WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hoffmann-La Roche Inc. v. Rajendra Mumbai
Case No. D2008-0674
1. The Parties
The Complainant is Hoffmann-La Roche Inc., New Jersey, United States of America represented by Lathrop & Gage L.C., United States of America.
The Respondent is Rajendra Mumbai of Manipur, India.
2. The Domain Name and Registrar
The disputed domain name <buyaccutane.org> (the “Domain Name”) is registered with EstDomains, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 30, 2008. On April 30, 2008, the Center transmitted by email to EstDomains, Inc. a request for registrar verification in connection with the domain name at issue. On May 5, 2008, EstDomains, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on May 6, 2008. The Center verified that the Complaint together with the amendment to 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 May 7, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was May 27, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 28, 2008.
The Center appointed Ian Lowe as the sole panelist in this matter on June 9, 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
The Complainant together with its affiliate companies is one of the leading manufacturers of pharmaceutical and diagnostic products in the world. The Complainant is the proprietor of United States of America trademark No. 966,924 ACCUTANE registered as of August 28, 1973 in respect of a dermatological preparation.
The Domain Name was registered on January 21, 2007.
5. Parties’ Contentions
A summary of the contentions made by the Complainant is as follows:
a) ACCUTANE (the “Mark”) is registered to the Complainant in the United States Patent and Trademark Office (“U.S.P.T.O.”) as of August 28, 1973 under Registration No. 966,924.
b) The Mark designates a dermatological preparation, namely, a pharmaceutical product indicated for the treatment and prevention of acne. For many years the Complainant’s mark ACCUTANE has been extensively promoted, in print advertisements, in medical journals, promotional materials, packaging, medical informational materials, television advertising and direct mailings. The Complainant has used the mark ACCUTANE for a dermatological preparation since November, 1972 in the United States of America. Sales of the ACCUTANE dermatological preparation in the U.S. have exceeded hundreds of millions of dollars.
(c) As a result of advertising and promotion for the Complainant’s dermatological preparation in the United States of America under the mark ACCUTANE, the product has acquired fame and celebrity, symbolizing the goodwill that Roche has created in the United States of America. Therefore, the Domain Name clearly alludes to the Complainant.
(d) The Respondent uses the trade name “Buy Accutane” and the Domain Name incorporates the whole of the Complainant’s mark and adds the term “buy”. 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. Thus, the Domain Name is identical or confusingly similar to the Complainant’s ACCUTANE trademark within the meaning of the Policy, paragraph 4(a)(i).
(e) The Respondent has no rights or legitimate interests in the name “buyaccutane.org”. “Accutane” is not a word and has no valid use other than in connection with the Complainant’s trademark. The Complainant has not authorized the Respondent to use its trademark ACCUTANE or to incorporate the trademark into any domain name. Furthermore, the Complainant has never granted the Respondent a license to use the ACCUTANE mark. Based upon the Respondent’s web site, it is clear that neither the Respondent nor its web site has been commonly known by the Domain Name pursuant to the Policy, paragraph 4(c)(ii).
(f) The Respondent’s use of the Domain Name is purely disreputable. As of March 1, 2006, prescriptions for and sales and distribution of Accutane and any other isotretinoin products are subject under U.S. law to the strict parameters of the iPLEDGE program, which is the only legal method through which Accutane is prescribed and dispensed to patients. Under U.S. law, Internet pharmacies are not authorized to participate in iPLEDGE. Sales of isotretinoin on the Internet violate the iPLEDGE program and U.S. law. Thus, the sales by the Respondent and others via its web site reached from and through “www.buyaccutane.org” violate U.S. law.
(g) The Respondent is not using the Domain Name in dispute in connection with a bona fide offering of goods or services. The Respondent is using the Domain Name to divert Internet users seeking the Complainant’s web site associated with the domain name <accutane.com> or the ACCUTANE dermatological preparation product to an unrelated web site which uses the Complainant’s famous trademark ACCUTANE without license or authorization of any kind.
(h) There is no evidence that the Respondent is making a legitimate non-commercial or fair use of the Domain Name without intent for commercial gain. The Respondent is trading on the Complainant’s goodwill and is using the Domain Name to offer and sell the Complainant’s Accutane prescription drug or a competitive isotretinoin product without a license or authorization from the Complainant, all to the confusion of purchasers and detriment of the Complainant, the trademark owner.
(i) The Respondent registered and is using the Domain Name in bad faith. The Respondent’s true purpose in registering the disputed domain name which incorporates the Complainant’s mark ACCUTANE in its entirety is to capitalize on the reputation of the Complainant’s ACCUTANE mark by diverting Internet users seeking the Complainant’s web site to the Respondent’s own web site which solicits orders for the Complainant’s Accutane prescription drug without a prescription, as well as providing a competitor’s generic version of isotretinoin.
(j) The bad faith of the Respondent is clearly evident from the fact that:
(a) “buyaccutane” is not a word;
(b) the Complainant’s mark ACCUTANE is an invented and coined mark that has an extremely strong worldwide reputation;
(c) there is no relationship between the Respondent and the Complainant, and the Complainant has not given the Respondent permission to use its famous mark ACCUTANE;
(d) the Respondent has intentionally attempted to attract for financial gain Internet users to the Respondent’s web site by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s web site or the goods on the Respondent’s web site;
(e) use of the Domain Name to promote sales of the Complainant’s preparation and also to promote competing and unrelated products demonstrates bad faith use. Such sales are in clear violation of the iPLEDGE program and U.S. law.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name the Complainant must prove that:
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered in bad faith and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has adduced uncontroverted evidence of a United States trademark registration in respect of ACCUTANE and of the widespread use of the trademark over many years. The Domain Name comprises the entirety of the mark ACCUTANE together with the non-distinctive element “buy”. Accordingly, the Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Respondent has not replied to the Complainant’s contentions and has not therefore displaced the assertion on the part of the Complainant that the Respondent does not and cannot have any rights or legitimate interests in the Domain Name. The Domain Name was registered over 30 years after the Mark had been registered and become famous in the United States of America. The Complainant has exclusive rights for ACCUTANE and no licence, permission, authorization or consent was granted to use ACCUTANE in the Domain Name. The Panel finds that the Respondent has no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
In view of the notoriety of the Mark, it is inconceivable that the Respondent was unaware of the Complainant’s rights in the Mark at the time the Domain Name was registered. The unchallenged evidence of the Complainant is that the Domain Name is being used to take advantage of the notoriety of the ACCUTANE mark to attract Internet users to the website operated by or on behalf of the Respondent for commercial gain.
The Respondent is trading on the Complainant’s goodwill and is using the Domain Name to offer and sell the Complainant’s Accutane prescription drug or a competitive isotretinoin product without a license or authorization from the Complainant, all to the confusion of purchasers and detriment of the Complainant. Such use demonstrates bad faith for the purposes of the Policy as stated in Casio Keisanki Kabushiki (Casio Computer Co., Ltd.) v. Jonchan Kim, WIPO Case No. D2003-0400 and other decisions.
In the circumstances, the Panel finds that the Domain Name was registered and is being used in bad faith.
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 <buyaccutane.org> be transferred to the Complainant.
Dated: June 23, 2008