The Complainant is Roche Products Limited of Welwyn Garden City, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Lathrop & Gage LLP, United States of America.
The Respondent is Ken Edson of Porto Santo, Madeira, Portugal. 2. The Domain Names and Registrar
The disputed domain names and are registered with T, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 29, 2011. On November 29, 2011, the Center transmitted by email to T, Inc. a request for registrar verification in connection with the disputed domain names. On November 20, 2011, T, Inc. 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 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 December 6, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 26, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 28, 2011.
The Center appointed Eduardo Machado as the sole panelist in this matter on January 20, 2012. 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 company incorporated under the laws of the United Kingdom, which belongs to the pharmaceutical group Roche, one of the world’s leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics and has global operations in more than one hundred countries.
The Complainant holds the trademark ROACCUTANE in multiple countries, such as the United Kingdom, Ireland, Malaysia and Singapore. The Complainant has submitted copies of trademarks registrations for the trademark ROACCUTANE dating back as far as 1979.
Complainant’s trademark ROACCUTANE designates a drug, namely isotretinoin, which is indicated for the treatment of severe nodular and/or inflammatory acne conglobate or recalcitrant acne. For many years the trademark ACCUTANE, also an isotretinoin medication, was extensively promoted. The mark ACCUTANE has been used by Complainant since 1972 and has been subject of hundreds of millions of dollars in sales. The brand is still sold by Complainant in a limited scale, and the fame of the brand is retained.
On November 16, 2011, the Complainant sent a cease-and-desist letter by Fedex, facsimile and by email to the Respondent’s address indicated in the WhoIs records for the disputed domain names, advising Respondent that the registration of the disputed domain names infringed trademark rights of Roche and requesting the transfer of the domain names. The facsimile was returned as “Check condition of remote fax”, but by all indication the transmission of the letter by email was received by Respondent. The Respondent did not respond to such communication. 5. Parties’ Contentions A. Complainant
The Complainant argues that the disputed domain names reproduce its entire ACCUTANE mark, and partially reproduce its ROACCUTANE trademark.
The Complainant contends that the Respondent lacks rights or legitimate interests over the disputed domain names. The Complainant informs it has never permitted or authorized the use of its trademarks to the Respondent. The Complainant also states that the Respondent has never been known by the disputed domain names or by the trademarks ACCUTANE or ROACCUTANE. Furthermore, the Complainant argues that the Respondent has been using the disputed domain names to offer Accutane and third parties’ competitive products. The Complainant concludes that the Respondent has not used the domain names for a bona fide offering of goods or services, and that the Respondent is not making a legitimate noncommercial or fair use of the domain names without intent for commercial gain.
The Complainant also argues that the Respondent has registered and is using the disputed domain name sin bad faith, as the Respondent seeks to capitalize on the reputation of the Complainant’s trademarks, by diverting internet users seeking information on the Complainant and its products. The Complainant argues that the Respondent clearly had its famous trademarks in mind when it registered the disputed domain names to use them in connection with selling pharmaceutical products. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant is required to prove the presence of each of the following three elements to obtain the remedy it has requested: (i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and (iii) the disputed domain names have been registered and are being used in bad faith, Policy, paragraph 4(a). A. Identical or Confusingly Similar
The Panel finds that registered trademarks of the Complainant are highly distinctive in the pharmaceutical area and have a strong reputation in many countries. The Panel finds that the disputed domain names are confusingly similar to Complainant’s trademarks ACCUTANE and ROACCUTANE.
The Panel finds that the only difference between Complainant’s trademarks and the disputed domain names and is the addition of generic words and expressions, namely “buy”, “20 mg”, “online”, “Canadian” and “no prescription”. Several prior Panel have found that adding generic expressions such as the previously cited is not enough to escape a finding of confusingly similarity. The Panel finds that the same occurs in this case, and, further, that adding generic word in connection with Complainant’s activities and products is likely to increase the possibility of confusion amongst internet users.
The Panel finds that this similarity can mislead Internet users who search for information about the Complainant and its products and divert them to the disputed domain name.
The Panel, therefore, finds that Complainant has established the first condition of the paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The Complainant has alleged that the Respondent has no rights or legitimate interests in the disputed domain names which contain in their entirety the Complainant’s mark ACCUTANE and a partial reproduction of Complainant’s trademark ROACCUTANE. Taking into consideration the Complainant’s prima facie case that the Respondent lacks rights and legitimate interests and that the Respondent has failed to respond to the Complaint, the Panel finds on the record before it that the Respondent lacks rights and legitimate interests in the disputed domain names.
As a matter of a fact, the Complainant has made a prima facie case in support of its allegations and, due to this, the burden of production has shifted to the Respondent to show that it does have rights or legitimate interests in the disputed domain names, according to paragraph 4(a)(ii) of the Policy.
With respect to paragraph 4(c)(i) of the Policy, there is no evidence that the Respondent, before any notice of the dispute, used or prepared to use the disputed domain names or any name corresponding to the disputed domain names in connection with a bona fide offering of goods or services.
With respect to paragraph 4(c)(ii) of the Policy, there is no evidence that indicates that the Respondent has ever been commonly known by the disputed domain names.
With respect to paragraph 4(c)(iii) of the Policy, the Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed domain names and has not used the disputed domain names, or any name corresponding to them, in connection with a bona fide offering of goods or services.
Thus, in view of the above, the Panel finds that the Complainant has established the second condition of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Under paragraph 4(b) of the Policy, a respondent has registered and used a domain name in bad faith if, inter alia, the respondent has used the domain name intentionally to attempt to attract, for commercial gain, Internet users to the respondent’s website or other online location by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the respondent’s site or of a product or service offered on the respondent’s site. (Policy, paragraph 4(b)(iv)).
The Panel finds that the Respondent registered the disputed domain name in bad faith.
The Respondent has intentionally registered the disputed domain names which contain in their entirety the Complainant’s mark ACCUTANE and a partial reproduction of Complainant’s trademark ROACCUTANE. By the time the disputed domain name was registered, the Respondent was likely aware of the Complainant’s rights on the trademarks ACCUTANE and ROACCUTANE.
The Complainant’s allegations of bad faith are not contested. The evidence provided by the Complainant confirms that it had long been using its ACCUTANE and ROACCUTANE trademarks when the disputed domain names were registered. Moreover, the Complainant submitted consistent evidence that its trademarks are well known and the Respondent has been using the disputed domain names to sell Complainant’s products as well as competing products. The Panel finds that the Respondent must have been aware of the Complainant’s rights in their marks and, further, that the Respondent knowingly intended to create a likelihood of confusion with those trademarks when it registered the disputed domain names.
Also, under paragraph 4(b)(iv) the Policy, it is evidence of bad faith that, “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.” The Respondent used the Complainant’s trademarks to attract users to the Respondent’s website where the Complainant’s products and competing products were offered. This is evidence of the intention by the Respondent to attract Internet users for commercial gain, by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites or of a product or service on the Respondent’s website.
At the time the Complaint was filed and at the time of this decision, the disputed domain names resolve to a webpage that offers the Complainant’s products and competing products.
In light of these, the Panel finds that the Complainant has established the third element of the paragraph 4(a) of the 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 .
Eduardo Machado
Sole Panelist
Dated: February 01, 2012
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