The Complainant is Hoffmann-La Roche Inc. of New Jersey, United States of America, represented by Lathrop & Gage L.C. of United States of America.
The Respondent is Andrey of Nizhegorodskaya Oblast, Russian Federation.
The disputed domain name <accutane-online.net> was registered with EstDomains, Inc. at the time of filing of the Complaint. The disputed domain name is presently registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com due to the de-accreditation of EstDomains, Inc. by ICANN on November 24, 2008.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2008. On October 1, 2008, October 9, 2008, October 14, 2008, October 15, 2008, and October 17, 2008, the Center transmitted by email to EstDomains, Inc. a request for registrar verification in connection with the disputed domain name. All of the messages were rejected unanswered. The request sent on October 17, 2008, had included the statement: “Unless we [the Center] receive a reply from you by October 21, 2008, we will proceed in this matter on the basis that the above information is accurate. As noted previously, the Center would do so reluctantly, and accepts no responsibility in the event of complications resulting from inaccurate or incomplete information.” There was no reply from the registrar. 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 October 27, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was November 17, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 18, 2008.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on November 26, 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.
The Complainant is Hoffmann-La Roche Inc., and its parent company is F. Hoffmann-La Roche AG. The Complainant is a major manufacturer of pharmaceuticals. One of its products is Accutane, a brand name for isotretinoin, a vitamin A analog used in the treatment of acne and other conditions. The product has sold well since about 1972 and has been extensively promoted in print advertisements in medical journals, promotional materials, packaging, medical informational materials, television advertising and direct mailings.
The trademark ACCUTANE, Reg. No. 966,924, was registered to the Complainant at the United States Patent and Trademark Office (USPTO) on August 28, 1973 with a first use date recorded as November 27, 1972. The parent company owns the domain name <accutane.com>, which refers visitors to the website “www.rocheusa.com/products” for information about Accutane.
Nothing is known about the Respondent except for the information incorporated in the registration of the disputed domain name.
The Complainant contends that it is world famous as a manufacturer of pharmaceutical and diagnostic products including Accutane. Documentary evidence is submitted of the Complainant's registration of the trademark Accutane at the USPTO, granted on August 28, 1973 under Reg. No. 966,924.
The Complainant contends that the disputed domain name <accutane-online.net> is confusingly similar to its trademark Accutane. The disputed domain name incorporates the Complainant's trademark and the word “online”. Previous UDRP decisions are cited in support of the contention that the addition of words, letters or numbers to a trademark used in a disputed domain name does not generally avoid a finding of confusingly similarity.
The Complainant further contends that the respondent has no rights or legitimate interests in the disputed domain name. ACCUTANE is an invented word and has no valid use other than in connection with the Complainant's trademark. The Complainant has no relationship with the Respondent and has not authorized or licensed the Respondent to use its trademark ACCUTANE or to incorporate the trademark into any domain name or trade name. The Respondent bases its use of the disputed domain name upon the goodwill in the ACCUTANE trademark. Neither the Respondent nor its website has been commonly known by the disputed domain name in the terms of paragraph 4(c)(ii) of the Policy.
The Complainant says that the Respondent's activity includes the referral of visitors to the website “www.canadianhealthcaremall.net”, which sells Accutane without proper medical assessment of the patient and without meeting in each case the physical examination and other prerequisites of the iPLEDGE program United States of America Food and Drug Administration. The Respondent is not making a bona fide use of the disputed domain name for an offering of goods or services. Its use of the disputed domain name is neither noncommercial nor fair.
The Complainant further contends that the Respondent registered and is using the disputed domain name in bad faith. The Respondent's purpose is to capitalise on the Complainant's trademark in the disputed domain name by diverting visitors to itself and soliciting orders for Accutane through commercial links. Accutane is a prescription-only product, however the Respondent facilitates its ultimate supply without compliance with relevant regulations. The disputed domain name is also connected to the promotion of competing and unrelated products. Thus, it is contended, the Respondent has intentionally attempted to attract for financial gain Internet users to its website by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation or endorsement of the Respondent's website or the goods available through the Respondent's website.
The Complainant submits a copy of a cease and desist letter that it sent on July 2, 2008 by FedEx courier to the Respondent, which was returned, and by e-mail to the Respondent's email address of record, which was apparently delivered. The letter set out in detail some of the prescribing constraints surrounding Accutane and politely requested the transfer of the disputed domain name. The Respondent has not replied.
The Complainant cites, among many previous UDRP decisions, Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (appropriation of a well known trademark of which a respondent must have been aware, for the purposes of a domain name or website without authorisation, as a basis for a finding of bad faith).
Documentation submitted by the Complainant includes several pages of screenprints of the website to which the disputed domain name resolves, several pages of screenprints of the website “www.canadianhealthcaremall.net”, and several pages of information from the iPLEDGE website about that program.
The Complainant requests the transfer to it of the disputed domain name.
The Respondent did not reply to the Complainant's contentions.
Paragraph 4(a) of the Policy states that the Respondent is required:
to submit to a mandatory administrative proceeding in the event that a third party (a “complainant”) asserts to the applicable provider, in compliance with the Rules, that:
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.
The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
The Complainant is required to prove that it has rights in a trademark, and that the disputed domain name is identical or confusingly similar to the trademark.
Documentation submitted in evidence proves to the Panel's satisfaction that the registered trademark ACCUTANE is owned by the Complainant and has been registered at the USPTO since 1973.
The disputed domain name is <accutane-online.net>. The directory level indicator “.net” is of no consequence because it or an equivalent is an inevitable component of a domain name. Since spaces are not a part of domain name syntax, the hyphen serves as a spacer, and there is no distinction between upper and lower case. The essential part of the disputed domain name therefore reads the same as “ACCUTANE online”, comprising the Complainant's long-registered and well known trademark ACCUTANE, together with “online”, which in website parlance and in the context indicates a direct or indirect source of supply. The incorporation of the word “Accutane” is found to render the disputed domain name confusingly similar to the Complainant's trademark and the extra word “online” is found not to detract from that confusing similarity. In respect of paragraph 4(a)(i) of the Policy the Panel finds for the Complainant.
The Complainant must prove that the Respondent does not have any rights or legitimate interests in the disputed domain name, which is conventionally done by setting out a prima facie case to that effect, which the Respondent may reply to in the terms of paragraph 4(c) of the Policy or otherwise.
The Complainant certifies that ACCUTANE is an invented or coined word that has no meaning other than its trademark, and for this and other reasons the Respondent does not have rights in the word Accutane. The Complainant has no connection with the Respondent and has not allowed or licensed it to use the trademark. The Respondent is not commonly known by the disputed domain name and is not making a bona fide use of it for an offering of goods or services. The Respondent's use of the disputed domain name is not legitimate or fair because it is for the unauthorised promotion of the Complainant's product without the necessary prior medical consultation, and is commercial in nature.
The Panel accepts that the Complainant has made out a prima facie case in respect of paragraph 4(a)(ii) of the Policy to the effect that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent has not replied, and the Panel cannot envisage any factors supporting the Respondent in the terms of paragraph 4(c) of the Policy. Accordingly the Panel finds for the Complainant in the terms of paragraph 4(a)(ii) of the Policy.
The Complainant is required to prove that the disputed domain name was registered and is used in bad faith. Paragraph 4(b) of the Policy lists four circumstances that, without limitation, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 website or location or of a product or service on your website or location.”
The fourth of these circumstances, paragraph 4(b)(iv) of the Policy, most particularly encompasses the Respondent's activities. The Respondent has set up a website based on a domain name that, in the essentials of its name, announces “ACCUTANE online”. Accutane has been well known since the 1970s and the message projected by the disputed domain name is that Accutane may be obtained through the Internet and through the Respondent's website.
At least some viewers of the Respondent's website are likely to be confused into thinking that it is endorsed by the Complainant. The website projects an image of providing information about Accutane in the general style of medical prescribing notes, reporting the drug's mode of action and both indications and contra-indications. In other words, despite some poor grammar, the website could at first glance appear authentic to the general reader. It also features headings such as “Buy Cheap Accutane” and offers a number of links showing prices and quantities. The Complainant says that some of these links go to “www.canadianhealthcaremall.net”, the screenprint of which website features not only Accutane but also what appear to be links to numerous other drugs categorised under, for instance, “men's health” (Viagra, Cialis, etc.,), “anti-depressants”, “general health” (including human growth hormone) and several others.
The only tenable explanation for the Respondent's choice of the disputed domain name is to attract Internet users who search either directly or through a search engine for the term Accutane. The Respondent's website offers links, among others, to actual suppliers of Accutane. It is not realistically plausible that the Respondent has set up this operation, attracting Internet users to the keyword Accutane and then referring them to suppliers and advertisers, without a commercial objective. It may reasonably be concluded that the Respondent receives commission for such referrals to suppliers and advertisers, by means of the business model known as pay-per-click or click-through. In general, the receipt of payments for referrals to other websites may be a legitimate source of revenue and is widely used on the Internet, but the attraction of viewers for this purpose by the exploitation of another's trademark is not legitimate. The Panel finds bad faith registration and use proven in the terms of paragraph 4(b)(iv) of the Policy.
The examples of bad faith provided in paragraph 4(b) of the Policy are without limitation. The exploitation of a well known trademark in a domain name for commercial purposes without authorisation, in and of itself, is commonly found to constitute bad faith registration and use (Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226; Société des Hôtels Méridien v. LaPorte Holdings, Inc., WIPO Case No. D2004-0849; Société pour l'Oeuvre et la Mémoire d'Antoine de Saint Exupéry – Succession Saint Exupéry – D'Agay v. Perlegos Properties, WIPO Case No. D2005-1085). The Panel accepts on the evidence that the Complainant's trademark is sufficiently well known for a finding of bad faith to be made on this ground.
Failure of the Respondent to reply to a cease and desist letter from the Complainant is found in this case to compound the circumstances of bad faith (Ebay Inc. v. Ebay4sex.com and Tony Caranci, WIPO Case No. D2000-1632).
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-online.net> be transferred to the Complainant.
Dr. Clive N.A. Trotman
Dated: December 10, 2008