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 Dmitriy N.A. / PrivacyP of Nobby Beach, Queensland, Australia and Oblast, Ukraine, respectively. 2. The Domain Name and Registrar
The disputed domain name is registered with UK2 Group Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 18, 2012. On February 20, 2012, the Center transmitted by email to UK2 Group Limited a request for registrar verification in connection with the disputed domain name. On February 20, 2012, UK2 Group Ltd. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 22, 2012 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 amended Complaint on February 27, 2012
On February 22, 2012, the Respondent informed the Center that we would delete the disputed domain name. On the same date, the Center informed the parties of the possibility of suspending the proceeding in order to explore a possible settlement. On February 28, 2012, the Center notified the suspension of the proceeding. On March 27, 2012 the Complainant requested the reinstitution of the proceeding.
The Center verified that the Complaint together with the amended 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 11, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 31, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 1, 2012.
The Center appointed George R. F. Souter as the sole panelist in this matter on June 22, 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, together with its affiliated companies in “the Roche Group”, is one of the world’s leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics, and has global operations in over 100 countries. The Complainant has supplied the Panel with details of trademark registrations in a number of countries, dating from 1979, of its trademark ROACCUTANE, which designates a drug, isotretinoin, indicated for treatment of severe nodular and/or inflammatory acne conglobata or recalcitrant acne. The Complainant points out that ROACCUTANE is a combination of the trademark ACCUTANE, together with the first two letters of its name, Roche.
The mark ACCUTANE, which also designates an isotretinoin medication, has been used by Roche since 1972, and has engendered millions of dollars of sales. Evidence of the fame of this trademark, in the form of unsolicited media attention, including in newspaper and magazine articles, has been provided to the Panel. Accutane products are still sold by Roche on a limited scale, and the acquired reputation of the mark is maintained by its continued use in domain names of third parties marketing isotretinoin and other acne/skin-care pharmaceutical products.
In connection with the mark ACCUTANE, the Complainant has drawn the Panel’s attention to the decision in Roche Products Limited v Andrew Palanich, NAF Claim No. 1010001354115, to the effect that: “Continued public use of the product over more than three decades has provided sufficient evidence of secondary meaning and warrants trademark protection … under the Policy 4(a)(i).”
The disputed domain name was registered on December 14, 2011. 5. Parties’ Contentions A. Complainant
The Complainant alleges that the disputed domain name contains its entire trademark ACCUTANE. Further, the registered mark ROACCUTANE adds only “RO”, the first two letters of Roche, the owner of these names and marks comprising or containing ACCUTANE. The Complainant argues that, consequently, the Respondent’s registration and use of the disputed domain name “creates a strong likelihood of confusion as to source, sponsorship, association or endorsement of the Respondent’s web site operated under the disputed domain name by Roche”. The Complainant also argues that confusion cannot be avoided by the addition to a trademark of descriptive or non-distinctive matter. The Complainant alleges that the disputed domain name is identical or confusingly similar to the ACCUTANE and ROACCUTANE trademarks of Roche within the meaning of paragraph 4(a)(i) of the Policy.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name; in particular that neither the Complainant nor any of its affiliated companies in the Roche Group has authorized or licensed the Respondent to use its mark ACCUTANE or the ACCUTANE portion of its mark ROACCUTANE in any domain name or otherwise. The Complainant alleges that it is clear from the Respondent’s web site operated under the disputed domain name that neither the Respondent nor its web site had been commonly known by the disputed domain name before the date of its registration. The Complainant alleges that the Respondent lacks right or legitimate interests in the disputed domain name,
within the meaning of paragraph 4(a)(ii) of the Policy.
The Complainant alleges that the disputed domain name has been registered and is being used in bad faith, contrary to the provisions of paragraph 4(a)(iii) of the Policy, and has drawn the Panel’s attention to the use of the web site operated under the disputed domain name, and its link site, where Accutane products are sold, as well as many other third party competitors’ products. The Complainant contends: “Such activity is infringing, and is likely to confuse purchasers, all to the damage of Roche and the possible harm of the purchasing public”. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain name of the Respondent be transferred to the Complainant or be cancelled:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark (“mark”) in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
It is well-established in decisions under the UDRP that gTLD indicators (“.com”, “.info”, “.net”, “.org”) are legally irrelevant to the consideration of confusing similarity between a trade mark and a domain name. It is also well-established in previous decisions under the UDRP that the mere addition of generic or descriptive elements to a well-known or distinctive mark is not sufficient to evade a finding of confusing similarity. The Panel agrees with prior panels as referred to above, both in connection with gTLD indicators and in connection with added generic or descriptive elements.
In the present case, the Panel regards the words ACCUTANE and ROACCUTANE as coined and proprietary to the Complainant. The Panel is aware of dozens of proceedings under the Policy in which the Complainant has sought relief from domain names incorporating ACCUTANE in their texts, and is aware that panels have consistently recognized the Complainant’s trademark rights to both ACCUTANE and ROACCUTANE. The Panel is also aware of the decision in Hoffmann-La Roche Inc. v. Online Pharma,WIPO Case No. D2006-0628, which concerned the disputed domain name . In that case the panel found the disputed domain name confusingly similar to the Complainant’s ACCUTANE mark. The present disputed domain name differs from the disputed domain name in that case only by a lack of hyphens and the additional letters “ing”, which the Panels regards as immaterial, and finds the matter added to the ACCUTANE trademark in this case to be descriptive or generic, and, consequently, insufficient to avoid a finding of confusing similarity. Accordingly, the Panel finds that the Complainant has satisfied the test set out in paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Where the respondent has failed to demonstrate rights or legitimate interests in the disputed domain name, it is the predominant view of panels in previous UDRP decisions, with which the present Panel agrees, that a prima facie case advanced by the complainant will be sufficient for the complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy.
In this case, the Respondent did not take advantage of the opportunity presented in these proceedings to advance any justification of a claim to rights or legitimate interests in the disputed domain name, and the Panel can draw the appropriate conclusion under the Policy. The Panel accepts the Complainant’s contentions (above) under paragraph 4(a)(ii) of the Policy as establishing a prima facie case, and, accordingly, finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The Panel is of the view that, in the case of a well-known or distinctive mark, the finding that the Respondent has no rights or legitimate interests in a disputed domain name, may lead, in appropriate circumstances, to a finding that the disputed domain name was registered in bad faith. The Panel finds such circumstances in the present case, and, accordingly, finds that the disputed domain name was registered in bad faith.
The use by the Respondent of a web site operated under the disputed domain name, and a link site, to offer products under the Complainant’s trademark ACCUTANE and competing third party products, is clearly to the detriment of the Complainant’s economic and reputational interests, and, in the Panel’s view, clearly demonstrates use in bad faith. Accordingly, the Panel finds that the disputed domain name has been both registered and is being used in bad faith, and that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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 disputed domain name be transferred to the Complainant.
George R. F. Souter
Sole Panelist
Dated: July 6, 2012
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