WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hoffmann-La Roche Inc. v. PrivacyProtect.org / Korolev Oleg
Case No. D2010-0938
1. The Parties
The Complainant is Hoffmann-La Roche Inc. of United States of America, represented by Lathrop & Gage LLP, United States of America.
The Respondent is PrivacyProtect.org / Korolev Oleg, Domain Admin of Moergestel, the Netherlands and Cherepovets, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <accutaneforless.com> is registered with UK2 Group Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 9, 2010. On June 9, 2010, the Center transmitted by email to UK2 Group Ltd. a request for registrar verification in connection with the disputed domain name. On June 11, 2010, UK2 Group Ltd. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 17, 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 June 22, 2010. The Center verified that the Complaint together with the amended to 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 June 24, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 14, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 15, 2010.
The Center appointed Daniel Peña as the sole panelist in this matter on July 27, 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.
4. Factual Background
The Complainant, together with its affiliated companies is one of the leading researchers and developers of pharmaceutical and diagnostic products in the world.
The trademark ACCUTANE of the Complainant is protected as a trademark for a dermatological preparation in the United States of America.
The trademark ACCUTANE is registered on behalf of the Complainant in the United States Patent and Trademark Office (“U.S.P.T.O.”), as of August 28, 1973 under Registration No. 966,924.
The trademark ACCUTANE designates a dermatological preparation, namely, a pharmaceutical product indicated for the treatment and prevention of acne.
Isotretinoin is a medication used to the treatment of severe acne. This medication is marketed under the trademark ACCUTANE by the Complainant
The Complainant has used the trademark ACCUTANE for a dermatological preparation since November, 1972 in the United States.
The sales of the dermatological preparation distinguished with the trademark ACCUTANE in the U.S. have exceeded hundreds of millions of dollars.
The Complainant owns and has registered the domain name <accutane.com>.
5. Parties’ Contentions
The disputed domain name contains the entire trademark ACCUTANE owned by the Complainant.
The Respondent has no rights or legitimate interests in the disputed domain name.
The expression “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 or to incorporate the trademark into any domain name.
As a result of the sales, advertising and promotion for Complainant’s dermatological preparation in the United States under the trademark ACCUTANE, this product has acquired fame and celebrity, symbolizing the goodwill that the Complainant has created in its trademark ACCUTANE in the United States
The trademark ACCUTANE is still, and will be for some time to come, on sale in pharmacies in the United States of America.
The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, and has both registered and used the domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order for the Complainant to prevail and have the disputed domain name transferred, the Complainant must show the following per the Policy, paragraph 4(a):
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainants have rights; and
(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 Complainant bears the burden of proof for each of these elements.
A. Identical or Confusingly Similar
The Complainant has evidenced registration for the trademark ACCUTANE in the United States of America. The Complainant’s trademark is registered to protect dermatological preparations.
The disputed domain name contains the Complainant’s distinctive trademark ACCUTANE in its entirety. Neither the addition as suffix of the descriptive expression “for less” nor the inclusion of the generic denomination “.com” alters the fact that the domain name is confusingly similar to the Complainant’s trademark.
The expression “for less” used together with the trademark ACCUTANE in the disputed domain name does not add any distinctive pattern to the domain name <accutaneforless.com>. In fact, the expression “for less” has a generic meaning among the marketing and promotion strategies linked to the saving of money for consumers, the discounting and selling of products on a seasonal or temporary basis, related to a particular product or service offered in the market.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark. Thus, the requirements in paragraph 4(a)(i) of the Policy are fulfilled.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s 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
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is 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.
A complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, a respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is found to have satisfied paragraph 4(a)(ii) of the Policy.
With respect to paragraph 4(c)(i) of the Policy, there is no evidence that Respondent, before any notice of the dispute, used or 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.
With respect to paragraph 4(c)(ii) of the Policy, there is no evidence that indicates that Respondent has ever been commonly known by the disputed domain name.
With respect to paragraph 4(c)(iii) of the Policy, Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed domain name and has not used the disputed domain name, or a name corresponding to it, in connection with a bona fide offering of goods or services.
This Panel finds that Complainant has made a prima facie showing that Respondent has no rights or legitimate interests in the domain name and that Respondent has not established any rights to or any legitimate interests in the domain name. It has been evidenced that disputed domain name is redirected to a web site which uses Complainant's trademark ACCUTANE. Also, brand packaging is depicted for sale through Respondent’s site, which offers more than a 30 day supply of isotretinoin, which is against FDA regulations. In fact, the product “Accutane”, listed and subject to the iPLEDGE program, must not be prescribed, dispensed or otherwise obtained through the internet or any other means outside the mentioned program.
In this Panel’s view, these actions undertaken by Respondent may lead a consumer to believe that Respondent is the source of the ACCUTANE product and related information, or that Respondent's use of the expression “accutane” in the disputed domain name and web site hosted under this domain name is sponsored by the Complainant.
In the absence of a Response, the Panel accepts the arguments and evidence advanced by the Complainant and finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that accordingly, paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
Under paragraph 4(b), a respondent has used and registered a domain name in bad faith if, inter alia, the respondent has used the domain name intentionally to attempt to attract, for commercial gain, Internet users to the respondent’s website 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 site or of a product or service offered on the respondent’s site. Policy paragraph 4(b)(iv).
The Panel finds that the Respondent registered the disputed domain name which corresponds to a widely used trademark in the pharmaceutical sector with prior knowledge of the Complainant’s rights. Only someone who was familiar with the Complainant’s mark would have registered a domain name including therein the distinctive word “accutane” as such.
In this Panel’s view, the domain name is used intentionally by the Respondent to redirect to a connected third party web site through which to sell products including isotretinoin of competitors equivalent to Complainant's ACCUTANE prescription drug products, and other pharmaceutical products of third parties without a license or authorization from the Complainant, all to the confusion of purchasers and detriment of the Complainant. The Panel considers that these facts lead to the risk of deception and confusion since it could give the impression that the Respondent’s website is somehow endorsed by the Complainant.
Taken together with the fact that the Respondent has not filed any Response in this proceeding, the Panel believes that the Complainant has demonstrated that the contested registration has been made and used in bad faith. Moreover, in this case, the Complainant sent a cease-and-desist letter on May 18, 2010 requesting the immediate transfer of the disputed domain name. The Respondent never answered the mentioned communication. This fact is appreciated by the Panel as another basis to infer a bad faith in the registration as well as the use of domain name.
The Panel finds the disputed domain name was registered and is 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 name <accutaneforless.com> be transferred to the Complainant.
Dated: August 10, 2010