WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hoffmann-La Roche Inc. v. Ruler-Domains, Sergey Ryabov
Case No. D2010-1077
1. The Parties
Complainant is Hoffmann-La Roche Inc. of Nutley, New Jersey, United States of America, represented by Lathrop & Gage L.C., United States of America.
Respondent is Ruler-Domains, Sergey Ryabov of Saint-Petersburg, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <noprescriptionaccutane.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 29, 2010. On June 30, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On June 30, 2010, eNom transmitted by email to the Center its verification response which differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on July 13, 2010. The Center verified that the Complaint together with the amendment 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 Respondent of the Complaint, and the proceedings commenced on July 16, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 5, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 6, 2010.
The Center appointed Henry Olsson as the sole panelist in this matter on August 16, 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
Complainant, Hoffman-La Roche Inc. (hereafter “Roche”), is a corporation organized under the laws of the State of New Jersey, the United States. Complainant is, together with its affiliated companies, engaged in research and development of pharmaceutical and diagnostic products.
The word mark ACCUTANE is registered at the United States Patent and Trademark Office as of August 28, 1973, with a first use date of November 27, 1972. The ACCUTANE trademark designs a dermatological preparation in the form of a product indicated for the treatment and prevention of acne.
F. Hoffman-La Roche AG, which is the parent company of Complainant, has registered the domain name <accutane.com> on April 17, 1997. When accessing the site under that domain name the user is directed to the website of Complainant at <rocheusa.com> and then for product information to another website where information can be obtained on the Accutane dermatological preparation product at issue.
The disputed domain name was registered on April 20, 2010.
5. Parties’ Contentions
As an introduction, Complainant states that it is, together with its affiliated companies, one of the leading researchers and developers of pharmaceutical and diagnostic products in the world, including the dermatological preparation marketed under the ACCUTANE trademark, the sales of which have in the United States exceeded hundred of millions of dollars. As a result of sales, advertising and promotion, the product has acquired fame and celebrity and has come to symbolize the goodwill that Complainant has created in its mark in the United States. Accutane is still and will for some time to come be on sale in the pharmacies of the United States.
Identity or confusing similarity
Complainant stresses in this respect that the domain name <noprescriptionaccutane.com> contains the entire ACCUTANE trademark of Complainant and that Respondent´s registration and use of the disputed domain name creates a strong likelihood of confusion as to the source, sponsorship, association or endorsement by Complainant of the website under the disputed domain name. The descriptive language in the form of a “no” and “prescription” that in the disputed domain name is added to the trademark does not prevent the likelihood of confusion.
Respondent´s website associated with the disputed domain name, reproduces the Accutane packaging and product but sells in fact isotretinoin, which is not an ACCUTANE brand, in a 30, 60 or 90 day supply. In addition, other third party pharmaceutical skin care and other products of Complainant’s competitors are for sale on the website without any permission or license from Complainant.
Thus, the disputed domain name is, according to Complainant, identical or confusingly similar to Complainant’s trademark.
Rights or legitimate interests
Complainant states that Respondent has no rights or legitimate interests in the disputed domain name and invokes a number of factual and legal elements and also previous UDRP panel decisions to support that statement, among them in particular the following.
Complainant suggests that “accutane” is no word and has no valid use other than in connection with Complainant´s trademark. Complainant has not authorized Respondent to use the trademark or incorporate it into a domain name, nor has it granted any license to use the trademark. Neither Respondent nor its website has been commonly known by the disputed domain name.
The infringing activities of Complainant’s trademark ACCUTANE on Respondent´s website include not only the use of the trademark and the brand packaging there but also the offering of pharmaceutical products of competitors to Complainant. In addition, the website offers more than a 30 day supply of isotretinoin, something that is against the U.S. Food and Drug Administration (FDA) regulations under the iPLEDGE Program related to the use of Accutane products. Copies of those Regulations in the relevant parts have been submitted by Complainant.
Complainant contends that Respondent’s use of the disputed domain name indicates that it was selected and is being used because of the goodwill that Complainant has established in the trademark ACCUTANE and constitutes an attempt to create and benefit from consumer confusion regarding Respondent’s activities. The fact that the disputed domain name is being used to promote products of Complainant’s competitors also demonstrate Respondent’s lack of a legitimate noncommercial interest in, or fair use of, the disputed domain name.
Registration and use of the domain name in bad faith
In connection with this element, Complainant stresses a number of circumstances that suggest that Respondent’s intentional use of Complainant’s trademark can not constitute a bona fide offering of goods and services and that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
As regards more specifically the issue of bad faith, Complainant submits that Respondent’s true purpose for registering and using the domain name in its entirety is to capitalize on the reputation of Complainant’s trademark by diverting Internet users seeking Complainant’s website to Respondent’s site; that site contains, without permission, Complainant’s trademark and a picture of a packaging and also an offer for sale of a generic form of isotretinoin and of third party products.
More specifically, Complainant invokes in this context that “accutane” is not a word but is an invented and coined mark with strong reputation in the United States. No relationship exists between Complainant and Respondent, and sales on Respondent’s website are in clear violation of the iPLEDGE Program which is the only way in which isotretinoin products may be sold in the United States; that Program also specifically prohibits Internet sales of Accutane. The activities on Respondent’s website is an intentional attempt to attract for financial gain Internet users to that website and is thereby creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website and activities there. There is no legitimate business connection with Complainant or its Accutane dermatological preparation, and the use of the trademark to sell third party competitive isotretinoin products suggests opportunistic bad faith. The same applies to the use of the disputed domain name to promote sales of competitors’ products.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 15 of the Rules prescribe that a Complaint shall be decided on the basis of the statements made and documents submitted and in accordance with the Policy, the Rules and any principles of law that the Panel deems applicable.
In the case of default by a party, paragraph 14 of the Rules prescribes that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or a requirement under, these Rules, the Panel shall draw such conclusions therefrom as its considers appropriate. In this case, no Response has been submitted and none of the contentions by Complainant has been contested, despite the opportunity given to Respondent to do so. The Panel will therefore have to operate and consider the case on the basis of the factual circumstances contained in the Complaint and the documents submitted by Complainant to support those contentions.
From the Registrar Verification follows that the Policy is applicable in this case and that consequently Respondent is under an obligation to submit to a mandatory administrative proceeding as the one now initiated in respect of the disputed domain name.
The Panel notes that the Complaint has, according to the documentation available from DHL, been duly communicated to Respondent and that that there is from this point of view no obstacle to considering the case.
Paragraph 4.a. of the Policy directs that Complainant has to prove each of the following elements:
- that the domain name registered by Respondent is identical with, or confusingly similar to, a trademark or a service mark in which Complainant has rights
- that Respondent has no rights or legitimate interests in the domain name, and
- that the domain name has been registered and are being used in bad faith.
In paragraphs 4.b. and c. are mentioned a number of circumstances that, if found by the panel to be present, may indicate bad faith or rights/legitimate interests, respectively.
In the following parts of this decision, the Panel discusses each of those elements.
A. Identical or Confusingly Similar
In this respect, Complainant has, according to the paragraph 4(a)(i) of the Policy to prove that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights.
The disputed domain name is <noprescriptionaccutane.com>.
Complainant has submitted evidence showing that the word “accutane” is registered with the United States Patent and Trademark Office as of August 28, 1973. The Panel is thus satisfied that Complainant has rights in this trademark in the United States.
The next issue is then whether identity or confusing similarity exists between the disputed domain name and the trademark. First, the disputed domain name clearly includes Complainant´s trademark in its entirety. What is added are, in addition to “.com”, also the word “nonprescription” (that is “non” and “prescription”).
In accordance with long-established practice, the word “.com” is not of relevance in the consideration of identity/confusing similarity between a domain name and a trademark.
In the view of the Panel, “accutane” is very clearly the dominant part of the disputed domain name and the combination of that dominant part with the mainly descriptive word (or words) “nonprescription” does not in any important manner change the significance of the disputed domain name, the more so as Accutane products and treatments are clearly of a pharmaceutical character to be sold and used according to prescription procedures. The disputed domain name is consequently clearly dominated by its principal component which is “accutane” and thus offers a distinct similarity with the trademark.
On the basis of these considerations, the Panel concludes that a confusing similarity exists between Complainant’s trademark and the disputed domain name in the in the sense of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
In respect of this element, Complainant has to prove that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Complainant has submitted that it has not authorized Respondent to use its trademark ACCUTANE or incorporate it in any domain name, nor has Complainant ever granted Respondent a license to use the mark. Complainant has also submitted that Respondent on the website to which the disputed domain name resolves uses the trademark and a picture of the brand packaging and also offers for sale pharmaceutical products of Complainant’s third party competitors. Furthermore, Complainant has submitted that Accutane products and treatments as well as other isotretinoin products may, according to the FDA’s iPLEDGE program only be prescribed, dispensed or obtained through Internet outside of that Program, obviously because of its dangerous effects in some cases.
Complainant has submitted extensive documentation to support its contentions. As mentioned above, Respondent has not responded to those, and the Panel therefore will base its findings on the facts included in those contentions.
On the basis of circumstances present relating to this element, the Panel finds that Complainant has proved that Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
As regards this element, Complainant has, according to paragraph 4.a (iii) to prove that Respondent has registered and is using the disputed domain name in bad faith.
The essential contention by Complainant in this context is that Respondent’s true purpose when registering the disputed domain name was to capitalize on the reputation of Complainant’s trademark ACCUTANE by diverting Internet users looking for the Roche website to Respondent’s own website.
To support its contentions in this respect, Complainant has submitted extensive documentation in the form of documents and a printout of Respondent’s website. That website contains both the trademark ACCUTANE in a number of places and a picture of an Accutane packaging, and offers to sell “Accutane (isotretinoin)”and a generic form of isotretinoin “(Accutane, 30 pills x 30 mg (generic))” and also other third party pharmaceutical products. Respondent, who has not submitted any response, has consequently not commented on those allegations.
As regards the use made of the disputed domain name, Complainant has, in particular, submitted that that use consists of offering for sale, without permission of any kind from Complainant, third party isotretinoin products. Thus, Complainant has intentionally attempted to attract for financial gain Internet users to Respondent’s website by creating a likelihood of confusion.
As first concerns registration in bad faith, the Panel finds it inconceivable that Respondent was not, at the time of the registration of the disputed domain name, aware of the ACCUTANE trademark and its reputation as well as of the products and treatments for which that mark was used. In view of this and also of the fact that Complainant has proved that Respondent has no rights or legitimate interests in the disputed domain name, the Panel is satisfied that the registration was made in bad faith.
As regards the use made of the disputed domain name Panel finds that Complainant’s allegations, supported by evidence, show that the use constitutes an intentional attempt to attract for financial gains Internet users to Respondent’s website where both Accutane products are offered for sale in violation of the FDA regulatory framework and also products from Complainant’s competitors. This and other circumstances mentioned by Complainant and likewise supported by evidence leads the Panel to the conclusion that also the use of the disputed domain name has taken place in bad faith in the sense of the paragraph 4(a)(iii) and 4(b)(iv) of the Policy.
- that the disputed domain name is confusingly similar to the trademark in which Complainant has rights
- that Complainant has proved that Respondent has no rights or legitimate interests in the disputed domain name
- that the disputed domain name has been 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, <noprescriptionaccutane.com> be transferred to Complainant.
Dated: August 19, 2010