WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hoffmann-La Roche Inc. v. Eric Kaiser a/k/a eDrugNet
Case No. D2003-0721
1. The Parties
The Complainant is Hoffmann-La Roche Inc., a corporation organized in the State of New Jersey, with place of business in Nutley, New Jersey, United States of America, represented by Lorraine M. Anderson, Trademark Counsel, Nutley, New Jersey, and Duane Morris LLP, New York, New York, United States of America.
The Respondent is Eric Kaiser a/k/a eDrugNet, of Colorado Springs, Colorado, United States of America.
2. The Domain Names and Registrars
The disputed domain names are:
<1accutane.com>, which is registered with Stargate.com, Inc., of Oak Brook, Illinois, USA; and <accutane-acne-treatments-medication.com>, which is registered with Go Daddy Software, Inc., of Scottsdale, Arizona, USA.
3. Procedural History
On September 12, 2003, Complainant filed a Complaint with the WIPO Arbitration and Mediation Center (the "Center") by e-mail, followed by hard copy received by the Center on September 15, 2003.
On September 15, 2003, the Center transmitted by e-mail to Stargate.com and to
Go Daddy Software requests for registrar verification in connection with the domain names at issue. On September 15, 2003, Go Daddy Software transmitted by e-mail to the Center its verification response that <accutane-acne-treatments-medication.com> is registered to Eric Kaiser and providing the contact details for the administrative, billing, and technical contacts. On September 17, 2003, Stargate.com transmitted by e-mail to the Center its verification response that Respondent is listed as the registrant for <1accutane.com> and providing the contact details for the administrative, billing, and technical contacts.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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 September 19, 2003. The Center attempted to serve a copy of the Complaint upon Respondent by courier, facsimile and e-mail. Delivery by courier was not successful. Complainant attempted to serve a copy of the Complaint by courier delivery and by first-class mail at the address given by the registrars, but this was not successful, the addressee said to be unknown. The Centerís notices to Respondent by facsimile and to certain e-mail addresses appear not to have been rejected.
In accordance with the Rules, paragraph 5(a), the due date for Response was October 9, 2003. Respondent did not submit a response. Accordingly, on October 10, 2003, the Center notified Respondent of his default by e-mail.
On October 21, 2003, the Center appointed John R. Keys, Jr. as the sole panelist in this matter. 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
Accutane (Isotretinoin) is a prescription medication used to treat acne.
Complainant owns registrations on the Principal Register of the United States Patent and Trademark Office for the trademarks ACCUTANE, Registration No. 966,924, issued August 28, 1973, for "dermatological preparation", and PREGNANCY PREVENTION PROGRAM FOR WOMEN ON ACCUTANE ISOTRETINOIN AVOID PREGNANCY (and Design), Registration No. 2,389,371, issued September 26, 2000, for "Counseling to doctors to provide patients with information on the importance of pregnancy prevention while undergoing treatment with a pharmaceutical preparation associated with fetal abnormalities."
In addition, Complainantís parent company, H. Hoffmann-LaRoche AG, holds registrations in many jurisdictions of the world for the trademarks ROACCUTANE and ROACCUTAN.
Since November 1982, Complainant has sold a dermatological pharmaceutical preparation using the ACCUTANE mark in the United States, with sales totaling in the hundreds of millions of dollars. Roche AG has long marketed the ROACCUTANE and ROACCUTAN marks in other parts of the world.
Complainant has promoted and advertised its dermatological pharmaceutical preparation extensively in the United States using the ACCUTANE mark, including in print advertising, promotional materials, packaging, educational materials, and direct mail.
The ACCUTANE mark is well known and carries substantial goodwill in the United States and throughout the world.
Roche AG owns and has registered the domain name <accutane.com> and uses the name through Complainant. This domain name was registered April 17, 1997.
Complainant operates a website at "www.rocheusa.com/products" which contains information about the companyís products, including ACCUTANE, and notes that ACCUTANE is contra-indicated during pregnancy.
Respondent owns and, on March 11, 2002, registered the domain name <1accutane.com> and has posted a website at "www.1accutane.com".
Respondent also owns and, on November 21, 2001, registered the domain name <accutane-acne-treatments-medication.com> and has posted a website at "www.accutane-acne-treatments-medication.com".
The content on each website is nearly identical. The websites offer to sell and deliver ACCUTANE and ROACCUTANE without a prescription. ("Buy Accutane Acne Treatments Medication Online Without Prescription.") Quantities and prices are specified. Both sites contain warnings that Accutane can cause severe birth defects and that a woman must not become pregnant while taking it.
The websites use the marks ACCUTANE and ROACCUTANE, as well as ROCHE and ROCHE and Design, and state that "We sell and ship only original Roche Accutane/Roaccutane (Isotretinoin) that manufactured by Hoffmann-Roche, a Swiss Company. Roche in U.S., Nutley N.J."
5. Partiesí Contentions
1. The Domain Names Are Identical or Confusingly Similar To Roche's Trademarks
Claimant contends that the domain names at issue, <laccutane.com> and <accutane-acne-treatments-medication.com>, are identical to or confusingly similar to Claimantís registered trademarks. Both consist of or include the entire ACCUTANE trademark of Complainant, with the addition of, in one instance, a number, and, in the other, wording descriptive of the productís purpose. The extreme similarity between Respondent's <laccutane.com> and <accutane-acne-treatments-medication.com> domain names, Roche's trademark ACCUTANE, and Roche's domain name <accutane.com>, creates a strong likelihood of confusion as to source, sponsorship, application, or endorsement of Respondent's websites by Roche.
The addition of numbers, letters or descriptive words to Complainantís trademark does not negate the otherwise confusing similarity.
2. Respondent Has No Rights or Legitimate Interests in the Domain Names
Claimant further contends that Respondent has no rights or legitimate interests in the names <laccutane.com> and <accutane-acne-treatments-medication.com>. "Accutane" is not a word and has no valid use other than in connection with Complainant's trademark. Complainant has not authorized the Respondent to use its ACCUTANE trademark, or to incorporate the trademark into any domain names. Nor is Respondent a licensee of Complainant.
In fact, Respondent's use of the domain names indicates that the names are being used because of the similarity to Complainant's trademark. Based upon Respondent's website, it is clear that neither Respondent nor its websites have been commonly known by the domain names <1accutane.com> or <accutane-acne-treatments-medication.com>.
Respondent's use of the disputed domain names to solicit orders for Complainant's prescription medication, which is strongly contra-indicated during pregnancy, without a license or authorization to use the ACCUTANE mark is not a bona fide offering of goods and services under The Policy ∂ 4(c)(i).
Respondent's use and incorporation of Complainant's incontestable trademark ACCUTANE in the disputed domain names is evidence of Respondent's intent to trade upon the reputation and goodwill of Complainant's ACCUTANE trademark. Respondent's appropriation and use of Complainant's famous trademark is a clear attempt to create and benefit from consumer confusion regarding the association between Respondent's dangerous activities and Complainant's bona fide business, which includes a strict regimen in connection with prescription of the ACCUTANE product to the public.
Respondent is not using the domain names in dispute in connection with a bona fide offering of goods and services. Rather, he is using the domain names to divert Internet users seeking Complainant's <www.accutane.com> website to an unrelated website which provides a prescription medication strongly contra-indicated during pregnancy to the public without a prescription or a physician's examination.
Respondent's use of the domain names is purely disreputable. Respondent sought
to capitalize on the reputation and goodwill associated with Complainant's ACCUTANE trademark and to use that recognition to divert Internet users seeking Complainant's "www.accutane.com" website to an unrelated website which provides the prescription medication ACCUTANE, strongly contra-indicated during pregnancy, to the purchasing public without a prescription.
Respondent's use of the disputed domain names potentially provides the ACCUTANE product to pregnant women who otherwise would not have access to this medication. If this continues it may cause incalculable harm to Complainant's reputation, tarnish Complainant's famous ACCUTANE mark and may cause serious health risk to pregnant consumers.
Finally, Respondent is not making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain. See The Policy ∂ 4(c)(iii). Clearly, Respondent is using the domain names <1accutane.com> and <accutane-acne-treatments-medication.com> to sell Complainant's pharmaceutical dermatological preparation without a prescription. Such activity does not represent a legitimate noncommercial or fair use under The Policy ∂ 4(c)(iii).
3. Respondent Registered and Is Using the Domain Names in Bad Faith
Complainant contends that Respondent's true purpose in registering and using the domain names at issue is to capitalize on the reputation of Complainant's ACCUTANE mark by diverting Internet users seeking Complainant's website to Respondent's own websites where he solicits orders for Complainant's prescription medication, which is strongly contra indicated during pregnancy, without a license or authorization to use the ACCUTANE mark and that this constitutes the requisite bad faith under the Policy. Complainant cites as evidence for its contention that:
(a) <laccutane.com> and <accutane-acne-treatments-medication.com> are not words;
(b) Complainant's ACCUTANE mark is an invented and coined mark that has a strong worldwide reputation;
(c) There exists no relationship between Respondent and Complainant, and Complainant has not given Respondent permission to use its well known and incontestable mark ACCUTANE.
(d) Respondent registered two disputed domain names as a means to prevent Complainant from utilizing its ACCUTANE trademark in corresponding domain names by registering multiple variations of addresses containing the mark in its entirety.
(e) Respondent was aware of the Accutane trademark and wholly incorporated it as the predominant and recognizable portion of the two disputed domain names;
(f) Respondent knew or should have known of Rocheís registration and use of the mark ACCUTANE prior to registering the disputed domain names;
(g) Respondent has intentionally attempted to attract for financial gain Internet users to Respondent's websites by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of Respondent's websites or services on Respondent's websites.
(h) Respondent's websites have no correlation with Complainant or its ACCUTANE dermatological pharmaceutical preparation. The unauthorized use of Complainant's mark by Respondent, which has no connection with the dermatological product, suggests opportunistic bad faith.
Respondent did not reply to the Complaint.
6. Discussion and Findings
Inasmuch as Respondent has not answered the Complaint, the Panel first addresses the question of whether Respondent has received adequate notice of the proceeding. Attempts by both Complainant and the Center to deliver the Complaint by courier service or mail to Respondent at the Colorado Springs, Colorado address given by Respondent to the two registrars were not successful. There is evidence in the record to suggest that Respondentís name and address are in fact fictitious. However, the Center also gave Respondent notice of the proceeding by e-mail and by fax, and there is a fair inference that these methods were successful, at least for some of the e-mail addresses and fax numbers given by the Respondent. The Panel thus concludes that the Center employed all reasonably available means to notify Respondent of this proceeding and has discharged its responsibility under Rule 2(a).
Where Respondent does not respond to the complaint, the Panel shall decide the dispute based upon the complaint. Rules, ∂ 5(e), ∂ 14(a). The complaint is to be decided on the basis of the statements and documents submitted. Rules, ∂ 15(a). Under Rule 14(b), Respondentís failure to answer entitles the Panel to "draw such inferences therefrom as it considers appropriate."
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 relief:
(i) [Respondentís] domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) [Respondent has] no rights or legitimate interests in respect of the domain names; and
(ii) [Respondentís] domain names have been registered and are being used in bad faith.
We address each of these elements in order.
A. Identical or Confusingly Similar
"Accutane" is a prescription medication manufactured and sold by Complainant in the United States for use in treating acne. Complainantís parent sells the product in many other countries. It is a strong medication with acknowledged potential serious side effects, especially for pregnant women, including the causation of birth defects.
Complainant has produced substantial evidence that it has well-established legal rights in the trademark ACCUTANE as it relates to a dermatological preparation. Roche owns the registration for the mark on the Principal Register of the United States, and has marketed the product in the United States under that name for at least 20 years. Registration creates a presumption of validity under U.S. law. See AT&T Corp. v. John Zuccarini d/b/a RaveClub Berlin, WIPO Case No. D2001-1503 (April 3, 2002). Complainantís parent company markets the product elsewhere in the world under the names "Roaccutane" and "Roaccutan." There can be little doubt on the record that Complainant has well-established legal rights in the ACCUTANE trademark.
Respondent has incorporated the word "accutane" fully and correctly spelled into each of the disputed domain names. In the first instance, Respondent adds only a numeral "1" before the word "accutane", and in the second, he adds, after the word "accutane", the descriptive words "acne treatment medication."
The Panel finds that each of the domain names at issue is confusingly similar to the ACCUTANE trademark. The word "accutane" as used in the domain names is identical to Complainantís trademark. "The intentional registration of a domain name knowing that the second level domain is another companyís valuable trademark weighs in favor of likelihood of confusion." Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 1059 (9th Cir. 1999).
The addition of the single numeral and the generic descriptors to the word "accutane" are not sufficient to negate the confusing similarity between the domain names and Complainantís trademark. As Complainant notes, "Generally, 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." 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition ß 23:50 (4th ed. 1998). See General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087 (May 2, 2001). The principal that likelihood of confusion cannot be avoided by the simple addition of descriptive content was found to include the addition of entire words to a famous trademark. In The Coca-Cola Company v. Gamlebyen Invest AS, WIPO Case No. D2000-1677 (February 14, 2001), the Panel held that
[i]t is common knowledge that Coca-Cola is one of the world's most famous trademarks. Such fame and recognition applies whether the trademark is rendered with or without a dash. On the same token, it would be reasonable to assume that Coca-Cola and 'cocacoladrinks' are somehow connected or associated and there is an association with the Coca-Cola organisation based in the USA. The Respondent's argument that Coca-Cola and 'cocacoladrinks' are different and not confusingly similar is a difficult one to accept.
The addition of inconsequential material, in this case, a number and descriptive wording, does not detract from, and indeed is likely to reinforce the association between the word ACCUTANE and the Complainant. See America Online. Inc. v. Anson Chan, WIPO Case No. D2001-0004, citing Sporty's Farm LLC. v. Sportsman's Market. Inc., 202 F. 3d 489, 497-98 (2d. Cir. 2000).
The likelihood of confusion between Respondentís domain names and Complainantís trademark is only enhanced by the fact that Respondent is clearly using the websites associated with his domain names to offer Complainantís Accutane product for sale using the registered ACCUTANE mark and expressly stating that he is selling Roche-manufactured product.
The Panel concludes that each of Respondent's domain names is confusingly similar to Complainantís ACCUTANE trademark within the meaning of paragraph 4(a)(i) of the Policy. For many, if not most, Internet users who are familiar with the ACCUTANE name and who might be searching for information concerning that product, Respondentís domain names suggest sponsorship by or a strong association with Complainant, which suggestion is false and misleading. Complainant has established the first element of its case.
B. Rights or Legitimate Interests
Respondent has not come forward to try to establish that he has legitimate rights or interests in the word or name "accutane" or the disputed domain names, and the Panel can ascertain no such rights or interests. While the Panel might infer a lack of rights or legitimate interests from the failure to respond, there is sufficient evidence of record to establish that Respondent has none.
There is, first of all, no evidence that Respondent is using the domain names in connection with a bona fide offering of goods or services. See Policy, ∂ 4(c)(i). In fact, the opposite appears to be true.
Respondent's use of Roche's trademark is infringing. Such unlawful use of the domain name cannot be considered bona fide. See AltaVista Company v. James A. Maggs, NAF Case No. FA0095545 (October 24, 2000) ("The American Heritage Dictionary of the English Language (Third Edition, 1992) defines 'bona fide' as 'made or carried out in good faith,' 'authentic' or 'genuine.' This Arbitrator cannot find that the use by Respondent of marks identical and/or confusingly similar to valid, Federally-registered marks of another to constitute offering of services 'in good faith' and certainly not 'authentic' or 'genuine', especially since Respondent has no authorization from Complainant.")
Respondent's use of the disputed domain names to solicit orders, without prescription, for Complainant's prescription medication, which is strongly contra-indicated during pregnancy, without a license or authorization from Roche to use the ACCUTANE mark or to sell the Roche product is not a bona fide offering of goods or services under the Policy. See G.D. Searle & Co. v. Entertainment Hosting Services. Inc., NAF Case No. FA00110783 (June 3, 2002) (Respondent's use of disputed domain names to solicit pharmaceutical orders without license or authorization to use the "CELEBREX" mark is not a bona fide offering of goods); G.D. Searle & Co. v. Mahoney, NAF Case No. FA00112559 (June 12, 2002) (Respondent's use of the disputed domain name to solicit pharmaceutical orders without a license or authorization from Complainant does not constitute bona fide offering of goods under The Policy ∂ 4(c)(i)); Chanel, Inc. v. Cologne Zone, WIPO D2000-1809 (February 22, 2001); NCAA v. Halpern, WIPO D2000-0700 (December 10, 2000).
There is also no evidence that Respondent was commonly known by the name "accutane" or by the domain names or has any authority from Complainant to use the name. Policy, ∂ 4(a)(ii). Complainantís evidence concerning the origins of the word, the longstanding registration, and absence of authorization contradict any such notion.
Finally, there can be no valid suggestion that Respondent is making a legitimate noncommercial or fair use of the domain name. See Policy, ∂ 4(c)(iii). The evidence establishes clearly that the domain names are being used to sell Complainantís Accutane product.
Complainant has established the second element of its case.
C. Registered and Used in Bad Faith
The evidence establishes quite clearly that Respondent has intentionally attempted to attract Internet users to his websites for commercial gain by creating a likelihood of confusion with Complainantís ACCUTANE mark as to the source, sponsorship, affiliation, or endorsement of his website or a product offered on his website. See Policy, ∂ 4(b)(iv).
As discussed above, Respondentís use of the "accutane" name in his domain names creates a strong likelihood of confusion with Rocheís ACCUTANE mark as to the source, sponsorship, affiliation, or endorsement of his website. Registration of a domain name that is confusingly similar to a famous trademark by any entity that has no relationship to that mark is itself sufficient evidence of bad faith registration and use. Sportyís Farm, 202 F.3d at 498; AT&T Corp. v. John Zuccarini d/b/a Music Wave and RaveClub Berlin, WIPO Case No. D2002-0440 (August 28, 2002); Veuve Clicquot Ponsardin. Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (Use of a name connected with such a well-known product by someone with no connection with the product suggests opportunistic bad faith).
Based on the evidence, Respondent has clearly exploited the potential confusion with Complainantís mark to attract potential Accutane customers to his website for the purpose of selling that product, Rocheís product, for his own commercial gain. There is a clear offer at Respondentís site to sell ACCUTANE in specified quantities at specified prices. Finally, the record permits, if not dictates, the inference that Respondent has created and exploited the likelihood of confusion intentionally for his own commercial purposes.
Thus Respondent has intentionally sought to use Complainantís trademark in his domain names to divert Internet users to a website in which he offers to sell ACCUTANE for his own commercial gain. See State Fair of Texas v. Granbury.com, NAF Case No. FA0095288 (September 12, 2000). The Panel thus concludes that Respondent registered and is using both of the disputed domain names in bad faith within the meaning of paragraphs 4(a)(iii) and 4(b)(iv) of the Policy and that Complainant, therefore, has established the third element of its case.
It is unnecessary to address other arguments made by Complainant to support the foregoing conclusion.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that Stargate.com, Inc. transfer the domain name <1accutane.com> , and that Go Daddy Software, Inc. transfer the domain name <accutane-acne-treatments-medication>, to Complainant, Hoffmann-LaRoche, Inc.
John R. Keys, Jr.
Date: October 29, 2003