The Complainant is Hoffmann-La Roche Inc. of San Francisco, California, United States of America, represented by Lathrop & Gage LLP, United States of America.
The Respondent is Hightech Industries, Andrew Browne of Port Huron, United States.
The Disputed Domain Name <buyaccutane.net> is registered with eNom, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 18, 2010. On February 18, 2010, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the Disputed Domain Name. On the same date, eNom, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 February 19, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 11, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 12, 2010.
The Center appointed Michael A. Albert as the sole panelist in this matter on March 19, 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.
The Complainant is one of the world's leading researchers and developers of pharmaceutical and diagnostic products. The Complainant holds a United States trademark registration for the ACCUTANE mark (the “Mark”) for a dermatological preparation, namely, a pharmaceutical product indicated for the treatment and prevention of acne.
The Complainant first used the ACCUTANE mark in 1972 and obtained a trademark registration for the Mark from the United States Patent & Trademark Office in 1973. The parent company of the Complainant, F. Hoffmann-La Roche AG, has registered the domain names <accutane.com> and <rocheusa.com>, with the former resolving to the latter.
The Respondent registered the Disputed Domain Name on February 17, 2009. The Disputed Domain Name, <buyaccutane.net>, contains the entire ACCUTANE mark of the Complainant.
The Respondent used the Disputed Domain Name to offer the ACCUTANE product for sale. On April 14, 2009, the Complainant attempted to deliver to the Respondent by certified mail a letter requesting that the Respondent cease sales of the ACCUTANE product and transfer the Disputed Domain Name to the Complainant. When the postal service was unable to deliver the letter, the Complainant attempted to deliver the letter to the Respondent by email, but the email was also returned as undeliverable. The Complainant then transmitted the letter to the Respondent by facsimile.
Subsequently, the Complainant filed the Complaint with the Center on February 18, 2010, requesting transfer of the Disputed Domain Name.
The Complainant contends that the ACCUTANE mark was extensively promoted for many years in print advertisements in medical journals, promotional materials, packaging, medical informational materials, television advertising and direct mailings. The Complainant further contends that sales of the ACCUTANE product in the United States have exceeded hundreds of millions of dollars.
The Complainant further contends that the ACCUTANE product has acquired fame and and celebrity, symbolizing the goodwill that the Complainant has created in its mark ACCUTANE in the United States.
The Complainant further contends that the Disputed Domain Name is identical or confusingly similar to the Complainant's Mark. Specifically, the Disputed Domain Name, which contains the entire ACCUTANE mark, creates a strong likelihood of confusion as to source, sponsorship, association or endorsement by the Complainant of the Respondent's web site.
The Complainant further contends the Respondent uses the Disputed Domain Name to offer for sale third party products which appear in the Complainant's ACCUTANE packaging. In addition, the “www.buyaccutane.net” web site is linked to another web site, “www.1st-class-md.com”, which offers a generic form of ACCUTANE (isotretinoin) as well asother third-party pharmaceutical products of the Complainant's competitors.
The Complainant further contends that the Respondent has no rights or legitimate interests in the Disputed Domain Name. Specifically, the Complainant contends that the Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services because the Respondent is diverting Internet users seeking the Complainant's ACCUTANE product to third-party websites which offer competing products.
The Complainant further contends that the Respondent's web site demonstrates that neither the Respondent nor its web site has been commonly known by the Disputed Domain Name. “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.
The Complainant further contends that the Respondent lacks a legitimate noncommercial interest in, or fair use of, the Disputed Domain Name as demonstrated by the Respondent's practice of offering for sale products in ACCUTANE packaging as well as competing third-party products.
The Complainant further contends that the Respondent has registered and used the Disputed Domain Name in bad faith. The Respondent appears to offer isotretinoin for sale on the Internet even though the United States Food and Drug Administration has prohibited online sales of this product.
The Complainant further contends that the Respondent's true purpose in registering the Disputed Domain Name is to capitalize on the reputation of the Complainant's ACCUTANE mark by diverting Internet users seeking the Complainant's web site(s) to the Respondent's own web site, and other third-party web sites, which offer for sale competing pharmaceutical products.
The Respondent did not reply to the Complainant's contentions.
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that the Disputed Domain Name should be cancelled or transferred:
(i) the domain name registered by the Respondent 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 Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
The Respondent provided no Response, and the deadline for so doing expired on March 11, 2010. Accordingly, the Respondent is in default. Taking into consideration the Respondent's default, the Panel can infer that the Complainant's allegations are true where appropriate to do so. Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. Nonetheless, the Complainant retains the burden of proving the three requisite elements of Paragraph 4(a).
The Complainant has provided sufficient evidence showing that it is the owner of the ACCUTANE mark. The Complainant does not have a trademark registration of the term “buyaccutane”. The Disputed Domain Name and the Complainant's trademark are not identical. Therefore, the issue is whether the Disputed Domain Name and the Complainant's trademark are confusingly similar.
The Disputed Domain Name combines three elements: (1) the Complainant's ACCUTANE trademark; (2) the prefix “buy”; and (3) the suffix “.net.” The relevant comparison to be made is with the second-level portion of the domain name only (i.e., “buyaccutane”), as it is well-established that the top-level domain name (i.e., “.net”) should be disregarded for this purpose. Playboy Enterprises International, Inc. v. John Taxiarchos, WIPO Case No. D2006-0561.
Prior UDRP panels have recognized that the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to the Complainant's registered mark. AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758 (finding <attelephone.com> confusingly similar to ATT); Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 (finding <quixtarmortgage.com> legally identical to QUIXTAR).
Moreover, the addition of the term “buy” as a prefix to the ACCUTANE mark does not mitigate the confusing similarity between the Disputed Domain Name and the Complainant's trademark. The prefix “buy” is an ordinary descriptive word which is related to the trademark ACCUTANE and may lead Internet users to understand the Disputed Domain Name as hosting a website that offers for sale the Complainant's product. Adding the prefix “buy” to the Mark does nothing to dispel and serves only to reinforce the connection in the public mind between the word ACCUTANE and the Complainant, and therefore increases the risk of confusion. Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti, WIPO Case No. D2005-0037 (finding <buylantus.com> confusingly similar to LANTUS).
For the all of the foregoing reasons, this Panel finds that the Disputed Domain Name <buyaccutane.net> is confusingly similar to the Complainant's ACCUTANE mark, in which the Complainant has established rights. Therefore, the Panel finds that the Complainant has proven the first element of the Policy.
Under the Policy, paragraph 4(c), legitimate interests in domain names may be demonstrated by showing that:
(i) before any notice of this dispute, the respondent used, or demonstrably prepared to use, the domain names or a name corresponding to the domain names in connection with a bona fide offering of goods or services;
(ii) the respondent has been commonly known by the domain names, even if no trademark or service mark rights have been acquired; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue.
The Complainant contends that the Respondent has no rights to use the ACCUTANE mark. The Complainant has alleged, and the Respondent has not denied, that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, is not commonly known by the domain name, and is misleading Internet users for commercial gain.
For all of the foregoing reasons, this Panel finds that the Complainant has proven that the Respondent lacks rights to, or legitimate interests in, the Disputed Domain Name. Therefore, the Panel is convinced that the Complainant has proven the second element of the Policy.
Paragraph 4(b) of the Policy sets out four illustrative circumstances of the registration and use of a domain name in bad faith. One of the illustrations of bad faith, Policy paragraph 4(b)(iv), occurs when the respondent attempts to attract, for commercial gain, Internet users to the respondent's web site or other online location, 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 of a product or service on the respondent's web site.
The Panel finds compelling circumstantial evidence in the record that the Respondent likely knew of the Complainant's Mark when it registered the Disputed Domain Name. The ACCUTANE mark appears to have been in use for nearly forty years in connection with the sale of voluminous quantities of the ACCUTANE product. Because the ACCUTANE mark is not descriptive of anything and has no other meaning than in connection with the Complainant's Mark, it is very unlikely that the Respondent would have registered a domain name incorporating the Mark without knowledge of the Mark. Based on the foregoing circumstances, the Panel finds that the Respondent registered the Disputed Domain Name in bad faith. See Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415 (“It defies common sense to believe that Respondent coincidentally selected these precise domain names without any knowledge of Complainant and its PROFORCE Trademarks.”).
The Panel also finds that the Respondent used the Disputed Domain Name in bad faith. It is well-established that using a domain name which incorporates a trademark to offer the products of competitors of the trademark owner is likely to cause confusion among Internet users as to the source of products or to confusingly suggest sponsorship by the trademark owner. See e.g., Six Continent Hotels, Inc. v. The Omnicorp, WIPO Case No. D2005-1249; Exel Oyj v. KH Trading, Inc., WIPO Case No. D2004-0433.
Here, the Respondent appears to have intended to use the Disputed Domain Name to promote products which use the Complainant's ACCUTANE packaging as well as other products which compete with the ACCUTANE product.
For all of the foregoing reasons, this Panel finds that the Complainant has proven that the Respondent registered and is using the Disputed Domain Name in bad faith. Therefore, the Panel is convinced that the Complainant has proven the third and final element of the Policy.
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 Name, <buyaccutane.net>, be transferred to the Complainant.
Michael A. Albert
Dated: March 31, 2010