The Complainant is Roche Products Limited of San Francisco, California, United States of America, represented by Lathrop & Gage LLP, United States of America.
The Respondent is RLS Holding of Fujairah, United Arab Emirates.
The disputed domain name <accutanebuy.net> (the “Domain Name”) is registered with eNom.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 7, 2012. On February 8, 2012, the Center transmitted by email to eNom a request for registrar verification in connection with the Domain Name. On February 8, 2012, eNom 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 9, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 29, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 1, 2012.
The Center appointed Nicholas Smith as the sole panelist in this matter on March 6, 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.
The Complainant, together with its affiliated companies, is a major healthcare supplier in the field of pharmaceuticals and diagnostic products. It operates in more than 100 countries.
The Complainant, together with its affiliated companies produces a pharmaceutical product called Roaccutane. This drug, also known as isotretinoin is used for the treatment of severe nodular and/or inflammatory acne conglobata or recalcitrant acne. The Complainant has registered a trade mark consisting of the word “Roaccutane” (the “ROACCUTANE Mark”) in numerous countries around the world, including United Kingdom of Great Britain and Northern Ireland, Ireland, Malaysia and Singapore.
The Complainant used to sell a pharmaceutical product known by the name “Accutane”. This product was also an isotretinoin medication. Accutane had been sold by the Complainant since 1972.
The Domain Name <accutanebuy.net> was registered on August 16, 2011.
The Complainant makes the following contentions:
(i) that the Domain Name is confusingly similar to the Complainant’s ROACCUTANE Mark or the Complainant’s ACCUTANE Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the ROACCUTANE Mark which is a registered trademark in multiple countries including the United Kingdom, Ireland, Malaysia and Singapore. The ROACCUTANE Mark is applied to a drug produced by the Complainant, namely isotretinoin, which is used for the treatment of severe nodular and/or inflammatory acne conglobata or recalcitrant acne.
The Complainant has also sold isotretinoin medication under the name “Accutane” (the “ACCUTANE Mark”). The ACCUTANE Mark was promoted in print advertisements, medical journals, promotional materials, packaging, medical informational materials, television advertising and direct mailings. The ACCUTANE Mark has been used by the Complainant and its related entities since 1972. Products containing the ACCUTANE Mark are still sold by the Complainant on a limited scale. The panel in Roche Products Limited v. Andrew Palanich, NAF Claim Nr.: FA1010001354115 (National Arbitration Forum, November 29, 2010) found that the ACCUTANE mark still has secondary meaning and warrants trade mark protection.
The Domain Name consists of the ACCUTANE Mark in its entirety with the addition of the word “buy”. Alternatively, the Domain Name consists of the ROACCUTANE Mark with the addition of the word “buy” and the subtraction of the prefix “RO”. Numerous panel decisions have established that the addition of 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. In general, a user of a mark may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it. Thus the addition of the descriptive term "buy" does not prevent a finding that there is a likelihood of confusion in this case.
The Respondent has no rights or legitimate interests in the Domain Name. The Complainant has not authorized or licensed the Respondent to use the ACCUTANE Mark or the ROACCUTANE Mark. “Roaccutane” and “Accutane” are not dictionary words and have no valid use other than in connection with Complainant’s brands of isotretinoin acne medication.
The Domain Name resolves to a website that displays the ACCUTNE Mark (the “Respondent’s Website”). The Respondent’s Website sells pharmaceutical products produced by third party competitors of the Complainant including generic isotretinoin. This does not amount to a bona fide offering of goods or services, nor does this amount to legitimate non commercial or fair use of the domain name without intent for commercial gain. As such, the Respondent does not have rights or legitimate interests in the Domain Name.
The Respondent has registered and is using the Domain Name in bad faith. The Respondent registered the Domain Name tocapitalise on the reputation of the ACCUTANE Mark and ROACCUTANE Mark by diverting Internet users seeking websites connected with the Complainant and its medications to the Respondent's Website, which sells generic isotretinoin (despite displaying an ACCUTANE package on the Respondent’s Website), as well as multiple third party pharmaceutical products. The use of the Domain Name to promote sales of competitors’ products is use in bad faith. Hoffmann-La Roche Inc. v. Samuel Teodorek, WIPO Case No. D2007-1814, citingPfizer Inc. v. jg a/k/a/ Josh Green, WIPO Case No. D2004-0784 citingCasio Keisanki KabushikiCasio Computer Co., Ltd v. Jonchan Kim, WIPO Case No. D2003-0400. Finally, the Respondent is acting in bad faith by displaying the ACCUTANE Mark and a misleading copyright notice on the Respondent’s Website, which would increase any confusion between the Complainant and the Respondent’s Website.
The Respondent did not reply to the Complainant’s contentions.
To prove this element the Complainant must have trade or service mark rights, and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the ROACCUTANE Mark, having registrations for ROACCUTANE as a trade mark in the United Kingdom of Great Britain and Northern Ireland, Ireland, Malaysia and Singapore. The fact that the ROACCUTANE Mark is not registered in United Arab Emirates is of no relevance to this element of the Policy. The wording of Paragraph 4(a)(i) of the Policy requires that a complainant has rights in a trade mark or service mark. It does not require that rights in the mark be established, either through registration or common law rights, in the respondent’s location. If this were the case, in this Panel’s view, it would be impossible to prove this element if a respondent was using a fake address or a privacy service to hide its location. If a complainant cannot establish trade mark rights in the respondent’s location, this may have relevance when determining if a respondent was aware of the complainant’s mark, but not to the question whether a complainant has rights in a trade mark pursuant to Paragraph 4(a)(i) of the Policy.
The Complainant has provided no evidence of any registrations of the ACCUTANE Mark. Rather it asserts that as a result of the reputation of the Accutane product sold by the Complainant, it has common law or unregistered trademark rights in the ACCUTANE Mark.
The WIPO Overview of WIPO Panel views on Selected UDRP Questions, Second Edition (“WIPO overview 2.0”), sets out the circumstances in which past UDRP Panels have found unregistered trade mark rights exist. The Paragraph 1.7 of the WIPO Overview 2.0 states that:
“The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such "secondary meaning" includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition….However, a conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required… However, unless such status is objectively clear, panels will be unlikely to take bald claims of trademark fame for granted.”
In this case the Complainant asserts that ACCUTANE:
(i) “has been used by Roche since 1972 and has been the subject of hundreds of millions of dollars in sales and has become famous”;
(ii) [has been]“extensively promoted, without limitation, in print advertisements, in medical journals, promotional materials, packaging, medical informational materials, television advertising and direct mailings”; and
(iii) “is still sold by Roche on a limited scale”.
The only evidence provided in the Complaint to support these assertions is three online articles by third parties that refer to ACCUTANE and one published letter to the editor. One of these articles was published in 2003, and the other two in 2006. The Complaint provides no evidence to support Complainant’s assertions of past sales, current sales or promotion of to the public. There has been no attempt to show any media recognition or provide consumer surveys.
In considering whether unregistered trade mark rights arise panels, even in the absence of a response, are required to make a finding of secondary meaning based on specific assertions of use of the claimed mark supported by evidence see The Carphone Warehouse Limited and The Phone House B.V. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2008-0483, and Continental Casualty Company v. Andrew Krause / Domains by Proxy, Inc., WIPO Case No. D2008-0672. In this case, the Complainant has provided no relevant evidence in support of its assertions that the ACCUTANE Mark has become famous and has acquired secondary meaning.
Even if the Panel was to take the three articles as evidence of secondary meaning, the existence of secondary meaning must be established at the time of the Complaint. Otherwise it would be possible for a party to make a complaint based on terms, such as “Dry Ice” or “Escalator” that once were trademarks but have now become generic. In this Panel’s view, a nine-year old article is insufficient evidence that secondary meaning exists in 2012.
The Panel is prepared to accept that the Complainant once sold a product under the trademark ACCUTANE. However, the sale of a product may not of itself automatically lead to unregistered trade mark rights. Consequently, in this case, the Panel, based on the limited evidence submitted by the Complainant, is unable to find that Complainant has common law or unregistered trademark rights in the ACCUTANE Mark.
The Domain Name consists of the ROACCUTANE Mark, minus the first two letters (“ro”) and the generic suffix “buy”. The Panel finds that the addition of the suffix “buy” is not a distinguishing feature. It simply operates to indicate that a person visiting the site accessible through the Domain Name could purchase the product indicated in the remaining element(s) of the Domain Name.
The Panel finds that the dominant element of the ROACCUTANE Mark is the term “accutane”, with “ro” only operating as a prefix to the term "accutane". As a result, there is a risk that Internet users who see the Domain Name would think that the site accessible through it would be a site where they could buy Complainant’s “Roaccutane” product or “Accutane”, a product formerly sold by the Complainant. The absence of the “ro” and the addition of the generic word “buy” do not serve to distinguish the Domain name from the ROACCUTANE Mark.
The Panel finds that the Domain Name is confusingly similar to the Complainant’s ROACCUTANE Mark. Consequently, the requirement of Paragraph 4(a)(i) of the Policy is satisfied.
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or interests in the disputed domain name. If such a prima facie case is made out, the respondent then has the burden of demonstrating rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” (Policy, paragraph 4(c))”.
The Respondent is not affiliated with the Complainant in any way and has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the ROACCUTANE Mark or a mark similar to the ROACCUTANE Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name.
There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial use. The Respondent’s website displays the ACCUTANE Mark, the name of a product once sold by the Complainant and uses that mark to sell generic form of isotretinoin produced by competitors to the Complainant. Such use does not amount to a bona fide offering as the Respondent is attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant.
The Complainant has established a prima facie case that the Respondent lacks rights or interests in the Domain Name. The Respondent has chosen not to respond to the Complaint and thus has failed to provide any evidence of rights and legitimate interests in the Domain Name. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under Paragraph 4(a)(ii) of the Policy.
For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name’ registration to the Complainant who is the owners of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) The Respondent has registered the Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the Mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) The Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the Respondent’s website or location or of a product or service on the Respondent’s website or location.
The Panel finds that the Respondent at the time of registration of the Domain Name knew of the existence of Complainant. The Domain Name resolves to a website that displays the ACCUTANE Mark, the name of a product once sold by the Complainant. The Respondent’s Website is then used to sell a generic form of isotretinoin produced by competitors to the Complainant.
The Respondent’s conduct in registering the Domain Name when it was aware of the Complainant’s rights and lacked rights and legitimate interests of its own amounts to registration in bad faith.
Furthermore the use of the Domain Name to sell a product that competes directly with the Complainant’s ROACCUTANE pharmaceutical amounts to use of the Domain Name in bad faith. The Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant and the Complainant’s ROACCUTANE Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s Website.
Accordingly, the Panel finds that the Respondent has registered and used the Domain Name in bad faith under Paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <accutanebuy.net> be transferred to the Complainant.
Nicholas Smith
Sole Panelist
Dated: March 20, 2012