The Complainant is Hoffmann-La Roche Inc. of New Jersey, United States of America, internally represented.
The Respondent is Fundacion Private Whois, Domain Administrator of Panama, Panama.
The disputed domain name <buyaccutaneisotretinoin.com> is registered with Internet.bs Corp.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 8, 2012. On May 8, 2012, the Center transmitted by email to Internet.bs Corp. a request for registrar verification in connection with the disputed domain name. On May 12, 2012, Internet.bs Corp. 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 May 16, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 5, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 22, 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.
The Complainant is, together with its affiliated companies, engaged in research and development of pharmaceutical and diagnostic products. The Complainant is a member of the Roche Group, one of the worlds’s leading research-focused healthcare groups and having global operations in more than 100 countries.
The Complainant’s mark ACCUTANE is registered on behalf of the Complainant in the United States Patent and Trademark Office as of August 28, 1973 under Registration No. 0966,924, with a first use in the United States in 1982. In addition to the Complainant, Hoffmann-La Roche Inc., F. Hoffmann-La Roche AG, Basel, Switzerland, is also owned and controlled by Roche Holding AG, a company organized and doing business under the laws of Switzerland. F. Hoffmann-La Roche AG owns and uses the domain name <accutane.com>.
The mark ACCUTANE designates a dermatological preparation in the form of a product indicated for the treatment and prevention of acne. This mark was extensively promoted for many years in print advertisements in medical journals, promotional materials, packaging, medical informational materials, television advertising and direct mailings. The sales of the ACCUTANE products in the United States have exceeded hundreds of millions of dollars.
The disputed domain name was created on January 26, 2012.
The Complainant alleges that the disputed domain name contains in its entirety its ACCUTANE trademark, with the mere addition of generic or descriptive words insufficient to avoid a finding of confusing similarity. In particular, the Complainant points out that the addition of the word “isotretinoin” even adds to the confusing similarity of the respective disputed domain name and the trademark, since this word refers to the generic form of the drug ACCUTANE. The Complainant has drawn the Panel’s attention to the decisions in Hoffmann-La Roche Inc. v. sasha rutova, WIPO Case No. D2008-0746 and Hoffmann-La Roche Inc. v. Guillaume Ansart, WIPO Case No. D2008-1005, in which the panels in those cases ordered the transfer of the domain names <buy-isotretinoin-accutane.com> and <buy-accutane-isotretinoin.com> respectively to the Complainant, in support of its allegation.
The Complainant states that it has granted no licence/permission/authorization respectively or consented to
the use of ACCUTANE in the disputed domain name, and that, furthermore, it is obvious that the Respondent uses the disputed domain name for commercial gain and with the purpose of capitalizing on the fame of the Complainant’s mark ACCUTANE. The Complainant has provided evidence that the Respondent is using the disputed domain name to direct Internet users to a website offering to “buy cheap generic accutane isotretinoin online usa uk canada”. Upon clicking on “buy it now”, Internet users are redirected to a pharmacy on-line (“www.drugstore-discounts.com”) offering “Generic Accutane (Isotretinoin)” as well as other drugs. The Complainant has drawn the Panel’s attention to the decision in Hoffmann-La Roche Inc. v. Samuel Teodorek, WIPO Case No. D2007-1814, to the effect that “the Respondent’s use of the disputed domain name to redirect Internet users to an on-line pharmacy demonstrates Respondent’s lack of a legitimate interest in the domain name”.
The Complainant alleges that the disputed domain name was registered in bad faith, since at the time of the registration, on January 26, 2012, the Respondent had, no doubt, knowledge of the Complainant’s well-known product/mark ACCUTANE.
The Complainant alleges that the disputed domain name is also being used in bad faith, and draws the Panel’s attention to the decision in Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784, to the effect that bad faith is established when “Respondent is using the domain names as a forwarding address to a for-profit on-line pharmacy”, in support of its argument. The Complainant further alleges that the Respondent, by using the disputed domain name as it does, is intentionally misleading consumers and confusing them by making them believe that the websites behind those links are associated or recommended by the Complainant; as a result of which the Respondent may generate unjustified revenues and therefore is illegitimately capitalizing on the ACCUTANE trademark fame.
The Respondent did not reply to the Complainant’s contentions.
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 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.
It is well-established in decisions under the UDRP that gTLD indicators (i.e. “.com”, “.info”, “.net”, “.org”) are irrelevant to the consideration of confusing similarity between a trademark 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 UDRP panels as referred to above, both in connection with gTLD indicators and in connection with added generic or descriptive elements.
The Panel recognizes the Complainant’s trademark rights in ACCUTANE. In the present case the Panel agrees with the panels in Hoffmann-La Roche Inc. v. sasha rutova, WIPO Case No. D2008-0746 and Hoffmann-La Roche Inc. v. Guillaume Ansart, WIPO Case No. D2008-1005, that “buy” and “isotretinoin” are mere generic or descriptive additions. Accordingly, this Panel finds that the disputed domain name is confusingly similar to the Complainant’s ACCUTANE trademark, and that the Complainant has satisfied the test of paragraph 4(a)(i) of the Policy.
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.
The Panel is of the view that, in the case of a well-known or distinctive mark, such as ACCUTANE, 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 unjustifiably to the detriment of the Complainant’s economic and reputational interests, and, in the Panel’s view, clearly demonstrates use in bad faith. In particular, the Panel agrees with the panel in Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784, to the effect that bad faith is established when “Respondent is using the domain names as a forwarding address to a for-profit on-line pharmacy”. 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.
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 <buyaccutaneisotretinoin.com> be transferred to the Complainant.
George R. F. Souter
Sole Panelist
Dated: July 6, 2012