The Complainant is Hoffmann-La Roche Inc. of New Jersey, United States of America (“USA”), represented by Lathrop & Gage LLP, USA.
The Respondent is Max Richka of Kiev, Ukraine.
The disputed domain name <accutaneuk.com> (the “Domain Name”) is registered with Name.com LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 30, 2010. The Center transmitted its request for registrar verification to the Registrar the same day.
The Registrar replied on April 1, 2010, confirming that it was the registrar and the Respondent was the registrant of the Domain Name, that the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) applied to it, that it would expire on January 23, 2011, that it had been locked until the conclusion of this proceeding, and that the registration agreement was in English. The Registrar stated that it had not received a copy of the Complaint and that it could not tell when the Domain Name was registered. The Registrar provided the full contact details on its WhoIs database in respect of the Domain Name.
The Center verified that the Complaint satisfied the formal requirements of the 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 8, 2010. The notification appears to have been transmitted successfully to the email address of the Respondent as stated in the contact details in the Registrar's WhoIs database. In accordance with paragraph 5(a) of the Rules, the due date for Response was April 28, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 29, 2010.
The Center appointed Jonathan Turner as the sole panelist in this matter on May 5, 2010. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules. Having reviewed the file, the Panel is satisfied that the Complaint complied with applicable formal requirements, was duly notified to the Respondent and has been submitted to a properly constituted Panel in accordance with the UDRP, the Rules and the Supplemental Rules.
The Complainant has sold a dermatological preparation under the mark ACCUTANE in the USA since November 1972. Its sales of the product under this mark have exceeded hundreds of millions of dollars. ACCUTANE has been registered in the principal register of the USPTO as a mark of the Complainant since August 1973 pursuant to an application made in December 1972. The Complainant has also registered the domain name <accutane.com>, which is directed to its website at “www.rocheusa.com”, where information about its ACCUTANE preparation can be obtained.
The Domain Name is pointed to a web page which provides instructions for the use of Accutane, followed by the indication “2006 © Copyright Accutane UK”. The banner contains an advertisement apparently depicting blister packs of the Complainant's ACCUTANE product accompanied by the mark ACCUTANE. The advertisement contains a hyperlink to a page of a website at “www.getdrugs.co.uk” which purports to offer for sale Accutane with free Viagra pills. A sidebar of this page contains links advertising Viagra, Cialis, Levitra, Tamiflu and other pharmaceuticals.
The Complainant's representative sent a letter of complaint to the Respondent by FedEx and email on March 3, 2010, but in both cases the letter was returned as undeliverable.
The Complainant contends that the Domain Name contains the entirety of its registered mark ACCUTANE and that its registration and use by the Respondent creates a strong likelihood of confusion as to source, sponsorship, association or endorsement of the Respondent's website associated with the Domain Name.
The Complainant submits that the Respondent has no rights or legitimate interests in the Domain Name. The Complainant states that it has not authorized the Respondent to use its trademark or to incorporate it into a domain name or copyright notice. The Complainant adds that it is clear from the Respondent's website that it has not been commonly known by the Domain Name.
The Complainant alleges that the Respondent's use of the Domain Name is purely disreputable. The Complainant points out that ACCUTANE is used in the copyright notice on the Respondent's website as if it were a company name. The Complainant states that as of March 1, 2006, it has been illegal to distribute ACCUTANE in the USA through the internet or other means outside the iPLEDGE program, and that the offers on the web page linked to the web page at “www.accutaneuk.com” are illegal in the USA in various other respects.
The Complainant submits that the Respondent's use of its trademark is a clear attempt to create and benefit from consumer confusion regarding the Respondent's activities and the Complainant's bona fide business. The Complainant also notes that the Domain Name is being used commercially and that the Respondent cannot claim to be making legitimate noncommercial use of it.
The Complainant alleges that the Respondent registered and is using the Domain Name in bad faith to divert Internet users seeking a Roche group website to unrelated websites which use the Complainant's mark without licence. The Complainant also refers to the Respondent's provision of false contact details as evidence of bad faith.
The Complainant seeks a decision that the Domain Name be transferred to it.
As stated above, the Respondent did not reply to the Complainant's contentions.
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding, the Complainant must prove (i) that the Domain Name is identical or confusingly similar to a mark in which it has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith.
In accordance with paragraph 14(b) of the Rules the Panel shall draw such inferences from the Respondent's default as it considers appropriate. This includes the acceptance of plausible evidence of the Complainant which has not been disputed.
The Panel finds on the undisputed evidence that the Complainant has registered and unregistered rights in the mark ACCUTANE.
The Panel further finds that the Domain Name is confusingly similar to this mark from which it differs only in the addition of “uk” and the generic top level domain suffix. Many Internet users would assume that the Domain Name refers to a website of a member of the Complainant's group supplying its ACCUTANE product in the United Kingdom.
The first requirement of the UDRP is satisfied.
There is no evidence that the Respondent is not selling genuine ACCUTANE products placed on the market by the Complainant's group. However, even if the Respondent is selling genuine ACCUTANE products, the Panel does not regard the Respondent's use of the Domain Name as conferring rights or legitimate interests on the Respondent in respect of it.
As many Panels have held, for a reseller to have a right or legitimate interest in a domain name which reflects the mark of a particular product, the following requirements must be met: (a) the reseller must actually be offering that product; (b) the domain name must be used to sell only the trademarked product; (c) the site must accurately disclose the registrant's relationship with the owner of the mark; and (d) the respondent must not try to corner the market in domain names reflecting the mark: see Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 and the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.3.
In this case, the Panel finds that the domain name is not used to sell only the trademarked product. No product is directly offered on the page to which the Domain Name resolves, but the advertisement for ACCUTANE on that page is linked to a page where ACCUTANE is sold in conjunction with Viagra and various other pharmaceuticals are also promoted or offered.
Furthermore, the web page at the Domain Name does not accurately disclose the Respondent's relationship (or lack thereof) with the Complainant, but rather implies misleadingly (in particular, by the copyright notice) that it is a web page of the Complainant's group.
The Panel therefore finds that the second and third conditions identified above have not been met.
The Panel further finds that the Respondent is not commonly known by the Domain Name and that it is not making legitimate noncommercial or fair use of the Domain Name.
On the record, the Panel considers that there is no other basis on which the Respondent could claim a right or legitimate interest in respect of the Domain Name. The second requirement of the UDRP is satisfied.
The Panel finds that the Respondent is using the Domain Name intentionally to attract Internet users to its website for commercial gain in the form of increased sales by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the Respondent's website.
In the view of the Panel, it is obvious that many Internet users would assume that the Domain Name refers to a website of the Complainant's group and it may be inferred that this confusion was intended by the Respondent. The confusion of at least some of those users is liable to be reinforced by the content and misleading copyright notice of the web page of the Respondent to which the Domain Name is directed. However, even if most or all consumers would realize on reading it that it was not a website of the Complainant's group, the Respondent would still be using the Domain Name to attract internet users for commercial gain by means of confusion with the Complainant's mark.
In accordance with paragraph 4(b)(iv) of the UDRP, these circumstances constitute evidence of registration and use of the Domain Name in bad faith. There is no contrary evidence displacing this presumption. The Panel therefore finds that the Domain Name was registered and is being used in bad faith. The third requirement of the UDRP is 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 domain name, <accutaneuk.com>, be transferred to the Complainant.
Dated: May 7, 2010