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 WhoisGuard Protected / Doroven of Westchester, California, United States of America, and Nasusuka, Thailand.
The disputed domain names <accutanebuy.com> and <accutanebuy.info> are registered with eNom.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 16, 2010. On February 16, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain names. On February 17, 2010, eNom transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 22, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on February 25, 2010. 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” 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 February 25, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 17, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 18, 2010.
The Center appointed James McNeish Innes as the sole panelist in this matter on March 26, 2010. 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.
Hoffmann-La Roche Inc. (“Roche”), the Complainant in this administrative proceeding, is a corporation duly organized under the laws of the State of New Jersey. The Complainant, together with its affiliated companies is one of the leading researchers and developers of pharmaceutical and diagnostic products in the world. Its product Accutane is on sale in pharmacies throughout the United States where sales have exceeded hundreds of millions of U.S. Dollars.
The Complainant's contentions include the following:
(a) The ACCUTANE mark of Roche is protected as a trademark for a dermatological preparation in the United States. ACCUTANE is registered to the Complainant at the United States Patent and Trademark Office (“U.S.P.T.O.”), as of August 28, 1973 under Reg. No. 966,924, having a first use date of November 27, 1972.
(b) The mark ACCUTANE designates a dermatological preparation, namely, a pharmaceutical product indicated for the treatment and prevention of acne. For many years the Complainant's mark ACCUTANE was extensively promoted, without limitation, 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. Sales of the ACCUTANE dermatological preparation in the U.S. have exceeded hundreds of millions of dollars.
(c) As a result of such sales, advertising and promotion for the Complainant's dermatological preparation in the United States under the mark ACCUTANE, the product has acquired fame and celebrity, symbolizing the goodwill that Roche has created in its mark ACCUTANE in the United States.
(d) The parent company of Roche, F. Hoffmann-La Roche AG, owns and has registered the domain name <accutane.com>. When an Internet user types the wording “accutane.com” in a web browser's URL address window, he or she is directed to the web site of Roche located at “http://www.rocheusa.com/”, then for pharmaceutical product information, to “http://www.gene.com/gene/products/information/accutane/”, through which the Complainant's customers obtain information as to the Accutane dermatological preparation product of Roche.
(e) The Complainant has placed on the record, documentary evidence in support of the contentions listed at (a)-(d) above.
(f) The disputed domain names <accutanebuy.info> and <accutanebuy.com> contain the entire ACCUTANE trademark of the Complainant. In light of the Complainant's registered mark ACCUTANE and the domain name <accutane.com>, controlled by the Roche group, the Respondent's registration and use of the disputed domain names creates a strong likelihood of confusion as to source, sponsorship, association or endorsement of the Respondent's web sites.
(g) After learning of the Respondent's unauthorized registration of the disputed domain names incorporating the mark ACCUTANE, on December 2, 2009, Roche, through its counsel, sent a letter via certified mail return receipt requested, by fax and by email to the Respondent's addresses indicated in the WhoIs record for the disputed domain names. In the letter, counsel for Roche advised the Respondent that the registration of the disputed domain names infringed trademark rights of Roche and requested that the Respondent transfer the disputed domain names to Roche. The letter sent to the Respondent by certified mail return receipt requested was returned to the Complainant's attorneys as “not deliverable as addressed”. The letter transmitted by email to the Respondent was returned to the Complainant's attorneys as “email delivery failure”. However, the letter transmitted by facsimile was, by all indications, received by the Respondent.
(h) Numerous [ICANN] 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. The descriptive language added here, namely, “buy” does not prevent the likelihood of confusion in this case. See America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004 (citing Sporty's Farm L.L.C. v. Sportsman's Market, Inc., 202 F. 3d 489, 497-98 (2d. Cir. 2000)). Furthermore, on its web sites, the Respondent uses without authorization the Complainant's ACCUTANE mark in copyright notices, as if they were company names.
(i) The Respondent's domain names incorporate the whole of the Complainant's mark and add the term “buy”. Through these sites purchasers are offered other pharmaceutical products of competitors, as well as offering a generic form of isotretinoin which is shown directly in conjunction with the Complainant's brand.
(j) The Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services. The Respondent is using the disputed domain names to divert Internet users seeking a Roche group web site associated with the domain name <accutane.com> or the Accutane dermatological preparation product to unrelated web sites which use the Complainant's famous trademark ACCUTANE without license or authorization of any kind.
(k) The Respondent, by use and registration of the disputed domain names, which contain the Complainant's ACCUTANE trademark in its entirety, seeks to capitalize on the reputation associated with the Complainant's ACCUTANE trademark. Furthermore, the Respondent seeks to use that recognition to divert Internet users seeking the Complainant's web site to web sites wholly unrelated to Roche. The Respondent's web sites have no affiliation or connection whatsoever with the Complainant.
The Respondent did not reply to the Complainant's contentions.
According to paragraph 15(a) of the Rules, the Panel shall decide a complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Paragraph 4(a) of the Policy directs that a complainant must prove each of the following:
(a) That the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights.
(b) That the respondent has no rights or legitimate interests in respect of the domain name.
(c) That the domain name has been registered and is being used in bad faith.
Two separate issues fall for consideration. (1) Does the Complainant have rights in the mark and (2) are the disputed domain names identical or confusingly similar to any such mark. On the record the Complainant has established rights in its mark and registration. They have also demonstrated continued commercial usage since 1972.
The Complainant argues that the disputed domain names are identical or confusingly similar to its mark for the following reasons:
(a) The domain names <accutanebuy.com> and <accutanebuy.info> are confusingly similar to the Complainant's trademark.
(b) The only difference between the Respondent's domain names and the Complainant's ACCUTANE trademark is the addition of the non-descriptive word “buy”. The disputed domain names incorporate in full the Complainant's registered ACCUTANE trademark.
(c) The disputed domain names incorporate a non-distinctive word and are confusingly similar to the Complainant's trademark.
The Panel accepts the Complainant's contentions. The disputed names are confusingly similar to the Complainant's mark. The Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.
Paragraph 4(c) of the Policy provides that any of the following circumstances in particular but without limitation if found by the Panel to be proved based upon its evaluation of the evidence presented shall demonstrate a respondent's rights or legitimate interests in the domain name for the purpose of paragraph 4(a)(ii):
(a) before any notice to you [respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(b) you [respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(c) you [respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has not submitted a Response and has failed to invoke any circumstance which could have demonstrated any rights or legitimate interests. There is no independent evidence of any circumstances which could have demonstrated any rights or legitimate interests on the part of the Respondent. The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names. The Panel finds that the Policy, paragraph 4(a)(ii) has been satisfied.
Paragraph 4(b) of the Policy contains the following provisions under the heading “Evidence of Registration and Use in Bad Faith”. For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(a) 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
(b) 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
(c) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(d) 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.
The Respondent has made no Response in this connection. The Complainant has made contentions that would lead to situations mentioned in paragraph 4(b). The Panel accepts the Complainant's assertion that the Respondent has attempted to attract users to its web sites by creating confusion with the Complainant's mark. The Panel finds that the Policy, paragraph 4(a)(iii) has been satisfied.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names, <accutanebuy.com> and <accutanebuy.info> be transferred to the Complainant.
James McNeish Innes
Dated: April 9, 2010