WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Hoffmann-La Roche Inc. v. One Step Closer, Bob Dilan

Case No. D2008-0719

 

1. The Parties

Complainant is Hoffmann-La Roche Inc., of Nutley, New Jersey, United States of America, represented by Lathrop & Gage L.C., United States of America.

Respondent is One Step Closer, Bob Dilan, of Pakistan.

 

2. The Domain Name and Registrar

The disputed domain names <accutaneonline.biz>, <accutaneonline.com> and <accutaneonline.net> are registered with EstDomains, Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 8, 2008. On May 8, 2008, the Center transmitted by email to EstDomains, Inc. a request for registrar verification in connection with the domain names at issue. On May 9, 2008, EstDomains, Inc. transmitted by email to the Center its verification response confirming that 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, Complainant filed an amendment to the Complaint on May 16, 2008. The Center verified that the Complaint together with the amended 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 May 29, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was June 18, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 19, 2008.

The Center appointed Roberto Bianchi as the sole panelist in this matter on July 8, 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 following facts and circumstances are not contested:

- Complainant and its affiliated companies are a leading manufacturer of pharmaceutical and diagnostic products.

- Complainant owns the ACCUTANE mark in the United States of America, registered on August 28, 1973 with Reg. No. 966,924, with a first-use date of November 27, 1972. This mark covers a dermatological preparation of international class 5. ACCUTANE protects a pharmaceutical product indicated for the treatment and prevention of acne. Sales of this product exceed hundreds of millions of dollars. This product has been extensively advertised and promoted, and has acquired fame.

- The disputed domain names <accutaneonline.com>, <accutaneonline.net> and <accutaneonline.biz> were registered on June 14, 2007.

- On February 21, 2008, Complainant sent by email a cease-and-desist letter to Respondent, objecting to the use of its ACCUTANE mark. This letter did not reach Respondent although Complainant sent it to Respondent’s email address as appearing on the corresponding WhoIs web pages.

- On March 3, 2008, the web site at <accutaneonline.com> was offering “generic ACCUTANE” without prescription, via a link to the “www.qualitytablets.com”, a website offering generic medications for sale.

 

5. Parties’ Contentions

A. Complainant

Complainant contends the following:

- The domain names in dispute are confusingly similar to the ACCUTANE mark in which Complainant has rights. The domain names at issue contain the entire ACCUTANE trademark, and the descriptive term “online” does not negate the confusing similarity created by Respondent’s use of Complainant’s mark

- Respondent has no rights or legitimate interests in the domain names in dispute. “Accutane” is not a word and has no valid use other than in connection with Complainant’s mark. Respondent has no authorization or license from Complainant to use the trademark ACCUTANE or to incorporate it into any domain names. Respondent’s use of the disputed domain names indicates that ACCUTANE is being used because of the goodwill created by Complainant in the mark. Neither Respondent nor its web site has been commonly known by the domain names at issue. Respondent’s use of the disputed domain names is purely disreputable. The domain names at issue use Complainant’s ACCUTANE mark as a part of domain names through which Accutane (or a competitive generic form) is provided to purchasers without a prescription, through the web site “www.qualitytablets.com”. All of such activity is infringing, and likely to confuse purchasers, all to the damage of Complainant.

- As of March 1, 2006, prescriptions for and sales and distribution of ACCUTANE and any other isotretinion product are subject under U.S. law to the strict parameters of the iPLEDGE program, the only legal method through which Accutane is prescribed and dispensed to patients. Wholesalers and pharmacies must also comply with the iPLEDGE program requirements in order to distribute and dispense these pharmaceutical products. Respondent’s web site reached from the disputed domain names violates U.S. law, under which Internet pharmacies are not authorized to participate in iPLEDGE. Sales of isotretinoin on the Internet violate the iPLEDGE program and U.S. law. These actions undertaken by Respondent may lead a consumer to believe that Respondent is the source of the Accutane product and related information, or that Respondent’s use of ACCUTANE in the subject domain names and web site are affiliated with or sponsored by Complainant.

- Respondent, by use and registration of the disputed domain names, seeks to capitalize on the reputation associated with the mark, and to divert Internet users seeking Complainant’s web site to a web site wholly unrelated to Roche. Such uses of Complainant’s mark ACCUTANE are not only clear indications of bad faith, but also do not comply with the iPLEDGE program and are thus illegal under U.S. law. Respondent’s use of Complainant’s trademark is infringing.

- Under these circumstances, Respondent’s use of the domain names cannot be considered bona fide. Respondent is trading on Complainant’s goodwill and is using the disputed domain names to offer and sell Complainant’s Accutane prescription drug or a competitive isotretinoin product without a license or authorization from Complainant, all to the confusion of purchasers and detriment of Complainant. Such activity does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use.

- The bad faith of the Registrant is clearly evident from the fact that “accutane” is not a word, but an invented and coined mark that has an extremely strong worldwide reputation. There exists no relationship between Respondent and Complainant, and Complainant has not given Respondent permission to use its famous mark ACCUTANE, and such sales of any form of isotretinoin are in clear violation of the iPLEDGE program and U.S. law. Under these circumstances, the only reasonable conclusion is that Respondent was aware of the ACCUTANE trademark.

- Respondent’s true purpose in registering the disputed domain names which incorporate Complainant’s ACCUTANE in its entirety is to capitalize on the reputation of Complainant’s ACCUTANE mark by diverting Internet users seeking Complainant’s web site to Respondent’s own web site which provides the name of a site which solicits orders for Complainant’s Accutane prescription drug without a prescription, as well as providing a competitor’s generic version of isotretinoin.

- Such acts committed by Respondent create confusion in the marketplace and cause harm to Complainant and the public. By using the domain names at issue to sell the Accutane product or a generic competitive isotretinoin product, which is illegal, as these are prohibited from sale by Internet pharmacies by the iPLEDGE regulations, without permission or license of any kind, Respondent has intentionally attempted to attract for financial gain Internet users to Respondent’s web site by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s web site or the goods sold on or through Respondent’s web site. Such unauthorized use of Complainant’s mark by Respondent suggests opportunistic bad faith, and is evidence of bad faith registration and use

- Respondent has given false contact information to avoid being reached by objection letters, which is in itself a matter of bad faith.

 

6. Discussion and Findings

UDRP Panels must decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any applicable rules and principles of law. Under paragraph 4(a) of the Policy, a complainant must establish each of the following elements:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the 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.

Identical or Confusingly Similar

Complainant has satisfactorily evidenced U.S. trademark rights in the ACCUTANE mark.

Since “online” is a descriptive word indicating a channel for sales on the Internet, the Panel finds that the disputed domain names are confusingly similar to Complainant’s mark. See Repsol YPF S.A. v. Talk2middle Top Domain Reg, WIPO Case No. D2008-0556 (finding that the <repsolypf-online.com> domain name is confusingly similar to the REPSOL YPF trade mark, differing only with regard to a descriptive element, the word “online”); see also Hoffmann-La Roche Inc. v. Onlinetamiflu.com, WIPO Case No. D2007-1806 (finding that the addition of the descriptive term “online” does not negate the confusing similarity created by the complete inclusion of the TAMIFLU mark in the disputed domain name.)

B. Rights or Legitimate Interests

Complainant contends that (a) “Accutane” is not a word and has no valid use other than in connection with Complainant’s mark, (b) that Respondent has no authorization or license from Complainant to use the trademark ACCUTANE, (c) that neither Respondent nor its web site are commonly known by the domain names at issue, and (d) that Respondent is trading on Complainant’s goodwill and is using the disputed domain names to offer and sell Complainant’s Accutane prescription drug or a competitive isotretinoin product without a license or authorization from Complainant, all to the confusion of purchasers and detriment of Complainant, which does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain names.

In absence of any evidence in favor of Respondent, Complainant’s contentions, taken together, amount to a prima facie case that Respondent lacks rights or legitimate interests in respect of the domain names at issue. Once a prima facie case is made, a respondent carries the burden of demonstrating rights or legitimate interests in the domain name. Otherwise, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. SeeWIPO Overview of WIPO Panel Views on Selected UDRP Questions” at “http://www.wipo.int/amc/en/domains/search/overview/index.html”.

Respondent is in default, and has not provided any evidence in its own favor.

Accordingly, the Panel finds that Respondent lacks rights or legitimate interests in respect of the domain names in dispute.

C. Registered and Used in Bad Faith

Since the content of the web sites corresponding to the domain names at issue refers to or promotes sales of either the genuine Accutane preparation or “generic ACCUTANE” preparations, Respondent undisputedly knew or must have known of the ACCUTANE widely known mark. Accordingly, the Panel finds that Respondent registered the domain names in dispute in bad faith.

As to use, Complainant showed that the web site at “www.accutaneonline.com” has been offering “generic ACCUTANE” without prescription, and a link to “www.qualitytablets.com”, a web site offering generic medications for sale. The other two disputed domain names were redirected to “www.accutaneonline.com”.

Thus, Respondent appears to have been capitalizing on the fame of Complainant’s ACCUTANE mark for profit, which is a circumstance of bad faith registration and use of the domain names pursuant to Policy paragraph 4(b)(iv) (“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.”).

As noticed by the Panel while connecting his browser to “www.accutaneonline.com” on July 21, 2008, the <accutaneonline.com> domain name now appears to have been “parked” with Sedo at “www.sedoparking.com”. The resulting web page shows a list of links to a variety of search categories, apparently unrelated to Complainant or its mark ACCUTANE. Thus, Respondent appears to continuously be extracting a profit from ACCUTANE’s fame by means of “click-through” or “pay-per-click” systems. See MASAI S.A. v. Peter Colman, WIPO Case No. D2007-0509 (the panel established that the use and exploitation of trademarks to obtain “click-through revenues” from the diversion of Internet users has in many decisions been found to be use in bad faith under paragraph 4(b)(iv) of the Policy.)

In sum, the Panel concludes that the third element of the Policy has been met.

 

7. Decision

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 names <accutaneonline.biz>, <accutaneonline.com> and <accutaneonline.net> be transferred to Complainant.


Roberto Bianchi
Sole Panelist

Dated: July 22, 2008