authorized by the Complainant. The website also misleadingly contains the notice “© The Accutane Clinic UK” without any license or permission from the Complainant.
The Respondents have not used the Domain Name in connection with any bona fide offering of goods or services. Their activities described above cannot constitute a bona fide offering. The Respondents are merely taking advantage of the goodwill that attaches to the Complainant’s marks to attract visitors seeking information about the Complainant’s products to their own, unconnected, website.
Nor have the Respondents been commonly known by the Domain Name.
Nor have the Respondents made legitimate noncommercial or fair use of the Domain Name without intent for commercial gain.
The Respondents registered and are using the Domain Name in bad faith. The Complainant relies on the matters set out above as evidence of such bad faith. In addition, the Respondent has done nothing on its website to dispel the misleading impression of a legitimate connection with the Complainant and its marks. On the contrary, the use of the notice “© The Accutane Clinic UK” adds to the likely confusion.
The Complainant seeks a transfer of the Domain Name. B. Respondent
Neither of the Respondents replied to the Complainant’s contentions. 7. Discussion and Findings
While neither of the Respondents has answered the Complainant’s submissions, it is still necessary for the Complainant to establish that its Complaint meets the three criteria set out in paragraph 4(a) of the Policy. A. Identical or Confusingly Similar
There is no doubt in this case that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. But for the addition of the term “buy” (and the formal suffix “.com”) the Domain Name is identical to the Complainant’s registered trademark ROACCUTANE and similar to its registered trademark ACCUTANE. The term “buy” is descriptive and does not distinguish the Domain Name from the Complainant’s mark. B. Rights or Legitimate Interests
The Panel accepts the Complainant’s submission that it did not license or permit the Respondents to use its trademarks and its submission that the Respondents have never been known by the Domain Name.
The question that requires further examination, however, is whether the Respondents have used the Domain Name for the purpose of a bona fide offering. It does not appear to be disputed that the Respondents are or have been offering the Complainant’s goods for sale and there can be circumstances in which it is legitimate for a reseller of goods (including an unauthorized reseller) to use a trademark owner’s mark for that purpose.
Based on the Decision Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 it may be permissible for a reseller to use a third party’s trademark for the purposes of a domain name where all of the following apply:
(1) there is an actual offering of the trademark owner’s goods or services;
(2) it is only the trademark owner’s goods or services that are being offered;
(3) the registrant’s relationship with the trademark owner is accurately disclosed;
(4) the registrant is not seeking to ‘corner the market’ in domain names relating to the mark.
UDRP Panel decisions subsequent to Oki Data have suggested that additional factors may in some circumstances also be relevant, including:
(5) the domain name does not consist of the ‘unadorned’ trademark alone; and
(6) the registrant is not otherwise taking unfair advantage of the trademark.
See in this regard EPSON Europe BV for and on behalf of Seiko EPSON Corporation v. Intexnauca S.A.,WIPO Case No. DMD2010-0002, Ensto Oy v. Melinte Razvan, SC Bartec RO SRL,WIPO Case No. DRO2011-0008, Mangusta S.r.l. v. Conforzi Design & Consulting Di Conforzi,WIPO Case No. D2011-1336 and Iberostar Hoteles Y Apartamentos, S.L. v. N/A, Yuri Smolyansky, Registrant Organization: N/A Registrant / Contact Privacy Inc.,WIPO Case No. D2011-0952.
In this case it is necessary to examine these circumstances with regard to each of the two Respondents, since it is possible in theory that even if the Complainant were able to make out its case against the first Respondent it may not able to do so against the second Respondent, which is apparently the current registrant.
In the case of the first Respondent, Global Domain Privacy, the Complainant relies on the website to which the Domain Name resolved at the material time. The Complainant’s objections here are that the relevant Respondent was actually selling ACCUTANE and not ROACCUTANE (the former being an older trademark) and that the Respondent misleadingly included the notice “© The Accutane Clinic UK”, adding to the misleading impression that the Respondent’s website was connected with or authorised by the Complainant. There is no evidence that the website sought in any way to disclose the Respondent’s relationship with the Complainant (of which there is none) and the Panel accepts that the references to “The Accutane Clinic UK” serve to add to rather than reduce any scope for confusion in this regard.
In the light of these matters the Panel finds that the first Respondent failed to meet the tests applicable to a reseller set out above and, in particular, that its use of the Domain Name took unfair advantage of the Complainant’s trademark.
The case of the second Respondent, Shamsud Doha, must however be separately examined. On the evidence before the Panel the website linked to the Domain Name changed at or about the time that the second Respondent became the registrant of the Domain Name. The current website consists of a single page stating: “Buy Roaccutane in the UK – Guaranteed Next Day Royal Mail Delivery. This site is down for maintenance. Please check back again soon.” There are then boxes to log in with a Username and Password. The Panel notes that there has been no apparent change in this website content between October 7, 2010 and the date of this Decision, being a period of several weeks.
In the view of the Panel, while it is for the Complainant to prove its case and not for the Respondent to disprove it, a registrant who adopts a trademark for the purpose of reselling the trademark owner’s goods is under an obligation to demonstrate that it is doing so fairly and in accordance with the principles set out above. In the light of the current content of the website, it is impossible to tell what goods are or are intended to be offered or to conclude that any such offering is genuine. Further, there is no reference to the Respondent’s relationship with the Complainant (of which again there is none). In the circumstances, the Panel concludes that the use of the Domain Name for the current website fails to disclose any rights or legitimate interests of the second Respondent in the Domain Name and takes unfair advantage of the Complainant’s trademark. C. Registered and Used in Bad Faith
In the light of the conclusions above, the Panel finds that the use of the Domain Name by both Respondents took unfair advantage of the Complainant’s trademark and that the Domain Name was registered and used by the first Respondent, and has been used by the second Respondent, in bad faith.
The Panel also notes that neither Respondent has taken the opportunity of answering the Complainant’s claims. This lack of response is not consistent with any intention to make bona fide use of the Complainant’s trademark as a lawful reseller and does nothing to detract from the impression of a bad faith registration.
In the circumstances the Panel finds that all of the grounds set out under paragraph 4(a) of the Policy have been made out in this case. 8. Decision
For the foregoing reasons, in accordance with paragraphs 4 of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to the Complainant.
Steven A. Maier
Sole Panelist
Dated: November 30, 2011
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