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 John Wills of Alice, Texas, United States of America.
The disputed domain names <accutaneonline.org> and <cheapaccutane.net> are registered with MyDomain, Inc. d/b/a NamesDirect.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 20, 2010. On April 21, 2010, the Center transmitted by email to MyDomain, Inc. d/b/a NamesDirect a request for registrar verification in connection with the disputed domain names.
On April 21, 2010, Dotster Inc. transmitted by email to the Center its verification response confirming that the disputed domain names are registered with NamesDirect, 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 the Respondent of the Complaint, and the proceedings commenced on April 26, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 16, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 20, 2010.
The Center appointed Thomas L. Creel as the sole panelist in this matter on June 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.
ACCUTANE is registered as a trademark for a dermatological preparation with the United States Patent and Trademark Office as Registration No. 966.924. It was registered as of August 28, 1973 alleging a first use date of November 27, 1972. It was registered and is currently owned by Complainant Hoffmann-La Roche Inc.
Complainant alleges that an ACCUTANE pharmaceutical product for treating acne has long been sold in the United States and that it has been extensively promoted in print, promotional materials, packaging, medical informational materials, television advertising and direct mailings. Evidence was submitted of media articles attesting to the wide spread use and effectiveness of this product. Complainant claims United States sales of this product have exceeded hundreds of millions of dollars. However, evidence submitted shows that Complainant notified the United States Food and Drug Administration in June, 2009 that it would immediately discontinue the manufacture and distribution of the ACCUTANE product. Complainant alleges, nevertheless, that the product is still, and will for some time to come be, on sale in pharmacies in the United States
Complainant alleges that it has a parent company, F. Hoffmann-La Roche AG. (“Roche AG”). Roche AG has registered the domain name <accutane.com>.
The Panel finds no reason to doubt the allegations in the Complaint. Respondent registered the domains names <cheapaccutane.net> and <accutaneonline.org> in February, 2010. Contact information for the Respondent of a street address, e-mail address and telephone number is available from the Registrar.
Complainant has requested that the disputed domain names be transferred to it because:
1. the disputed domain names are confusingly similar to a trademark or service mark in which Complainant has rights;
2. Respondent has no rights or legitimate interests in the domain names and has not been commonly known by the domain names;
3. Respondent has not used the domain names for a bona fide offering of goods or services;
4. Respondent is not making a legitimate noncommercial or fair use of the domain names without intent for commercial gain; and
5. Respondent registered and is using the domain names in bad faith.
Respondent did not reply to Complainant's contentions.
The Policy is addressed to resolving disputes concerning allegations of abusive domain registration.
The Policy establishes three elements that must be established by Complainant to obtain relief. These elements are that:
i. Respondent's domain names are identical or confusingly similar to a trademark or service mark in which the complainant has rights;
ii. Respondent has no rights or legitimate interests in respect of the domain names; and
iii. Respondent's domain names have been registered and are being used in bad faith.
Each of these elements will be addressed below, after first addressing jurisdiction.
It is essential to dispute resolution proceedings that fundamental due process requirements are met. Such requirements include that a respondent has notice of proceedings that may substantially affect his rights. The Policy and Rules establish procedures intended to ensure that a respondent is given adequate notice of the proceedings initiated against him or her and a reasonable opportunity to respond.
Here Complainant representative sent two letters to Respondent at the post and e-mail addresses available from WHOIS and the Registrar. These demanded that he cease the activity which is the subject of the Complaint and requested the domain names be transferred. The post copies were returned as undeliverable, but the e-mail correspondence was apparently received. The Complaint makes no mention of any response. A copy of the Complaint was sent to Respondent when filed by Complainant via e-mail.
The Center also sent the Complaint by e-mail and an explanatory letter about the proceedings by both post and e- mail. The Center communications advised of the consequences of not responding and of default. When the deadline for a response passed, the Center sent a communication by e-mail advising of the default and the consequences thereof.
The panel finds that the notification procedures used complied with the Policy and Rules and meet the necessary due process requirements. There is no record in the proceedings indicating that any of the e-mail communications to Respondent at the address for Respondent were not delivered.
The domain names at issue contain the entire ACCUTANE trademark of Complainant. The descriptive language added of “cheap” on one domain name and “online” on the other do not prevent likelihood of confusion in this case. Respondent's domain names are confusingly similar to a trademark in which Complainant has rights.
Paragraph 4(c) of the Policy enumerates how a respondent may establish rights to and legitimate interests in a domain name. Respondent has not filed a response to the Complaint. Complainant has alleged that Respondent has no rights or legitimate interests in the domain name. This Panel finds nothing in the record which would indicate that Respondent has any rights or legitimate interests in the domain names. Indeed, this Panel finds that the record establishes he does not. Therefore, the requirement of Paragraph 4(a)(ii) of the Policy is met.
Respondent's use indicates that his domain names were selected and are being used because of the goodwill created by Complainant in the ACCUTANE trademark. Respondent intentionally is attempting to create a likelihood of confusion with Respondent's mark for his own financial gain. Respondent's sites offer the ACCUTANE product for sale. A prospective customer for the ACCUTANE product, entering the domain names at issue, is directed to another site when he or she clicks on “buy now” or “purchase now”. Respondent offers as well additional products of Complainant and products of its competitors. Respondents sites also depict an ACCUTANE brand package and use ACCUTANE in copyright notices as if it was a company name, all without authorization from Complainant.
Basically, Respondent is using Complainant's ACCUTANE mark to promote and obtain sales through an online pharmacy. The panel infers that Respondent is likely receiving some pecuniary benefit for directing traffic to that pharmacy. However, all prescriptions for sales of ACCUTANE into the United States are subject to the requirements of the iPLEDGE program of the United States Food and Drug Administration (FDA). The product label approved by the FDA states that ACCUTANE must not be prescribed, dispensed or otherwise obtained through the internet. Also, no more than a one month supply of this drug can be sold in a single order, whereas a 90 day supply can be obtained through Respondent's sites. Respondent's sales activites violate the FDA iPLEDGE program.
The Panel agrees with the analysis in a similar case concerned the ACCUTANE mark; Hoffmann-La Roche Inc. v. Whois Protection, D2009-0455 in which a similar situation was presented. There the panel ordered the domain name <acutane.com> transferred to Complainant. In so doing, the panel stated:
“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.”
The Panel finds the disputed domain names were registered and are being used in bad faith.
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 names <cheapaccutane.net> and <accutaneonline.org> be transferred to the Complainant.
Thomas L. Creel
Dated: June 28, 2010