WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hoffmann-La Roche Inc. v. Mikhail Pavlishin
Case No. D2010-0998
1. The Parties
The Complainant is Hoffmann-La Roche Inc. of Nutley, New Jersey, United States of America, represented by Lathrop & Gage L.C., United States of America.
The Respondent is Mikhail Pavlishin of Stebnik, Ukraine.
2. The Domain Name and Registrar
The disputed domain name <buygenericaccutane.org> is registered with Center of Ukrainian Internet Names (UKRNAMES).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 17, 2010. On June 17, 2010, the Center transmitted by email to Center of Ukrainian Internet Names (UKRNAMES) a request for registrar verification in connection with the disputed domain name. On June 22, 2010, Center of Ukrainian Internet Names (UKRNAMES) 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”).
On June 29, 2010, the Center notified the parties, in Russian and English, that according to the information provided by UKRNAMES, the language of the registration agreement for the disputed domain name is Russian. Pursuant to the Rules, Paragraph 11, the Center instructed the Complainant to either submit the Complaint translated into Russian, or submit a request for English to be the language of the administrative proceedings. The Center also instructed the Respondent to reply to the Complainant’s submission concerning the language of the proceedings, including – in the event that the Complainant requests English - any objection to that request. The Center further advised the Respondent that if he does not submit any response concerning the language by July 4, 2010, the Center will proceed on the basis that he has no objection the Complainant’s request that English be the language of the proceedings.
On July 2, 2010, the Complainant filed an amendment to its Complaint in which it requested that the proceedings go forward in English. In support of this request, the Complainant argued that the Respondent had demonstrated its ability to do business in English, as evidenced by the facts that the website at the disputed domain name (before it was taken down) had proclaimed itself as an “Official Canadian Pharmacy” and used English as its default setting.
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint in both Russian and English, and the proceedings commenced on July 6, 2010. In the same notification, the Center communicated its decision to accept the Complaint in English, the Response in either Russian or English, and to appoint a Panel familiar with both of those languages, which would then have the authority under paragraph 11 of the Rules to make the final determination of the language of proceedings. In accordance with the Rules, paragraph 5(a), the due date for Response was July 26, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 27, 2010.
The Center appointed Natasha Lisman, who is familiar with both English and Russian, as the sole panelist in this matter on August 12, 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, and has since found occasion to extend (under Rules, paragraph 10(c)) the time period for rendering its decision in this case to the date indicated under paragraph 8 below.
4. Language of the Proceedings
In accordance with paragraph 11(a) of the Rules, the language of the registration agreement – here, Russian – is presumptively the language of the proceedings, but the Panel has the authority to determine otherwise. Based on the Complainant’s arguments in favor of English, and in view of the fact that the use of Russian would be solely for the Respondent’s benefit and the Respondent has chosen not to participate in these proceedings, the Panel has determined that English is the appropriate language for the decision.
5. Factual Background
The Complainant is one of the world’s leading researchers and developers of pharmaceutical and diagnostic products. It is the owner of the mark ACCUTANE and has used it in the United States since 1972 to designate a ground-breaking dermatological preparation for the treatment and prevention of acne. Accutane’s active ingredient is isotretinoin. As a result of the Complainant’s extensive advertisement and other promotion of this preparation, resulting in hundreds of millions of dollars in sales, Accutane acquired fame and celebrity. However, in 2002, generic formulations of isotretinoin entered the market and began to compete with Accutane, ultimately greatly reducing the Complainant’s share of the market and causing it in June 2009 to discontinue the manufacture and distribution of Accutane. Nonetheless, the Complainant’s preparation under its mark ACCUTANE continues to be available for sale in pharmacies in the United States.
In March 2006, to address certain adverse side effects of isotretinoin, the United States Food and Drug Administration (“FDA”) approved the so-called iPLEDGE program, placing restrictions on the prescription, distribution, and sale of isotretinoin products, including a prohibition on any distribution through the Internet.
According to the WhoIs Look Up report provided by the Complainant, the Respondent registered the disputed domain name on March 25, 2010. As depicted in a printout submitted by the Complainant, the web site “buygenericaccutane.org” purported to be the site of “Official Canadian Pharmacy” and offered for sale a variety of skin care and pharmaceutical products, including a product referred to as “Accutane (Isotretinoin),” showing it in Accutane brand packaging and describing its use in rather broken English. At the same time, the web site provided a definition of “generic” as “using a different name for the same ingredients.”
In April and May, 2010, the Complainant sent to the Respondent a letter, by FedEx and e-mail, protesting the registration of the disputed domain name as an infringement of the Complainant’s trademark rights and requesting that the Respondent transfer the disputed domain name to the Complainant. As of the date of the Complaint, no response to this letter had been received.
6. Parties’ Contentions
The Complainant contends that the disputed domain name <buygenericaccutane.org> is identical or confusingly similar to its mark ACCUTANE because it incorporates the entire mark and the addition of the terms “buy” and “generic” does not alter the confusing similarity because they are descriptive. The Complainant further argues that the Respondent has no rights or legitimate interests in the disputed domain name because it has never been authorized or licensed to use the ACCUTANE mark; neither the Respondent nor its website has been commonly known by the disputed domain name; and the Respondent’s use of the disputed domain name is “purely disreputable” because it is infringing and likely to confuse purchasers, seeks to capitalize on the reputation of the Complainant’s famous trademark, and promotes Internet sales in violation of FDA’s iPLEDGE program. Based on the same grounds, the Complainant asserts that the Respondent has not used the disputed domain name for a bona fide offering of goods and services, nor for any legitimate noncommercial or fair purpose unmotivated by commercial gain, but, rather, registered and is using the domain name in bad faith. The Complainant requests that for all these reasons, the Panel issue a decision that the disputed domain name be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions, nor submitted any contentions of his own.
7. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, to justify the transfer of the domain name, the Complainant must prove each of the following elements:
(i) That the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) That Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) That Respondent has registered and is using the domain name in bad faith.
Under paragraph 15(a) of the Rules, the Panel must “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.”
A. Identical or Confusingly Similar
While the Complainant indisputably has rights in the trademark ACCUTANE, and this mark is directly
incorporated as the third element of the disputed domain name, this Panel does not find <buygenericaccutane.org> to be identical or confusingly similar to the mark ACCUTANE. The Panel is cognizant of the fact that in several prior UDRP cases, other domain names using or incorporating the word “accutane” or a form thereof have been found confusingly similar to the Complainant’s trademark. However, the domain names at issue in many of those cases involved either a simple misspelling of the Complainant’s trademark or addition of terms directly suggestive of the Complainant’s products: <acutane.com> in Hoffman-La Roche Inc. v. Whois Protection, WIPO Case No. D2009-0455; <accutane-prescriptiononline.info> in Hoffman-La Roche, Inc. v. Alisia Uzun, WIPO Case No. D2008-1138; <accutane-buy.com> in Hoffman-La Roche Inc. v. Samuel Teodorek, WIPO Case No. D2007-1814; <buyaccutane.com> in Hoffman-La Roche Inc. v. Aneko Bohner, WIPO Case No. D2006-0629; <accutanewithnoprescription.com> in Hoffmann-La Roche Inc. v. Mihail Pavlishin, WIPO Case No. D2010-0939. The domain name <onlinetamiflu.com> that was found confusingly similar to another trademark of the Complainant, TAMIFLU, in Hoffman-La Roche Inc. v. Onlinetamflu.com, WIPO Case No. D2007-1806, was likewise directly suggestive of a product made and sold by the Complainant. Thus, the decisions in these cases are congruent with the long established general principle that “likelihood of confusion is not avoided [. . .] merely by adding or deleting [. . .] matter that is descriptive or suggestive of the named goods or services.” Institut Straumann AG v. Core-Vent Corporation, WIPO Case No. D2000-0404. The rationale underlying this principle is that such words “do nothing to detract from and indeed are likely to reinforce the strong association between the [mark] and the Complainant.” America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004.
The Panel is also aware of a substantial line of cases in which panels appear to have effectively applied this principle under the first element of the Policy as a per se rule. Notably, one panel recently ruled that the domain name <buygenericaccutane.net> is confusingly similar to the mark ACCUTANE. Hoffmann-La Roche Inc. v. Michail Sidorenko, WIPO Case No. D2010-0581. According to that panel, the incorporation of the mark “is sufficient to establish confusing similarity for the purpose of the Policy despite the addition of the words “buy” and “generic” to the trademark.” Another panel recently ruled that the domain name <genericnameofaccutane.com> is confusingly similar to the mark ACCUTANE, partly on grounds that such distinctive mark remained the dominant component of the domain name at issue in that case. Hoffmann-La Roche Inc. v. Pavlishin Mihail, WIPO Case No. D2010-0919. It has also been held that the addition of the word “generic” to the marks for other pharmaceutical brand products does not avoid confusing similarity. See, e.g., Sanofi-aventis v. ALEX and DomainsByProxy, WIPO Case No. D2007-1453 (and cases cited therein). Wholesale incorporation of a mark in a domain name has also been found by many panels to be sufficient to establish confusing similarity for purposes of the first element of the Policy even in combination with derogatory terms, such as “sucks”. See, e.g. Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D2008-0647, Société Air France v. Mark Allaye-Chan, WIPO Case No. D2009-0327, Southern California Regional Rail Authority v. Robert Arkow, WIPO Case No. D2008-0430, Red Bull GmbH v. Carl Gamel, WIPO Case No. D2008-0253, Joseph Dello Russo M.D. v. Michelle Guillaumin, WIPO Case No. D2006-1627 (and cases cited within these).
However, the Panel in the present case does not agree with the approach of those decisions because, in this Panel’s view, it effectively transforms a general principle into a mechanistic rule severed from the general principle’s underlying logic. Like the panel in Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227, this Panel declines to endorse as a “hard and fast rule” the proposition that “where a domain name incorporates the entirety of a trademark, then the domain name will for the purposes of the Policy be confusingly similar to the mark.” Instead, “[e]ach case must be judged on its own facts, and the assessment will always depend on the specific mark and the specific domain name.” Id. Therefore, this Panel prefers an alternative, more nuanced, approach, which reflects the recognition that the very phrase “confusingly similar” implies that there can be similarities that are confusing as well as those that are not.
In keeping with this approach, this Panel considers that because “[c]onfusion in this context [is] the sense of bewilderment or failing to distinguish between things, [. . .] a state of wondering whether there is an association,” the relevant question is: “Is it likely that, because of the similarity between the domain name on the one hand and the Complainant’s trademark on the other hand, people will wonder whether the domain name is associated in some way with the Complainant?’” RapidShare AG, Christian Schmid v. Helena Clouse, WIPO Case No. D2010-1086 (quoting from SANOFI-AVENTIS v. Jason Trevenio, WIPO Case No. D2007-0648.) Put another way, “[t]he ultimate question in a case [. . .] where a descriptive or generic expression [. . .] has been added to the Complainant’s trademark, is whether the addition of the descriptive term sufficiently alters the impression created by the Complainant’s mark that the confusion which would otherwise be caused by the use of the Complainant’s mark is removed.” Capitol News Company, LLC v. Jason Brown, WIPO Case No. D2010-0403. Consequently, this Panel considers that “a domain name combining a trademark with [. . .] language clearly indicating that the domain name is not affiliated with the trademark owner cannot be considered confusingly similar to the trademark.” Lockheed Martin Corporation v. Dan Parisi, WIPO Case No. D2000-1015. See also, FMR Corp. v. Native American Warrior Society, Lamar Sneed, Lamar Sneede, WIPO Case No. D2004-0978 (and other authorities discussed therein).
In the particular case at hand, this Panel finds that the phrase “buygeneric” preceding “accutane” in the domain name does sufficiently alter the impression created by the incorporation of the Complainant’s mark to preclude confusing similarity. In the Panel’s assessment, Internet users who know English will likely understand that that the domain name is not affiliated with the Complainant and its Accutane preparation, and it seems to this Panel unlikely that many such Internet users would be ”bewildered” or enter a “state of wondering” on seeing the domain name whether the Complainant may in fact be engaged in the production and sale of a “generic” version of its own branded product. Moreover, this Panel finds that even for those Internet users unfamiliar with the meaning of the word “generic,” the visual impact of the sub-string of letters “buygeneric” preceding the sub-string “accutane” is to blur or obscure the latter, particularly because the sub-strings of letters within the entire string are not separated by any punctuation. On a direct visual comparison, this Panel does not find the trademark to be sufficiently distinguishable as such within the disputed domain name. As one panel has noted, it is a well known characteristic of human perception that, when confronted with multi-word phrases or multi-syllabic words, people tend to focus primarily on the beginning word or syllable and overlook the end. Institut Straumann AG v. Core-Vent Corporation, supra.i
In sum, the Panel concludes that both in meaning and appearance, the Complainant has not shown on the record in these proceedings that the disputed domain name <buygenericaccutane.org> is identical or confusingly similar to its trademark ACCUTANE.
B. Rights or Legitimate Interests
In view of the Panel’s conclusion as to the first element of the Policy, it is not necessary to decide whether the Respondent has rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
For the same reason, it is also not necessary to decide here whether the Respondent registered the disputed domain name, or used it, in bad faith. The Panel is cognizant that the defaulting Respondent has been involved in several previous disputes under the Policy, in which findings of abusive registration of domain names containing trademarks (including the mark ACCUTANE) have been made against it. See, e.g., Hoffmann-La Roche Inc. v. Mihail Pavlishin, supra. Nevertheless, despite what these findings may suggest about the Respondent’s original motives in selecting the disputed domain name, the Complainant must still get over the hurdle on the first element.
For all the foregoing reasons, the Complaint is denied.
Dated: December 3, 2010