The Complainant is Roche Products Limited of San Francisco, California, United States of America, represented by Lathrop & Gage LLP United States of America.
The Respondent is Telos Chamir of Wanchai, Hong Kong, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Key-Systems GmbH dba 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 21, 2011. On October 21, 2022, the Center transmitted by email to Key-Systems GmbH dba a request for registrar verification in connection with the disputed domain name. On October 26, 2011, Key-Systems GmbH dba 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 Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
On November 1, 2011 the Center submitted to the parties a Language of Proceedings Notice indicating that the Language of the Registration Agreement as indicated by the Registrar was German, whereas the Complaint had been filed in English. On November 1, 2011 the Center received an answer from the Complainant concerning the Language of the Proceedings. The Respondent did not submit any Response to the Language of Proceedings Notice. Accordingly, the Center decided to proceed in both German and English.
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent in both English and German of the Complaint, and the proceedings commenced on November 10, 2011. In accordance with the Rules, paragraph5 (a), the due date for Response was November 30, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default in both English and German on December 1, 2011.
The Center appointed Dietrich Beier 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 belongs to one of the world’s biggest research-focused healthcare groups in the fields of pharmaceuticals and diagnostics which has global operations in more than 100 countries. The Complainant owns ROACCUTANE, a registered trademark in several countries. ROACCUTANE is registered, inter alia, in the United Kingdom (registration no. 1119969 from 1979), Ireland (registration no. 96401 from 1979), Malaysia (registration no. 87003258 from 1987) and Singapore (registration no. 83324F from 1979) in class 5.
The mark ROACCUTANE of the Complainant 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 of the group of companies the Complainant belongs to, also an isotretinoin medication, was extensively promoted. The mark ACCUTANE has been used by the group of companies the Complainant belongs to for many decades and has been the subject of significant sales. The brand ACCUTANE is still sold by the group of companies Complainant belongs to, even only on a limited scale.
The product sold by the group of companies Complainant belongs to, inter alia under the name “Accutane” and “Roaccutance”, is well known. It was, however, not established that the Complainant itself has used the mark ACCUTANE or is permitted to enforce rights on ACCUTANE.
The domain name was registered on July 27, 2011, and was used for offering skin care products and other pharmaceutical products of Complainant’s competitors for sale, through linked sites.
In the communication of October 5, 2011, the counsel of the Complainant advised the Respondent that the registration of the disputed domain name infringed trademark rights of the Complainant and requested that the Respondent transfer the disputed domain name to the Complainant. The FedEx package containing the mentioned letter was returned to Complainant’s attorneys marked as “Incorrect address”, and the facsimile was returned as “Check condition of remote fax”, but by all indications the transmission of the letter by e-mail was received by the Respondent. The Complainant did not receive a response. 5. Parties’ Contentions A. Complainant
The domain name must be considered to be confusingly similar with Complainant’s trademark ROACCUTANE. The disputed domain name at issue contains the entire ACCUTANE trademark of the Complainant. Further, the registered mark ROACCUTANE adds only “RO”, the first two letters of The Complainant, the owner of theses names and marks comprising or containing ACCUTANE. In light of this, Respondent’s registration and use of the domain name at issue creates a strong likelihood of confusion as to source, sponsorship, association or endorsement of the Respondent’s web site associated with its disputed domain name by the Complainant. Reference is made to Roche Products Limited v. Domains by Proxy, Inc./ Christian Hunter,WIPO Case No. D2010-1892. “The Complainant holds right 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”.
Respondent has no rights or legitimate interests in the disputed domain name. “Roaccutane” and “Accutane” are not words and have no valid use other than in connection with the Complainant’s brands of isotretinoin acne medication. Neither Complainant nor any of its affiliate companies has authorized the Respondent to use its mark ACCUTANE or to incorporate the ACCUTANE portion of its ROACCUTANE trademark into any domain name. Furthermore, The Complainant has never granted Respondent a license to use its mark ACCUTANE or the ACCUTANE portion of its mark ROACCUTANE mark in any manner.
The Respondent is not using the domain name in dispute in connection with a bona fide offering of goods or services. Respondent is using the disputed domain name to divert Internet users seeking the ACCUTANE or ROACCUTANE dermatological preparation products to an unrelated web site which, through linked sites offers pharmaceutical products including competitive skin care products to the ROACCUTANE and ACCUTANE isotretinoin products without license or authorization of any kind. Respondent’s use and incorporation of ACCUTANE in the disputed domain name is evidence of Respondent’s intent to trade upon the reputation of the ACCUTANE mark, which is very similar to the ROACCUTANE mark. Reference is made to Hoffmann-La Roche Inc. v. Alicia Uzun,WIPO Case No. D2008-1138: “The Panel also finds under the circumstances of this case that as Respondent’s use intentionally trades on the fame of Complainant’s mark, it cannot constitute a bona fide offering of goods and services”. Reference is also made to Hoffman-La Roche Inc. v. Aneko Bohner, WIPO Case No. D2007-1814 :”[…] it would be unconscionable to find […] a bona fide offering of services in a respondent’s operation of (its) web-site using a domain name which is confusingly similar to the complainant’s mark and for the same business”.
There is no evidence that Respondent is making a legitimate non-commercial or fair use of the disputed domain name without intent for commercial gain. The disputed domain name containing the mark ACCUTANE is being used to promote pharmaceutical products including acne drugs of competitors of The Complainant and to sell such products though linked sites.
The Respondent registered and is using the domain name in bad faith since
“Accutane” is not a word and Complainant‘s mark ACCUTANE of the group of companies the Complainant belongs to is an invented and coined mark that has a very strong reputation in North America. Furthermore, by using the disputed domain name containing ACCUTANE to sell pharmaceuticals, including competitive acne products of third party competitors, without permission or license of any kind, the Respondent has intentionally attempted to attract for financial gain Internet users to 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, which are, in fact, competitive commercial providers of third party pharmaceuticals including competitive acne treatment products. Also, Respondent’s web site has not legitimate business connection with the Complainant or the ACCUTANE or ROACCUTANE insitretinoin dermatological preparations. The Complainant has never granted Respondent permission or a license of any kind to use its trademark ACCUTANE in a domain name or in a connected web site though which to sell third party pharmaceuticals including skin care products. Finally, use of the disputed domain name is to promote sales of competitors’ products through use of the famous ACCUTANE mark, being similar to the ROACCUTANE mark, demonstrates bad faith use. Reference is made to Hoffmann-La Roche Inc. v. Samuel Teodorek,WIPO Case No. D2007-1814. B. Respondent
The Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Procedural remark: In accordance with Rule 11 (a) of the Rules for Uniform Domain Name Dispute Resolution Policy, it is in the Panel’s authority to determine the language of the proceedings other than in the registration agreement. In view of the procedural information sent to the Respondent both in German and in English, and the disputed domain name using the English language as well as the website connected to the domain name in question being at least partly in English and the fact that Respondent did not comment or object to the Center’s notification that English and German can be used, panel will conclude these proceedings in English.
In order to succeed in its claim, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has established the fact that it has valid trademark rights for ROACCUTANE.
Whereas the descriptive term “buy” is completely without any distinctiveness in connection with a product name, the disputed domain name is also in view of the remaining elements “Accutane” confusingly similar to the ROACCUTANE mark. The disputed domain name only differs towards the trademark by the two first letters “R” and “O”. Since ROACCUTANE is a known trademark, the two letters being different do not exclude a confusing similarity, even if the different letters are at the beginning of the sign.
The panel notes that it would have been even more clear and persuasive if a member of the Roche group being the owner of the ACCUTANE mark would have challenged the disputed domain name. The circumstances of the use of the mark, however, are of a kind that the panel follows in this case insofar the reasoning of other panels that the addition of two letters being the first two letter of the company name of the Complainant do not lead to an overall impression being dissimilar (see also Roche Products Limited v. Rex Bowden,WIPO Case No. D2011-0735).
The Panel therefore considers the disputed domain name in question to be confusingly similar to the trademark ROACCUTANE in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
In view of the content of the website and in consideration that Respondent did not file any response to the warning letter or in the proceedings, no rights or legitimate interests of the Respondent are conceivable. Respondent has also not shown legitimate interest in the disputed domain name since there is no indication that the Respondent is commonly known by the name ACCUTANE nor that the Respondent is using the disputed domain name in connection with a bona fide offering of related goods or services. Also a non-commercial or fair use is not noticeable.
The Panel therefore finds that the Respondent does not have rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Due to the nature of the ROACCUTANE marks incorporating the famous ACCUTANE mark as known, the Respondent must have been well aware of the Complainant and its trademarks when registering the disputed domain name.
Furthermore, by using the disputed domain name for a sponsored link website where inter alia products of competitors of the Complainant are advertised, it is obvious for this Panel that the Respondent registered the disputed domain name primarily with the intention of attempting to attract, for commercial gain, Internet users to a potential website or other online locations, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of such potential website or location, or of a product or service on such website or location.
The Panel therefore considers that the disputed domain name has been registered and was used in bad faith in accordance with paragraph 4(a)(iii) 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 domain name be transferred to the Complainant.
Dietrich Beier
Sole Panelist
Dated: December, 22, 2011
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