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 Anatoliy Koshkin of Dnepropetrovsk, Ukraine / Domain ID Shield Service Co., Limited of Hong Kong, China.
The disputed domain names <drug-accutane.com>, <pharm-accutane.com> and <pharmacy-accutane.com> (collectively, the “Domain Names”) are registered with OnlineNic, Inc. d/b/a China-Channel.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 14, 2012. On February 14, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On February 15, 2012, the Registrar 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 February 17, 2012. In accordance with the Rules, paragraph 5(a), the due date for the Response was March 8, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 9, 2012.
The Center appointed Haig Oghigian as the sole panelist in this matter on March 23, 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.
As there is no submission from the Respondent, the facts are taken from the Complaint and generally are accepted as true.
The Complainant, together with its affiliated companies (“Roche”), is one of the world’s leading healthcare groups focusing on research in the fields of pharmaceuticals and diagnostics. The Complainant owns ROACCUTANE, a registered trademark in multiple countries, including the United Kingdom, Ireland, Malaysia and Singapore.
The mark ROACCUTANE 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 owned by Roche, also an isotretinoin medication, was extensively promoted, without limitation, in print advertisements, in medical journals, promotional materials, packaging, medical informational materials, television advertising and direct mailings. The mark ACCUTANE has been used by Roche since 1972. The brand is still sold by Roche on a limited scale, and the fame of the brand is retained, as demonstrated by the continued use of ACCUTANE in domain names by third parties marketing isotretinoin or other acne, skin care or pharmaceutical products.
The Complainant requests that the Domain Names be transferred from the Respondent to the Complainant.
The Complainant argues that the Domain Names are identical or confusingly similar to the Complainant’s registered trademark, ROACCUTANE, and the mark ACCUTANE, which is still in use by Roche. The addition of the descriptive language added to the Domain Names, namely, “pharmacy-”, “drug-” and “pharm-” does not prevent the likelihood of confusion as to source, sponsorship, association or endorsement of the Respondent’s websites associated with the Domain Names.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Names. “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 the Complainant nor any of its affiliates has authorized the Respondent to use the ACCUTANE mark or to incorporate the ACCUTANE portion of its ROACCUTANE trademark into any domain names. The Complainant has never granted the Respondent a license to use the ACCUTANE portion of its ROACCUTANE trademark, and there is no evidence to suggest that the Respondent has been or is commonly known by the Domain Names. The Respondent’s Domain Names resolve to websites which, in one case, improperly uses Roche’s registered trademark ACCUTANE as a part of a copyright notice. In addition, two of the Respondent’s sites use ACCUTANE brand packaging of Roche while actually selling competitive third party products, including competitive generic isotretinoin in more than a 30-day supply of isotretinoin, and all three sites sell multiple pharmaceutical products of third party competitors of Roche, including multiple third-party skin care products. The Complainant contends that the Respondent is not using the Domain Names for a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Domain Names without intent for commercial gain.
The Complainant further claims that the Domain Names were registered and are being used in bad faith. It contends that the Respondent’s purpose in registering the Domain Names is to capitalize on the reputation of the ACCUTANE mark by diverting Internet users seeking information or the medications offered by Roche to the Respondent’s own websites. The Complainant claims that the bad faith of the Registrant is clearly evident from the fact that (i) “Accutane” is not a word; (ii) the ACCUTANE mark owned by Roche is a coined mark that is widely known in North America; (iii) the Respondent has intentionally attempted, for financial gain, to attract Internet users to Respondent’s websites by creating a likelihood of confusion with the ACCUTANE mark; and (iv) the Respondent has used the Domain Names to promote sales of the Complainant’s competitors’ products.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following:
(i) The Domain Names are identical or confusingly similar to the Complainant’s trademark; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) The Domain Names have been registered and are being used in bad faith.
Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must prove that the Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights. In line with such provision, the Complainant must prove that it enjoys the trademark right, and that the Domain Names are identical with or confusingly similar to its trademark or service mark.
It is established that the addition of generic or descriptive words, letters or numbers to a mark used in a domain name does not alter the fact that the domain name is confusingly similar to the mark. See America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004. Thus, the addition of the descriptive language added to the Domain Names, namely, “pharmacy-”, “drug-” and “pharm-” does not prevent a finding of confusing similarity between the Domain Names and the Complainant’s trademark.
Further, it is recognized that the incorporation of a trademark in its entirety is sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy. See, Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Arthur Wrangle, WIPO Case No. D2005-1105. Here, the Domain Names incorporate the ACCUTANE portion of the Complainant’s ROACCUTANE mark.
It is clear on the given evidence that the Complainant owns trademark rights in the ROACCUTANE mark since 1979.
Therefore, the Panel finds that the Domain Names are confusingly similar to the Complainant’s mark. The Complainant has therefore satisfied the requirement of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy gives a non-exhaustive list of circumstances that may be brought forward by the Respondent in order to demonstrate its rights or legitimate interests in the Domain Names. Such circumstances include:
- (demonstrable preparations to) use the Domain Names in connection with a bona fide offering of goods or services prior to the dispute;
- an indication that the Respondent has been commonly known by the Domain Names even if it has acquired no trademark rights; or
- legitimate noncommercial or fair use of the Domain Names without intent to divert consumers or to tarnish the trademark.
Since the Complainant’s adoption and extensive use of the ROACCUTANE mark predates the registration of the Domain Names, and in light of the Complainant’s prima facie case that the Respondent lacks rights and legitimate interests, the burden of production is on the Respondent to establish its rights or legitimate interests in the Domain Names. See, PepsiCo, Inc. v. Amilcar Perez Lista d/b/a Cybersor, WIPO Case No. D2003-0174. The Panel finds that there is no evidence that suggests that the Respondent has rights or legitimate interests in the Domain Names.
There is no evidence to suggest that the Respondent has been or is commonly known by the Domain Names.
In addition, there is no evidence that establishes the existence of a relationship between the Complainant and the Respondent that would give rise to any license, permission or authorization by which the Respondent could own or use the Domain Names, the ROACCUTANE mark, or any mark confusingly similar thereto, as a domain name or for any other purpose.
Further, a third party has no right to use another’s trademark, in a domain name or indeed for any other commercial purpose, without express authorization from the owner of the trademark. See, C. Crane Company Inc. v. Robbie Crossley, WIPO Case No. D2009-0815. There is no evidence to suggest that the Respondent was given any authorization or permission to register or use the Domain Names.
Therefore, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the Domain Names.
Given that the Respondent has never been authorized by the Complainant to use the well-known ROACCUTANE mark, and sell Roche brands of isotretinoin acne medication on its website, the very fact that the Respondent has registered the Domain Names suggests bad faith use and registration. See, Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163. Further, the Panel concludes the use of the Domain Names to promote sales of the Complainant’s competitors’ products through use of the ACCUTANE mark demonstrates bad faith use. See, Hoffman-La Roche Inc. v. Samuel Teodorek, WIPO Case No. D2007-1814. The Panel has little hesitation in finding that the Domain Names were registered and are being used in bad faith.
Therefore, the Panel is satisfied that the Complainant has established bad faith registration and use as required by paragraph 4(a)(iii).
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 <drug-accutane.com>, <pharm-accutane.com> and <pharmacy-accutane.com> be transferred to the Complainant.
Haig Oghigian
Sole Panelist
Dated: April 16, 2012