Complainant is Hoffmann-La Roche Inc. of San Francisco, California, United States of America, represented by Lathrop & Gage LLP, United States of America.
Respondent is Doroven, Doroven Doroven of Masusuka, Nakhon, Ratchasima, Thailand.
The disputed domain name <accutaneg.com> is registered with eNom.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 20, 2010. On July 20, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On July 20, 2010, eNom 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on July 29, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 18, 2010. The Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 23, 2010.
The Center appointed Enrique Ochoa de González Argüelles as the sole panelist in this matter on September 21, 2010. 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.
Complainant has used the trademark ACCUTANE (“the Accutane mark”) since November 27, 1972 for a dermatological preparation, namely, a pharmaceutical product indicated for the treatment and prevention of acne. The ACCUTANE mark was registered on August 28, 1973, Reg. No. 966,924. For many years the ACCUTANE mark has been extensively promoted in print advertisements in medical journals, promotional materials, packaging, medical informational materials, television advertising, and direct mailings. Sales of the Accutane dermatological preparation in the United States have exceeded hundreds of millions of dollars. As a result of such sales, the product has resulted in unsolicited media attention, including newspaper and magazine articles.
The disputed domain name <accutaneg.com> was created on June 2, 2010. This domain name resolves to a website that describes and advertises the product ACCUTANE along with several other famous drugs ”in a generic presentation”. Selecting the “buy now” button takes users to a “www.rx-u.com” online drug store. The website displays the trade name “ACCUTANE ONLINE”.
Complainant contends that as the result of sales of the Accutane dermatological preparation, advertising and promotion, the ACCUTANE mark is well-known.
Complainant contends that its parent company Roche, F. Hoffman-La Roche AG owns and has registered the domain name <accutane.com>, through which Complainant’s customers obtain information as to the ACCUTANE dermatological preparation product of Roche.
Complainant contends that the disputed domain name contains the entire ACCUTANE mark. Complainant contends that Respondent’s registration and use of the disputed domain name creates a strong likelihood of confusion as to source, sponsorship, association or endorsement of Respondent’s websites associated with the disputed domain names.
Complainant contends that after learning of Respondent’s unauthorized registration of the disputed domain name incorporating the mark ACCUTANE, on June 25, 2010 Roche sent a cease and desist letter by FEDEX and email (indicated in WhoIs) to the Respondent. Complainant has a confirmation that the email was received by Complainant.
Complainant contends that the addition of words, letters or numbers does not alter the fact that the domain name is confusingly similar to the ACCUTANE mark, as prior UDRP panels have established.
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not authorized Respondent to use the ACCUTANE mark or to incorporate the ACCUTANE mark into any domain names or in any trade name or as a part of copyright notices.
Complainant also argues that since March 1, 2006 all prescriptions for the sales and distribution of ACCUTANE and any other isotretinoin products in the United States are subject to the mandatory strict parameters of the iPLEDGE program of the U.S. Food and Drug Administration, which sets forth the only permissible distribution of Accutane. Respondent's webpage published at the disputed domain name is unauthorized and, not meet the U.S. regulations according to Complainant, its sales on this site do.
According to Complainant the product Accutane cannot be commercialized or sold on the Internet, outside the iPLEDGE program, and Respondent's webpage is not authorized. Also, Complainant argues that the registration and use of the disputed domain name by Respondent, that includes the trademark ACCUTANE, may lead consumers to believe that Respondent is the source of the ACCUTANE product or that the Respondent's website is affiliated or sponsored by Complainant. Complainant argues that such use by Respondent may lead consumers to believe that the website reached from <accutaneg.com> is an official site, owned and operated by Complainant.
Complainant argues that in the present case, Respondent's appropriation and use of Complainant's widely-known trademark is a clear attempt to create and benefit from consumer confusion regarding Respondent's website at the disputed domain name <accutaneg.com> and Complainant's business.
Respondent is not using the disputed domain Name in order to prepare for or be involved in a bona fide offering of goods or services, nor any noncommercial or fair use. To the contrary, Complainant argues that the disputed domain name is being used to promote Complainant's competitors' products and links to online pharmacies.
In conclusion Complainant claims that Respondent's use of the disputed domain name is intentionally misleading consumers and confusing them so as to attract them to other websites making them believe that the websites behind those links are associated or recommended by Complainant. As a result, Complainant states that Respondent may generate unjustified revenues for each click-through by on-line consumers of the sponsored links and is also selling a product without fulfilling the United States regulations.
For all the foregoing reasons, Complainant argues that Respondent registered and has being using the disputed domain name in bad faith, according to the Policy.
Respondent did not reply to Complainant’s contentions.
Because Respondent did not respond to the Complaint, the Panel must decide the dispute based upon the Complaint.
Under paragraph 4(a) of the Policy, Complainant must prove each of the following three elements of its case in order to obtain the requested remedies:
(i) Respondent's 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) Respondent's domain name has been registered and is being used in bad faith.
The Panel considers each element in the following order.
Complainant has shown in these proceedings its trademark ownership of the ACCUTANE trademark issued by the U.S.P.T.O on August 28, 1973 and that it has been renewed since then.
Complainant argues that the disputed domain name is confusingly similar to its trademark.
The Panel must decide whether or not the disputed domain name is confusingly similar to Complainant's trademark. This Panel finds that the disputed domain name is confusingly similar to Complainant's trademark ACCUTANE because it entirely incorporates the ACCUTANE trademark and additional letter “g” does not add or give any distinctiveness to the disputed domain name. This is, “The disputed domain name is confusingly similar to Complainant’s mark. The addition of another letter “N” does not change the way in which the word is pronounced. Moreover, an Internet user could easily type in an additional “N” by mistake and thus be directed to the Respondent’s website)”. In ESPN, Inc. v. XC2, WIPO Case No. D2005-0444, <espnnews.com> and ORGANGEFRANCE v. KLTE Ltd., WIPO Case No. DFR2005-0020, <oarange.fr>, <orande.fr>, <orenge.fr>, <organge.fr>, <ornage.fr>, <ornge.fr>, <oronge.fr>, <prange.fr>.
For the foregoing reasons, this Panel finds that the disputed domain name <accutaneg.com> is similar to Complainant's trademark, and Policy paragraph 4(a)(i) is fulfilled.
Respondent does not allege it has any rights or legitimate interests in the disputed domain names or any parts thereof. Respondent has not been authorized by Complainant to utilize the ACCUTANE mark in the disputed domain name. In addition, Respondent is not personally identified with, or commonly known by, the term accutane, other than redirecting consumers to websites that sell competitive products and possibly ACCUTANE products. The Accutane name itself is made up and has no other meaning. Respondent’s use is clearly commercial and does not appear to constitute any form of fair use. Furthermore, Respondent’s apparent offer for sale of prescription drugs subject to and in violation of FDA regulations cannot form the basis for a legitimate interest.
The Panel finds that Respondent does not have any rights or legitimate interests in the disputed domain name and this element of the Policy to be met by Complainant.
According to the Complaint, Complainant claims that the disputed domain name was registered and is being used in bad faith according to the following arguments that summarized are as follows:
According to Complainant, Respondent's true purpose in registering the disputed domain name, which incorporates Complainant's mark ACCUTANE in its entirety, is to capitalize on the reputation of Complainant's mark by diverting Internet users seeking Complainant's websites to Respondent's own websites which solicit orders for third party pharmaceutical products and through which Complainant's ACCUTANE prescription drug can be purchased through a linked site as discussed above, acting in bad faith.
Complainant argues that Respondent also acted in bad faith because there is no relationship between the Respondent and the Complainant, and Complainant has not given Respondent permission to use its mark ACCUTANE.
By using the disputed domain name <accutaneg. com> to sell the ACCUTANE product without permission or license of any kind, Respondent has intentionally attempted to attract for financial gain Internet users to Respondent's website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation or endorsement of Respondent's website.
In the present case the Panel has confirmed that the website published at the disputed domain name <accutaneg.com> includes links that offer for sale of Accutane products, and competitive products, without the authorization required by the original product owner. These links offer other competitive products and also offer generic products. These links may mislead and confuse consumers, thinking that the products or services are original and putting their health and lives at risk, with the purpose to obtain commercial or financial benefit by trading as the notoriety of the trademark that is part of Respondent's domain name and is being used on the website.
The Panel also considers that Respondent has been engaged in similar UDRP procedures regarding famous mark ACCUTANE.
For all the foregoing reasons, the Panel finds that the disputed domain name was registered and is being used in bad faith, according to the Policy paragraph 4(a)(iii).
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 <accutaneg.com> be transferred to Complainant.
Enrique Ochoa de González Argüelles
Sole Panelist
Dated: October 6, 2010