The Complainant is Hoffmann-La Roche Inc. of Nutley, New Jersey, United States of America, represented by Lathrop & Gage LLP, United States of America.
The Respondent is Whois Protection of Georgetown of the Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
The disputed domain name <acutane.com> is registered with CSL Computer Service Langenbach GmbH dba Joker.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 7, 2009. On April 8, 2009, the Center transmitted by email to CSL Computer Service Langenbach GmbH dba Joker.com a request for registrar verification in connection with the disputed domain name. On April 15, 2009, CSL Computer Service Langenbach GmbH dba Joker.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On April 16, 2009, the Center requested CSL Computer Service Langenbach GmbH dba Joker.com by email to confirm whether the language of the registration agreement for the disputed domain name is either German, or English, or both German and English. By email of April 17, 2009 to the Center, CSL Computer Service Langenbach GmbH dba Joker.com confirmed that the language for the registration agreement of the disputed domain name was both English and German.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 April 20, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was May 10, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 11, 2009.
The Center appointed Stefan Abel as the sole panelist in this matter on May 14, 2009. 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 a US-company and one of the leading manufacturers of pharmaceutical and diagnostic products in the world. The Complainant is the reported owner of the trademark ACCUTANE, registered in the United States Patent and Trademark Office under registration no. 966,924 registered on August 28, 1973 for a dermatological preparation, namely a pharmaceutical product indicated for the treatment and prevention of acne. The Complainant's parent company owns and has registered the domain name <accutane.com> in 1997. This website directs Internet users to another website (“www.rocheusa.com”) through which customers can obtain information about the Accutane products.
The <acutane.com> domain name was registered in May 2002. The Respondent's site at the disputed domain name contains a number of links to several commercial websites including websites offering pharmaceutical products, among others for the treatment and prevention of acne.
In summary, the Complainant's contentions are as follows:
- The Complainant is one of the leading manufacturers of pharmaceutical and diagnostic products in the world. The products sold under the trademark ACCUTANE have been extensively promoted for many years and sales have exceeded hundreds of millions of dollars. The Complainant's dermatological preparation sold under the mark ACCUTANE has acquired fame and celebrity in the United States.
- The disputed domain name is confusingly similar to the Complainant's ACCUTANE trademark. It contains only one letter less than this trademark - a missing C - and therefore represents a typical case of “typosquat”.
- The Respondent has no rights or legitimate interests with regards to the domain name since the Respondent does not have any connection or association with the Complainant. Neither the Respondent nor its website has been commonly known by the domain name <acutane.com>. The Respondent has registered the domain name to use it for a commercial website that attempts to derive benefit from the similarity between the disputed domain name and the Complainant's ACCUTANE trademark. The Respondent's website is used to confuse customers and direct them to the information or offers of the Complainant's competitors.
- In addition, the Complainant has to comply with the strict mandatory parameters provided by the U.S. Food and Drug Administration (FDA) that inhibits the Complainant to sell Accutane products through the Internet. The Respondent's sales are in violation of these requirements set by the FDA.
- The Respondent has registered the disputed domain name to intentionally attract Internet users to its website and seeks to capitalize on the reputation of the Complainant. The disputed domain name seeks to divert Internet users to promotion material of the Complainant's competitors. This demonstrates that the Respondent has intentionally attempted to attract Internet users for financial gain.
The Respondent did not reply to the Complainant's contentions.
The Policy provides for transfer of the domain name if the Complainant establishes each of the following elements set out in paragraph 4(a)(i) to (iii) of the Policy:
(i) The Respondent's 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 and is being used in bad faith.
Paragraph 4(b) of the Policy sets out circumstances which, in particular but without limitation, shall be evidence of registration and use of the domain name in bad faith.
According to paragraph 11(a) of the Rules, the language of the administrative proceeding shall be the language of the registration agreement. As the registration agreement for the disputed domain name is in both English and German, the Panel will determine, which languages apply.
The Panel has determined that English shall be the language of the proceedings, for the following reasons: the Respondent is located in the Cayman Islands, thus an English speaking area. The website under the disputed domain name provides information in English and is addressed to English speaking Internet users. Further, English is also the language of the Complainant.
The Complainant has established that it is the registered owner of the ACCUTANE trademark registration. This Panel finds that the domain name at issue is confusingly similar to this trademark. The only difference is a missing “C” in the middle of the word that can not be heard. The disputed domain name represents what is likely to be a common misspelling of the Complainant's trademark, as it is phonetically identical. The Panel therefore finds that the domain name <acutane.com> is confusingly similar to the trademark ACCUTANE in which the Complainant has rights.
There is no indication that the Respondent is licensed or otherwise authorized by the Complainant to use its trademarks or to register the disputed domain name.
The disputed domain name does not have any apparent generic or descriptive meaning in English (the language of the Respondent's location and the language of the website the disputed domain name presently provides links to) or other common languages.
The term “acutane” is not used as a designation for a person, company, services or products on the website of the disputed domain name.
And due to the fact that the online sale by the Complainant of Accutane products is prohibited, there are no indications that the domain name at issue could be legitimately used for selling and distributing Accutane products via the Internet.
By producing evidence on these circumstances, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the domain name. The burden of submitting evidence therefore shifts to the Respondent. The Respondent must then demonstrate its rights or legitimate interests in that domain name in order to refute the prima facie case. The Respondent has made no such showing.
The Panel finds that the Respondent's default in refuting the prima facie case made by the Complainant is sufficient to establish this element of the Policy. It is an often impossible task for the Complainant to prove a negative that it is primarily within the knowledge of the Respondent such as lack of rights or legitimate interests in the domain name. Producing evidence that the Respondent prima facie has no rights or legitimate interests in the domain name must therefore be regarded as sufficient to establish the requirement of paragraph 4(a)(ii) if the Respondent fails to rebut the prima facie case. This finding is consistent with the consensus in previous WIPO UDRP decisions (see e.g. Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).
The Panel therefore finds that the Respondent does not have rights or legitimate interests in the domain name.
The Complainant has established this element in accordance with paragraph 4(b)(iv) of the Policy.
The Panel finds that, by using the domain name for a set of links to other providers of pharmaceutical products, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's ACCUTANE trademark as to source, sponsorship and affiliation of the website for the following reasons: The domain name represents a misspelled version of the Complainant's trademarks sounding identical and spelled nearly identical to the Complainant's trademarks. In addition to that, the Respondent's website provides links to the Complainant's competitors, selling competitive products and other pharmaceutical products to Internet users. Therefore, Internet users are likely to get the idea that the Respondent's site at the disputed domain name is an official site of the Complainant sponsored by the Complainant or affiliated with the Complainant. Such likelihood of confusion would in all likelihood attract more customers to the site of the disputed domain name resulting in commercial gain as the Respondent's site provides links to numerous commercial websites.
In addition, it has to be taken into account that the Complainant is prevented from selling Accutane via the Internet as it has to comply with the requirements of pharmaceutical regulations. By providing links to websites where users can, despite these regulatory requirements, buy these products, the Respondent attempts to attract, for commercial gain, in particular those users seeking to circumvent the regulatory requirements and to buy the products via Internet, by creating a likelihood of confusion.
The Panel finds that the Respondent acted intentionally. It is not conceivable to the Panel that the Respondent could have registered the disputed domain name without having the Complainant's ACCUTANE trademark in mind. The Respondent's intention to use the disputed domain name as a reference to the Complainant and its trademarks is obvious considering that no rights or legitimate interests in using the domain name are apparent and considering that the Complainant registered its trademarks years before the registration of the disputed domain name. The Complainant's parent company also registered its corresponding domain name <accutane.com> years before the registration of the disputed domain name and had been using for years intensively the term Accutane as designation for its products for the treatment and prevention of acne.
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, <acutane.com> be transferred to the Complainant.
Dated: May 28, 2009