WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hoffmann-La Roche Inc. v. Samuel Teodorek
Case No. D2007-1814
1. The Parties
The Complainant is Hoffmann-La Roche Inc., Nutley, New Jersey, United States of America, represented by Lathrop & Gage L.C., United States of America.
The Respondent is Samuel Teodorek, Warsaw, Poland.
2. The Domain Name and Registrar
The disputed domain name <accutane-buy.com> is registered with Tucows.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 7, 2007. On December 10, 2007, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On December 10, 2007, Tucows 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”), 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 December 17, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was January 6, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 7, 2008.
The Center appointed Jeffrey D. Steinhardt as the sole panelist in this matter on January 22, 2008. 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
Complainant, together with its affiliated companies, is one of the leading manufacturers of pharmaceutical and diagnostic products in the world.
Complainant’s ACCUTANE trademark is protected for a dermatological preparation in the United States of America. ACCUTANE is registered to Complainant in the United States Patent and Trademark Office as of August 28, 1973 under Reg. No. 966,924, having a first use date of November 27, 1972.
WIPO Panels in at least six earlier domain name proceedings have found that Complainant has trademark rights and ordered transfer in favor of Complainant in cases involving the registration by unauthorized third parties of variants of Complainant’s ACCUTANE trademark. Hoffmann-La Roche Inc. v. Dean Gagnon, WIPO Case No. D2007-1832; Hoffmann-La Roche Inc. v. Rajendra Mumbai, WIPO Case No. D2007-1615; Hoffmann-La Roche Inc. v. Domain Ownership Limited, WIPO Case No. D2007-0891; Hoffmann-La Roche Inc. v. Aneko Bohner, WIPO Case No. D2006-0629; Hoffmann-La Roche Inc. v. Online Pharma, WIPO Case No. D2006-0628; Hoffmann-La Roche Inc. v. Eric Kaiser a/k/a eDrugNet, WIPO Case No. D2003-0721.
The website to which the disputed domain name used to resolve is no longer live. An exhibit of screen shots submitted by Complainant shows that on December 5, 2007, the website appeared and displayed advertising for various online pharmacies and a variety of drug products, including Complainant’s Accutane dermatological preparation. The content and appearance of the website on December 5, 2007 appears to be similar to archives from August 5, 2006 that are available at “http://web.archive.org/web/20060805073949/http://www.accutane-buy.com/.”
5. Parties’ Contentions
Complainant avers that for many years, Complainant’s ACCUTANE trademark and its dermatological preparation for the treatment of acne has been extensively promoted, among other things, in print advertisements, promotional materials, packaging, medical informational materials, medical journals, television advertising and direct mailings. As a result of such promotion and hundreds of millions of dollars in product sales in the United States of America, Complainant avers that the trademark has acquired “fame and celebrity.”
Identical or Confusingly Similar to Complainant’s Trademark
Complainant avers that the disputed domain name <accutane-buy.com> contains Complainant’s entire ACCUTANE trademark. In light of Complainant’s registered trademark, 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 website by Complainant.
Complainant continues that the added descriptive term “buy” does not prevent the likelihood of confusion created by the disputed domain name, citing the authority of Thomas McCarthy, 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23:50 (4th ed. 1998), and the WIPO Panel decision in General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087.
Therefore, Complainant argues, the disputed domain name is identical or confusingly similar to the trademark of Complainant.
No Rights or Legitimate Interests in Domain Name
Complainant alleges that Respondent has registered and used the domain name without legitimate right, license or authorization. Complainant alleges that neither Respondent nor its web site has been commonly known by the domain name <accutane-buy.com> pursuant to the Policy, paragraph 4(c)(ii). Complainant further alleges that the use of the disputed domain name is not in connection with a bona fide offering of goods or services because Complainant has not authorized Respondent to use the name and because Respondent is advertising the Accutane preparation for sale without complying with legal requirements imposed by U.S. pharmaceutical law.
In support of these conclusions Complainant contends:
1. That “Accutane” is not a word and has no valid use other than in connection with Complainant’s trademark and that Complainant did not authorize Respondent to use its ACCUTANE trademark, to incorporate the trademark into any domain names, nor did Complainant grant a license to Respondent.
2. That Respondent is using the domain name because of its similarity to Complainant’s trademark.
3. That, based upon Respondent’s website, neither Respondent nor its websites have been commonly known by the disputed domain name.
4. That Respondent’s use of the domain name is “purely disreputable”; Complainant avers that Respondent uses its U.S.-registered trademark “as a part of its trade name ‘Buy Accutane,’ and sells a non-FDA approved foreign character labeled drug under the headings ‘Buy Accutane,’ ‘Accutane,’ and ‘Roaccutane’ through “www.norxshop.com” to consumers apparently without a prescription.”
5. That Respondent is soliciting orders for Complainant’s prescription medication, which is strongly contra-indicated during pregnancy, without a license or authorization, and in violation of U.S. law which requires those prescribing, selling, or distributing the drug Accutane to participate in a program to assist in protecting from its potentially serious adverse effects.
6. That Respondent’s use and incorporation of Complainant’s famous trademark in the disputed domain name is evidence of Respondent’s bad faith and its intent to trade upon the reputation and goodwill of Complainant’s trademark and that Respondent’s appropriation and use of Complainant’s famous trademark is a clear attempt to create and benefit from consumer confusion and violates U.S. law.
7. That because Respondent is infringing Complainant’s U.S. trademark, Respondent’s use of the domain name cannot be bona fide.
Citing the Policy, paragraph 4(c)(iii), Complainant also avers that there is no evidence that Respondent is making a legitimate non-commercial or fair use of the disputed domain name without intent for commercial gain.
Registration and Use of Domain Name in Bad Faith
Relying on most of the points recited above, Complainant contends that Respondent registered and is using the disputed domain name in bad faith. Complainant argues that Respondent’s “true purpose” in registering the disputed domain name was to “capitalize on the reputation of Complainant’s [ACCUTANE] mark by diverting Internet [users] to Respondent’s own web site, which solicits orders for Complainant’s prescription drug in a non-FDA approved form with foreign character labeling.”
Notice of Proceedings to Respondent
Complainant represents that in February 2007, Complainant’s attorneys sent a letter by courier, fax and e-mail to Respondent at the addresses indicated in the WhoIs record. The letter advised Respondent that the disputed domain name infringed trademark rights and requested transfer of the disputed domain name to Complainant. The fax sent to Respondent returned a message to Complainant’s attorneys “check condition of remote fax.” Complainant represents that the letter and e-mail were “apparently” received but provides no proof to that effect. Complainant states that there was no response to these communications by Respondent.
Complainant also states in its Complaint that the required notice of these proceedings was sent by courier and email to Respondent at the addresses indicated in the WhoIs record.
The Respondent did not reply to the Complaint.
6. Discussion and Findings
A. Notification of Proceedings to Respondent
The Policy is intended to resolve disputes concerning allegations of abusive domain name registration in an efficient manner. Fundamental due process requirements must nonetheless be met. The requirement that a respondent have notice of proceedings that may substantially affect its rights is such a fundamental requirement. The Policy and the Rules establish procedures to assure that respondents receive adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a) of the Rules).
The WhoIs contact information lists Respondent and its administrative contact as the same person at the same address in Warsaw, Poland. The record shows that Complainant used the WhoIs contact information for Respondent, although Complainant provides no proof that any of Complainant’s email or courier notices of these proceedings, or earlier demand letter, was actually received by Respondent.
The Center forwarded the notification of the Complaint to Respondent and its technical contact via courier and email to the addresses listed in the WhoIs record. The courier package sent by the Center to Respondent in Warsaw appears not to have been delivered due to problems with Respondent’s address, and the emails also returned fatal errors. However, Respondent’s technical contact in Ptuj, Slovenia apparently received both the Center’s hard-copy Complaint notification package and email notification regarding these proceedings.
The website to which the disputed domain name resolves appears to have been taken down since December 5, 2007 and does not presently appear to route to a live site.
Based on the methods employed to provide Respondent with notice of the Complaint, Respondent’s obligations under the Tucows Registration Agreement to maintain accurate and current contact information, and the changes to the website content around the time that these proceedings were filed by Complainant, the Panel is satisfied that the Center took all steps reasonably necessary to notify Respondent of the filing of the Complaint and initiation of these proceedings.
The Panel also finds that the failure of Respondent to furnish a reply is not due to any omission by the Center.
B. Substance of the Complaint and Applicable Standards
The Rules require the Panel to decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, paragraph 15(a). Complainant must establish each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Complainant must establish these elements even if the respondent does not reply. The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064. However, in the absence of a Response, the Panel may also accept as true the factual allegations in the Complaint. E.g., ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
1. Identical or Confusingly Similar
Although the disputed domain name <accutane-buy.com> is not identical to Complainant’s trademark, the Panel agrees with Complainant that Respondent’s domain name is confusingly similar.
Panels disregard the “.com” suffix in evaluating confusing similarity. E.g., VAT Holding AG v. VAT.com, WIPO Case No. D2000-0607; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315.
The Panel concludes that the addition of the descriptive term “buy” does not negate the confusing similarity created by Respondent’s use of Complainant’s ACCUTANE trademark in the disputed domain name. E.g., Giata Gesellschaft für die Entwicklung und Vermarktung interaktiver Tourismusanwendungen mbH v. Keyword Marketing, Inc., WIPO Case No. D2006-1137; Hoffmann-La Roche Inc. v. Aneko Bohner, WIPO Case No. D2006-0629. 1
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark and that the requirements in paragraph 4(a)(i) of the Policy therefore are fulfilled.
2. Rights or Legitimate Interests
The Panel also concludes that Respondent has no rights or legitimate interests in the domain name.
The Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes: (1) using the domain name in connection with a bona fide offering of goods and services; (2) being commonly known by the domain name; or (3) making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers. Policy, paragraphs 4(c)(i) – (iii).
Complainant must show a prima facie case proving the negative that a respondent lacks rights or legitimate interests. E.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. The absence of rights or legitimate interests is established if a complainant makes out a prima facie case and the respondent enters no response. Id., (citing De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002 -0005).
Complainant avers that Respondent was not commonly known by the disputed domain name, did not offer legitimate sales of Complainant’s trademarked dermatological preparation, and that Respondent had no license or authorization to use the trademarks or to sell the Accutane prescription product. In the absence of a response, the Panel accepts Complainant’s undisputed factual averments as true.
The Panel finds that 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. E.g., Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784.
The Panel also finds there is no bona fide offering of goods or services by Respondent.
Respondent’s commercial activities undertaken through use of the domain name are neither fair use nor bona fide under the Policy. The unauthorized appropriation of another’s trademark in a domain name and the commercial use of the corresponding website cannot confer rights or legitimate interests upon Respondent. See, e.g. America Online, Inc. v. Xianfeng Fu, WIPO Case No. D2000-1374 (“it would be unconscionable to find that a bona fide offering of services in a respondent’s operation of web-site using a domain name which is confusingly similar to the complainant’s mark and for the same business”), cited in Hoffmann-La Roche Inc. v. Aneko Bohner, supra.
Filing no response, Respondent has not invoked any of the circumstances of paragraph 4(c) of the Policy to support the existence of its “rights or legitimate interests” in use of the domain name.
Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied.2
3. Registered and Used in Bad Faith
The Panel finds that the third element of paragraph 4(a) of the Policy, bad faith registration and bad faith use, is also established.
Using a domain name to intentionally attract Internet users, for commercial gain, by creating a likelihood of confusion, may be evidence of bad faith registration and use. Policy, paragraph 4(b)(iv). See, e.g., L´Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623. Panels may draw inferences about bad faith registration or use in light of the circumstances, such as whether there is no response to the complaint, concealment of identity, and a lack of conceivable good faith uses for the domain name. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The Panel infers that Respondent registered the disputed domain name in attempts to trade on the fame of Complainant’s trademark, which was registered and used in the 1970s, and widely promoted before Respondent could possibly have registered the domain name. It is inconceivable under the circumstances that Respondent would have been unaware of Complainant’s trademark or product name. Respondent is deliberately attempting to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with the Complainant’s mark. Therefore, the Panel finds that Respondent registered the domain name in bad faith.
With the addition of the word “buy” to Complainant’s ACCUTANE trademark, the Panel finds that there is no conceivable good faith use for the domain name <accutane-buy.com> by Respondent.
Archived screens from Respondent’s website show that the disputed domain name was used not only to promote sales of Complainant’s preparation, but also to promote other competing and unrelated pharmaceutical products. The Panel concludes that this activity demonstrates bad faith use. Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784 (citing Google, Inc v. wwwgoogle.com and Jimmy Siavesh Behain, WIPO Case No. D2000-1240; Casio Keisanki Kabushiki (Casio Computer Co., Ltd.) v. Jongchan Kim, WIPO Case No. D2003-0400; Downstream Technologies, LLC v. Bartels System GmbH, WIPO Case No. D2003-0088).
The Panel therefore concludes that the disputed domain name was registered and is being used by Respondent in bad faith under paragraph 4(b)(iv) of the Policy.
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 <accutane-buy.com > be transferred to Complainant.
Jeffrey D. Steinhardt
Dated: February 4, 2008
1 Complainant’s reliance on the Panel decision in General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087, is misplaced, however, since the discussion of descriptive terms added to the complainant’s trademark in that case was of a general rather than a specific nature.
2 The Panel declines to consider Complainant’s contentions regarding Respondent’s trade name because Complainant has provided no evidence respecting Respondent’s trade name. Similarly, there is not sufficient proof of the alleged sale of non-FDA approved foreign character labelled product to consider Complainant’s many arguments that rely on this averment. The Panel also concludes that Respondent’s use of the domain name is not bona fide use, without needing to consider Complainant’s contention that the use cannot be bona fide because Respondent allegedly infringed Complainant’s trademark.