WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hoffmann-La Roche Inc. v. Eugeniy Borodin
Case No. D2010-1091
1. The Parties
The Complainant is Hoffmann-La Roche Inc. of Nutley, New Jersey, United States of America, represented by Lathrop & Gage LLP, United States of America (hereinafter “USA”).
The Respondent is Eugeniy Borodin of Moscow, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <accutaneau.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 30, 2010. On July 1, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On July 1, 2010, eNom 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”).
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 July 12, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was initially set at August 1, 2010, and subsequently extended to August 4, 2010. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on August 17, 2010.
The Center appointed Alvaro Loureiro Oliveira as the sole panelist in this matter on August 17, 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 Hoffmann-La Roche Inc. (“Roche”) is a company based in the United States of America.
The Complainant, together with its affiliated companies, is one of the leading researchers and developers of pharmaceutical and diagnostic products in the world. The ACCUTANE mark of the Complainant is protected as a trademark for a dermatological preparation in the United States. Proof of this allegation was presented.
As evidenced in the documents attached to the Complaint, the Complainant's mark ACCUTANE was extensively promoted, without limitation, in print advertisements, in medical journals, promotional materials, packaging, medical informational materials, television advertising, and direct mailings.
The mark ACCUTANE has acquired fame and celebrity, symbolizing the goodwill that the Complainant has created in its mark. Evidence of such fame in the form of unsolicited media attention, including newspaper and magazine articles, was duly presented.
The parent company of the Complainant owns and has registered the domain name <accutane.com>. Elements proving this allegation were duly presented.
5. Parties’ Contentions
Before starting this proceeding, the Complainant tried to contact the Respondent through a cease and desist letter, sent both by FedEx and by e-mail, in an attempt to obtain the voluntary transfer of the disputed domain name to its control.
Although sent to the address registered in the WhoIs record for the disputed domain name, the FedEx package was returned undelivered, with the indication of incorrect address. The e-mail, though, was apparently successful as no contrary message was received.
The Respondent nevertheless did not answer this message.. The absence of any possible settlement led to the filing of this Complaint, according to the UDRP proceeding.
The domain name <accutaneau.com> leads to a web page selling the Complainant’s products marked ACCUTANE. This commercialization is apparently illegal as the selling of Accutane through the Internet is expressly forbidden by the FDA (US Food and Drug Administration). Besides, although the Respondent is seated in the Russian Federation, the site is or leads to the conclusion that it is – based in Australia,, hence the “au” following the ACCUTANE trademark in the disputed domain name.
The Complainant argues that all the elements of the Policy are met, namely that the disputed domain name is identical or confusingly similar to its ACCUTANE mark, that the Respondent has no rights or legitimate interests in the disputed domain name, and that the disputed domain name was registered and is used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The domain name <accutaneau.com> is, indeed, confusingly similar to the ACCUTANE trademark.
The Complainant, for its part, has presented considerable evidence of use and ownership of the mark ACCUTANE in the USA, besides substantial evidence of the renown of the ACCUTANE mark.
The fact that letters “au” were added to the mark in the composition of the disputed domain name does not avoid the confusion. Additionally, the web page shows the products manufactured and sold by the Complainant and includes at the footer of the website the copyright notice “ © Accutane Australia”. The addition of the letters “au”, a common abbreviation for Australia, is insufficient to dispel the risk of confusing similarity and may instead give rise to the false impression that the web page appearing at the disputed domain name is an authorized seller of the Complainant’s goods in that country.
Given the above, the Panel concludes that the disputed domain name is confusingly similar with the registered mark of the Complainant.
B. Rights or Legitimate Interests
Given the clear evidence on the present record, the Panel finds that the Complainant has established prima facie that the Respondent has no rights or legitimate interests in the disputed domain name. Additionally, the Panel finds that the Respondent cannot claim to have been using the trademark without knowing the Complainant’s rights to it.
Moreover, a visit to the domain name <accutaneau.com> leads to a web page selling the product manufactured by the Complainant – this commercialization apparently being irregular, as those goods are not supposed to be sold overss the Internet. In addition, the web page leads the visitor to conclude that it is based in Australia – the “au” following the mark and the clear mention “Accutane Australia. Treat acne problems with Accutane” – whilst the Respondent is based in the Russian Federation. In the Panel’s view, this, among other facts, proves that the Respondent’s interests cannot have been legitimate.
The Panel, thus, finds for the Complainant under the second element of the Policy.
C. Registered and Used in Bad Faith
The facts outlined in items A and B above can also be used to evidence the Respondent’s bad faith in obtaining and using the disputed domain name.
As mentioned, the Respondent did not respond to the attempt of the Complainant to settle the matter amicably, nor has it responded to this Complaint. This behavior has been considered to be a factor indicative of bad faith in registering and using a domain name in several previous UDRP disputes,and in fact, supports a finding that the disputed domain name was registered in bad faith.
In addition, the Respondent’s web site sells the Complainant’s products marked ACCUTANE, even though such commercialization is expressly forbidden by the FDA. The web site shows extensive comments on the Complainant’s product, its uses and even cautions and side effects. The site clearly intends to pass as an official one, or at least one that has been authorized by the trademark owner – the Complainant.
This can be seen as clear evidence that the Respondent wishes to give an overall impression that the disputed domain name leads to an official web site, which is not true. This attempt to mislead consumers for commercial gain is also evidence of bad faith from the Respondent.
All the points above lead to the conclusion by this Panel that the Respondent was fully aware of the Complainant and that the Respondent registered and is using the disputed domain name in bad faith.
The Panel finds that the Complainant has also proved the third element of the Policy
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 <accutaneau.com> be transferred to the Complainant.
Alvaro Loureiro Oliveira
Dated: September 3, 2010