WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hoffmann-La Roche Inc. v. Jason Barnes
Case No. D2010-1134
1. The Parties
Complainant is Hoffmann-La Roche Inc. of United States of America represented by Lathrop & Gage LLP of United States of America.
Respondent is Jason Barnes of United States of America.
2. The Domain Names and Registrar
The disputed domain names <genericaccutane.net> and <orderaccutane.org> are registered with Dotster, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 8, 2010. On July 9, 2010, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the disputed domain names. On July 9, 2010, Dotster, Inc. transmitted by email to the Center its verification response confirming 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 Respondent of the Complaint, and the proceedings commenced on July 14, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 3, 2010. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 4, 2010.
The Center appointed Timothy D. Casey as the sole panelist in this matter on August 6, 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 has used the trademark ACCUTANE (“the Accutane mark”) since November 27, 1972 for a dermatological preparation, namely, a pharmaceutical product indicated for the treatment and prevention of acne. The ACCUTANE mark was registered on August 28, 1973, Reg. No. 966,924. For many years the ACCUTANE mark has been extensively promoted in print advertisements in medical journals, promotional materials, packaging, medical informational materials, television advertising, and direct mailings. Sales of the Accutane dermatological preparation in the United States have exceeded hundreds of millions of dollars. As a result of such sales, the product has resulted in unsolicited media attention, including newspaper and magazine articles.
The disputed domain name <genericaccutane.net> was created on February 24, 2010. This domain name resolves to a website that describes and advertises an isotretinion product. Selecting the “buy now” button takes users to a “www.rx-u.com” online drug store that appears to sell Accutane in various doses, along with some number of free Viagra pills. The disputed domain name <orderaccutane.org> was created on February 24, 2010. This domain name resolves to a website that also describes the use of isotretinion and includes links that take users to the same “www.rx-u.com” online drugstore where Accutane is sold in the same manner as noted.
5. Parties’ Contentions
Complainant contends that as the result of sales of the Accutane dermatological preparation, advertising and promotion, the ACCUTANE mark is well-known. Complainant first notified Respondent of its rights in the ACCUTANE mark in March 2010, demanding that Respondent cease and desist from further use of the ACCUTANE mark and transfer the disputed domain names to Complainant. Complainant contends that a letter sent via certified mail to Respondent’s addresses was returned to Complainant’s attorneys as “Not Deliverable as addressed – Unable to forward”. The letter was subsequently re-sent by certified mail and by e-mail to the Respondent on May 2010, but did not generate a response from Respondent. Complainant also notes that the letters transmitted by e-mail to Respondent could not be delivered because the recipient email server was unavailable or busy. Based on the above, Complainant contends that Respondent has supplied false contact information and notes that such action is evidence of bad faith.
Complainant contends that the disputed domain names contain the entire ACCUTANE mark. Complainant contends that Respondent’s registration and use of the disputed domain names creates a strong likelihood of confusion as to source, sponsorship, association or endorsement of Respondent’s websites associated with the disputed domain names. Complainant further contends that the addition of descriptive language added to Respondent’s domain names, namely “generic” and “order,” does not alter the fact that the domain names are confusingly similar to the ACCUTANE mark, as prior UDRP panels have established.
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain names. Complainant has not authorized Respondent to use the ACCUTANE mark or to incorporate the ACCUTANE mark into any domain names or in any trade name or as a part of copyright notices. Complainant contends that the disputed domain names use the ACCUTANE mark as part of copyright notices, as if they were company names, and redirect consumers to sites offering competitive skin care products of competitors, as well as Accutane or a generic isotretinoin product. Complainant notes that such activity is infringing, and likely to confuse purchasers, all to the damage of Complainant.
Complainant contends that Respondent’s sales of ACCUTANE or any other isotretinoin product over the Internet and without a prescription violates the iPLEDGE Program of the United States Food and Drug Administration (FDA). Complainant contends that Respondent offers up to a 90 day supply through the Internet and without a prescription in violation of FDA regulations. Complainant further contends that these actions undertaken by Respondent may lead a consumer to believe that Respondent is the source of the Accutane product and related information. Complainant also contends that Respondent’s use of the ACCUTANE mark in the disputed domain names and associated websites may lead consumers to believe that the Respondent’s websites are affiliated with or sponsored by Complainant and do not follow the iPLEDGE Program.
Complainant contends that Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services. Complainant further contends that Respondent is trading on Complainant’s goodwill and Respondent is using the disputed domain names to divert users to unrelated websites which use Complainant’s ACCUTANE mark without license or authorization of any kind. Complainant further contends Respondent’s websites make use of the Accutane mark without permission of Complainant and such sales from Respondent’s websites violate the iPLEDGE Program and other FDA regulations.
Complainant contends that the disputed domain names were registered in bad faith to capitalize on the reputation of the ACCUTANE mark. Complainant contends that the disputed domain names divert Internet users seeking Complainant’s websites to Respondent’s own websites, which redirect purchasers for sale which solicit orders for third party pharmaceutical products, and possibly also Accutane, while depicting Complainant’s packaging.
Complainant requests the disputed domain names be transferred to Complainant.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
In the absence of any reply and the default by Respondent, the discussion and findings will be based upon Complainant’s contentions and any reasonable position that can be attributable to Respondent.
Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the panel finds that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
All three elements must be present before Complainant can succeed in this administrative proceeding under the Policy.
A. Identical or Confusingly Similar
As noted above, Complainant owns a registered trademark in the name ACCUTANE. The disputed domain names used by Respondent fully and completely incorporate the ACCUTANE mark. The fact that the disputed domain names further include certain descriptive phrases associated with Respondent’s use of the disputed domain names to market and redirect consumers to websites that sell competitive products, as well as possibly Complainant’s products, is of no merit.
The Panel finds the disputed domain names to be confusingly similar to the ACCUTANE mark and this element of the Policy to be met by Complainant.
B. Rights or Legitimate Interests
Respondent does not allege it has any rights or legitimate interests in the disputed domain names or any parts thereof. Respondent has not been authorized by Complainant to utilize the ACCUTANE mark in the disputed domain names. In addition, Complainant has not authorized Respondent to use the ACCUTANE mark in any trade name or as part of copyright notices. Respondent is not personally identified with, or commonly known by, the term accutane, other than redirecting consumers to websites that sell competitive products and possibly Accutane products. The Accutane name itself is made up and has no other meaning. Respondent’s use is clearly commercial and does not appear to constitute any form of fair use. Furthermore, Respondent’s apparent offer for sale of prescription drugs subject to and in violation of FDA regulations cannot form the basis for a legitimate interest.
The Panel finds that Respondent does not have any rights or legitimate interests in the disputed domain names and this element of the Policy to be met by Complainant.
C. Registered and Used in Bad Faith
Respondent is seemingly in the business of soliciting orders for third party pharmaceutical products, including isotretinoin products. It is highly unlikely that Respondent was not aware of the Accutane mark, which has been in use since 1972 and federally registered in the United States since 1973, prior to registering the disputed domain names. One of Respondent’s websites actually acknowledges that Accutane is made by Complainant. Respondent has used the disputed domain names for the bad faith purpose of driving commercial business to its websites, where users are subsequently driven to other commercial businesses that sell third party pharmaceutical products, and possibly Accutane products. In addition, Respondent is blatantly violating the iPLEDGE Program of the FDA and other FDA regulations. Respondent’s actions potentially jeopardize the health of consumers. The use of the ACCUTANE mark without license or permission from Complainant has the potential to create confusion in consumers and make consumers believe that it is Complainant, instead of Respondent, who is violating the iPLEDGE Program and possibly leading to the harm of the consumers.
The fact that the initial mail correspondence was returned as not deliverable as addressed, and the email messages could not be delivered, while noteworthy, is not necessarily fatal to Respondent’s case.
The Panel finds that Respondent registered and used the disputed domain names in bad faith. This element of the Policy has been met by Complainant.
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 <genericaccutane.net> and <orderaccutane.org> be transferred to Complainant.
Timothy D. Casey
Dated: August 20, 2010