Complainant is Hoffmann-La Roche Inc. of San Francisco, California, United States of America, represented by Lathrop & Gage LLP, United States of America.
Respondent is Private Person, Yaroslav P Savchenko of Moskva, the Russian Federation.
The disputed domain name <buy-cheap-accutane-online.com> (hereinafter “the Domain Name”) is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 13, 2010. On March 15, 2010, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the Domain Name. On March 16, 2010, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on March 18, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was April 7, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on April 8, 2010.
The Center appointed Clive L. Elliott as the sole panelist in this matter on April 14, 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.
Complainant is a corporation organized under the laws of the State of New Jersey and has been the owner of the trade mark ACCUTANE since 1973 (details of such mark were provided). Complainant's parent company is the owner of the registered domain name <accutane.com>.
The Domain Name was registered on January 19, 2010.
Complainant contends that it, together with its affiliated companies, is one of the leading researchers and developers of pharmaceutical and diagnostic products in the world. It states that as from 1973 it has been the owner and user of the trade mark ACCUTANE in the United States. Complainant advises that Accutane designates a dermatological preparation being a pharmaceutical product for the treatment and prevention of acne. Complainant asserts that Accutane has been extensively promoted in print advertisements in medical journals, promotional materials, packaging, medical informational materials, television advertising and direct mailings, and that sales of the Accutane dermatological preparation in the United States have exceeded hundreds of millions of dollars.
Complainant contends that its mark ACCUTANE is an invented and coined mark and that it has an extremely strong reputation in the United States having acquired notoriety, symbolizing the goodwill that it has created in its mark ACCUTANE in the United States.
Complainant states that its parent company, F. Hoffmann-La Roche AG, owns and has registered the domain name <accutane.com>. It also says that when an Internet user types the wording “accutane.com” in a web browser's URL address window that person is directed to the web site of F. Hoffman-La Roche located at “www.rocheusa.com”.
Complainant asserts that Respondent's registration and use of the Domain Name creates a strong likelihood of confusion as to source, sponsorship, association or endorsement of Respondent's web site associated with the Domain Name by Complainant.
Complainant advises that after learning of Respondent's registration of the Domain Name, its counsel sent a letter on February 2, 2010 by FedEx and by e-mail to Respondent. Complainant also indicates that in this communication, counsel advised Respondent that the registration of the Domain Name infringed trademark rights of Complainant and requested that Respondent transfer the Domain Name to Complainant.
Complainant contends that the Domain Name incorporates the whole of Complainant's ACCUTANE trademark and that by adding the descriptive terms of “buy”, “cheap” and “online” it does not prevent the likelihood of confusion. Complainant further states that Respondent's website offers the Accutane product, generic isotretinoin, while depicting brand ACCUTANE packaging, as well as other third party pharmaceutical products of Complainant's competitors for sale, without license or permission from Complainant.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as “Accutane” is not a dictionary word and has no valid use other than in connection with Complainant's own trademark. Complainant argues that based upon Respondent's web site, it believes that neither Respondent nor its web site have been commonly known by the Domain Name and that Respondent's use of the Domain Name is disreputable.
Complainant states that as of March 1, 2006, all prescriptions for the sales and distribution of Accutane and any other isotretinoin products into the United States are subject to the mandatory strict parameters of the iPLEDGE program of the FDA (United States Food and Drug Administration), which sets forth the only permissible distribution system of Accutane and any other isotretinoin product in the United States. Complainant contends that Respondent's sales are in violation of the FDA's iPLEDGE program.
Complainant asserts that Respondent is not using the Domain Name in connection with a bona fide offering of goods or services and is using the Domain Name to divert Internet users seeking a F. Hoffman-La Roche group web site associated with the domain name <accutane.com> or the ACCUTANE dermatological preparation product to unrelated web sites.
Respondent did not reply to Complainant's contentions.
Complainant has clearly established that it is the owner of the trademark ACCUTANE (hereinafter referred to as “the Trademark”). The evidence establishes that Complainant has from 1973 used the Trademark in the United States of America in relation to a dermatological preparation, being a pharmaceutical product for the treatment and prevention of acne. Complainant asserts that the Trademark has been extensively promoted and that sales of the product under the Trademark in the United States have exceeded hundreds of millions of dollars.
On this basis the Panel finds that Complainant clearly has rights in the Trademark.
Complainant contends that the Domain Name incorporates the whole of the Trademark and that by adding the descriptive words or terms “buy”, “cheap” and “online” it does not prevent the likelihood of confusion.
The Panel finds that the use of the Trademark in conjunction with the descriptive words “buy”, “cheap” and “online” simply describe the “process of purchasing cheap Accutane online”. It certainly does little to remove the overall impression created by the Domain Name. In the Panel's view, in terms of any confusion analysis, the addition of these words is essentially irrelevant and will not have any impact on the overall impression of the dominant part of the Domain Name, the Trademark, which would be identified with Complainant. The inclusion of these words does not defeat the identity or confusing similarity created by use of the Trademark in its entirety and the addition of these descriptive words to the Trademark clearly fails to distinguish the Domain Name from the Trademark.
For these reasons it is found that the Domain Name is confusingly similar to the Trademark, that Complainant has rights in the Trademark and that the requirements of paragraph 4(a)(i) of the Policy are thus met.
In the absence of a Response it is difficult to ascertain what rights or legitimate interests Respondent might assert in support of its registration and use of the Domain Name.
Complainant alleges that Respondent's website offers generic isotretinoin but offered for sale in conjunction with authentic Accutane packaging, as well as other third party pharmaceutical products of Complainant's competitors. The Panel accepts that, on the basis of the record as it stands, these allegations are plausible and infers that Respondent has intentionally chosen a domain name based on a registered trademark in order to generate traffic to a web site that it is in some way associated with.
While the exact nature of the commercial relationship is unclear it is reasonable to infer that Respondent is generating revenue and/or some other form of commercial benefit through such relationship. In the absence of any explanation or denial from Respondent the Panel concludes that Respondent has no rights or legitimate interests in respect of the Domain Name. Complainant thus succeeds in meeting the requirements of paragraph 4(a)(ii) of the Policy.
Paragraph 4(a)(iii) of the Policy requires that Complainant demonstrate Respondent has registered and has used the Domain Name in bad faith.
The Panel is obliged to look at the evidence and submissions before it. For the reasons set out above there is no basis to conclude that Respondent's conduct and motivations were proper. In the circumstances, the Panel concludes that the Domain Name was registered and used in bad faith, as Respondent has registered the Domain Name to commercially benefit from the confusion of Internet users, in accordance with paragraph 4(b)(iv) of the Policy. On this basis, Complainant has satisfied paragraph 4(a)(iii) 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 Domain Name < buy-cheap-accutane-online.com> be transferred to Complainant.
Clive L. Elliott
Dated: April 26, 2010