Complainant is Hoffmann-La Roche Inc. of Nutley, New Jersey, United States of America ("United States"), represented by Sheppard, Mullin, Richter & Hampton, United States.
Respondent is Penny Brown of Biloxi, Mississippi, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with Hosting Concepts B.V. d/b/a Openprovider (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 25, 2015. On November 26, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 1, 2015, the Registrar transmitted by email to the Center its verification response confirming that 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on December 2, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 22, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on December 23, 2015.
The Center appointed Seth M. Reiss as the sole panelist in this matter on January 8, 2016. 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
Complainant is a well-known company engaged in the research, development and distribution of pharmaceutical and diagnostic products. A member of the Roche Group, Complainant together with its affiliated entities have operations in more than 100 countries.
Complainant adopted and has used the trademark ACCUTANE within the United States since 1972 to designate its dermatological preparation indicated for the treatment and prevention of acne. Complainant applied to register the ACCUTANE mark with the United States Patent and Trademark Office, resulting in Registration No. 966924 issued August 28, 1973. Complainant has used and extensively promoted pharmaceuticals under the ACCUTANE mark continuously since its adoption, with sales exceeding hundreds of millions of dollars. The domain name was registered by Complainant's affiliate in April 1997.
The disputed domain name was first registered on July 1, 2014, and was registered to Respondent on June 11, 2015.
At the time the Complaint was filed, the disputed domain name was being used to resolve to an on-line pharmacy that offers to sell the ACCUTANE branded pharmaceutical at low prices. According to Complainant, on-line pharmacies are expressly prohibited from selling Complainant's ACCUTANE product and sales of the product from an on-line pharmacy violates United States federal law.
Respondent is not a licensee of Complainant and is not otherwise authorized to use Complainant's ACCUTANE mark. 5. Parties' Contentions A. Complainant
Complainant contends that the disputed domain name is identical and confusingly similar to Complainant's registered mark ACCUTANE, that Respondent has no rights or legitimate interests in respect of the domain name at issue, and that Respondent registered and is using the domain name in bad faith. In particular, Complainant argues that the disputed name incorporates Complainant's mark in its entirely together with a generic word; that Respondent is not known by the "Accutane" name but is making non-authorized commercial use of Complainant's mark through the disputed domain name; that bad faith registration can be established through Respondent's actual and constructive knowledge of Complainant's ACCUTANE mark; and that bad faith use is established because Respondent is using the domain name to attract Internet users to on-line pharmacies to sell unauthorized or competing products by creating a likelihood of confusion with Complainant's ACCUTANE branded pharmaceuticals.
Complainant requests that the disputed domain name be transferred to it. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs that the "Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Pursuant to paragraph 4(a) of the Policy, Complainant has the burden of establishing the existence of the following three elements:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name was registered and is being used in bad faith. A. Identical or Confusingly Similar
Complainant holds rights to the ACCUTANE mark as a result of long term and widespread use and a national registration. "If the complainant owns a [registered] trademark, then it generally satisfies the threshold requirement of having trademark rights." WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), Section 1.1. A number of other UDRP panels have found that Complainant holds rights in the ACCUTANE mark. E.g., Hoffmann-La Roche Inc. v. Dean Gagnon,WIPO Case No. D2007-1832.
Here, the disputed domain name consists of the ACCUTANE trademark with the generic prefix "the" and the Top-Level Domain ("TLD") suffix ".com". The incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to Complainant's registered mark. See Hoffmann-La Roche Inc. v. Hightech Industries, Andrew Browne,WIPO Case No. D2010-0240, finding the domain name identical or confusingly similar to Complainant's ACCUTANE mark. "The addition of merely generic, descriptive, or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP." WIPO Overview 2.0, Section 1.9. The word "the" is the most generic of words and does nothing to distinguish the disputed domain name from the ACCUTANE mark. It is very well established that the addition of a TLD suffix is irrelevant to the examination of the first element of paragraph 4(a) of the Policy. Credit Management Solutions, Inc. v. Collex Resource Management,WIPO Case No. D2000-0029.
This Panel agrees with Complainant that the disputed domain name is identical or confusingly similar to the mark ACCUTANE in which Complainant holds rights. B. Rights or Legitimate Interests
The consensus view of UDRP panelists concerning the burden of establishing no rights or legitimate interests in respect of the domain name is that:
[w]hile the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP. WIPO Overview 2.0, Section 2.1.
In the pending case Complainant has alleged that Respondent has no rights or legitimate interests in the disputed domain name and that Respondent is using the ACCUTANE mark commercially, without authorization. Respondent uses the disputed domain name to direct Internet users to an on-line pharmacy website that purports to sell low cost ACCUTANE. By United States federal law, Complainant's ACCUTANE product can only be sold by prescription and only to patients registered and qualified into an iPLEDGE program because of the potential for serious adverse effects if prescribed outside the program. This is more than sufficient to establish a prima facie case and shifts the burden to Respondent to demonstrate some rights or legitimate interests in the disputed domain name.
By not submitting a response, Respondent has failed to invoke some circumstance that might demonstrate, pursuant to paragraph 4(c) of the Policy, that Respondent holds some right or legitimate interest in the disputed domain name. Ahead Software AG. v. Leduc Jean,WIPO Case No. D2004-0323.
Because any sale of Complainant's ACCUTANE product from an on-line pharmacy must necessarily be unauthorized, not to mention illegal, Respondent's use of the disputed domain name to point to an on-line pharmacy that purports to sell the ACCUTANE product is incapable of demonstrating a right or legitimate interest by way of a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy.
Other panels have found that use of a disputed domain name to redirect Internet users to an on-line pharmacy demonstrates a respondent's lack of a legitimate interest in the domain name. Hoffmann-La Roche Inc. v. Samuel Teodorek,WIPO Case No. D2007-1814, citing Pfizer Inc. v. jg a/k/a Josh Green,WIPO Case No. D2004-0784.
The Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
Respondent acquired the disputed domain name in 2015, long after Complainant's ACCUTANE mark had been registered and gained widespread recognition, placing Respondent on constructive notice of Complainant's mark at the time Respondent acquired the disputed domain name. Using the disputed domain name to point to a website purporting to sell low cost ACCUTANE pills demonstrates that Respondent also had actual knowledge of Complainant's ACCUTANE mark at the time Respondent acquired the disputed domain name, sufficient to establish bad faith registration.
That Respondent uses the disputed domain name to point to a website purporting to sell low cost ACCUTANE also establishes bad faith use of the disputed domain name. Use of a domain name incorporating a pharmaceutical company mark as a forwarding address to a for-profit on-line pharmacy has been held to demonstrate bad faith use. Pfizer Inc. v. jg a/k/a Josh Green, supra. Such conduct meets the criteria of paragraph 4(b)(iv) of the Policy. Respondent is using the disputed domain name to intentionally attract for commercial gain Internet users to Respondent's site by creating a likelihood of confusion with Complainant's marks as to source, sponsorship, affiliation, or endorsement of Respondent's website and of the products on Respondent's website.
The Panel finds that Respondent has registered and is using the disputed domain name in bad faith establishing the third and final element 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 Complainant.
Seth M. Reiss
Sole Panelist
Date: January 19, 2016
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