WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hoffmann-La Roche Inc. v. Private Person, Petr S Grishin
Case No. D2010-1235
1. The Parties
Complainant is Hoffmann-La Roche Inc. of Nutley, New Jersey, United States of America, represented by Lathrop & Gage LLP of United States of America.
Respondent is Private Person, Petr S Grishin of Moscow, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <accutanemed.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 27, 2010. On July 27, 2010, the Center transmitted by email to the Registrar a request for Registrar verification in connection with the disputed domain name. On August 2, 2010, the Registrar 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”).
The undersigned Panel has independently determined and agrees with the Center’s assessment that the Complaint is in formal compliance with the requirements of the Policy, the Rules, and 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 August 4, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 24, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 26, 2010.
The Center appointed Pedro W. Buchanan Smith as the sole panelist in this matter on September 2, 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.
This Panel further considers that the Complaint was properly notified to the registered domain name holder, as provided for in paragraph 2(a) of the Rules.
On July 27, 2010, the Center sent to the Registrar via e-mail a request to confirm that the domain name <accutanemed.com> would be placed in Registrar hold and registrar lock status and that the domain name would remain in such status until the administrative proceeding under the Policy is concluded. On August 2, 2010, the Center received via e-mail from the Registrar the confirmation that the domain name <accutanemed.com> had been placed on lock and would continue to be maintained as such, until the Registrar receives explicit instructions otherwise.
The Panel has not received any further requests from Complainant or Respondent regarding submissions or waivers, extensions of deadlines and the Panel has not found it necessary to request any further information, statements or documents from the Parties, nor the need as an exceptional matter, to hold any in-person hearings as necessary for deciding the Complaint, as provided for in paragraphs 12 and 13 of the Rules. Therefore, the Panel has decided to proceed under the customary expedited nature contemplated for this type of domain name dispute proceedings.
The language of this proceeding is English, pursuant to paragraph 11(a) of the Rules.
4. Factual Background
Based on the information provided by Complainant, and considering that the same was not disputed by Respondent, the following facts and circumstances are recognized within this proceeding:
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 is protected as a registered trademark for a dermatological preparation in the United States. ACCUTANE is registered to Complainant in the United States Patent and Trademark Office (“U.S.P.T.O.”), as of August 28, 1973 under Registration Number 966,924, having a first use date of November 27, 1972. A copy of the ACCUTANE certificate of registration was submitted as Exhibit 3. A copy of the TARR printout from the U.S.P.T.O. database showing the current status of the ACCUTANE registration was also submitted as Exhibit 4.
The mark ACCUTANE designates a dermatological preparation, namely, a pharmaceutical product indicated for the treatment and prevention of acne. For many years 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. As stated, Complainant has used the mark ACCUTANE for a dermatological preparation since November, 1972 in the United States. Sales of the ACCUTANE dermatological preparation in the United States have exceeded hundreds of millions of dollars.
As a result of such sales, advertising and promotion for Complainant’s dermatological preparation under the mark ACCUTANE, the product has acquired fame and celebrity, symbolizing the goodwill that Complainant has created in its mark ACCUTANE. Evidence of such fame in the form of unsolicited media attention, including newspaper and magazine articles, was submitted as Exhibit 5.
The parent company of Complainant owns the domain name <accutane.com>. When an Internet user types “www.accutane.com” in a web browser’s URL address window he or she is directed to the web site located at “www.rocheusa.com”, then for product information, to “http://www.gene.com/gene/products/information/accutane/,” through which Complainant’s customers obtain information as to the Accutane dermatological preparation product. Copies of the Whois record for the domain names <accutane.com> and <rocheusa.com> were submitted as Exhibit 6. A copy of the web site “http://www.gene.com/gene/products/information/accutane/”, administered by Genentech, Inc. a company affiliated with Complainant, and associated with the domain names <accutane.com> and <rocheusa.com>, as well as an excerpt from the Accutane medication guide were submitted as Exhibit 7. Accutane is still on sale in pharmacies in the United States.
The disputed domain name was registered on June 25, 2010. After learning of Respondent’s unauthorized registration of the disputed domain name incorporating the mark ACCUTANE, on July 14, 2010, Complainant, through its counsel, sent a letter by FedEx and by e-mail to Respondent’s e-mail address indicated in the Whois record for the disputed domain name. In the July 14 communication, counsel for Complainant advised Respondent that the registration of the disputed domain name infringed trademark rights of Complainant and requested that Respondent transferred the disputed domain name to Complainant. The letter sent by FedEx to Respondent was returned to Complainant’s attorneys as “incorrect address”. However, the letter transmitted by e-mail was, by all indications, received by Respondent. A copy of the written communication from counsel for Complainant to Respondent was submitted as Exhibit 8.
5. Parties’ Contentions
The disputed domain name, <accutanemed.com> contains the entire ACCUTANE trademark of Complainant. In light of Complainant’s registered mark ACCUTANE and the domain name <accutane.com>, owned by the parent company of Complainant, Respondent’s registration and use of the disputed domain name creates a strong likelihood of confusion as to source, sponsorship, association or endorsement by Complainant of the web site associated with the domain name <accutanemed.com>.
“Numerous Panel decisions have established that the addition of words, letters or numbers to a mark used in a domain name does not alter the fact that the domain name is confusingly similar to the mark …Generally, a user of a mark ‘may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it.’” 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23:50 (4th ed. 1998). Thus, the descriptive language added here, namely, “med” does not prevent the likelihood of confusion in this case. See America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004 citing Sporty’s Farm L.L.C. v. Sportsman’s Market, Inc., 202 F. 3d 489, 497-98 (2d. Cir. 2000).
The disputed domain name incorporates the whole of Complainant’s mark and adds the term “med.” The website associated with the disputed domain name offers Accutane product, and Respondent, through the site “www.canadian-medshop.com”, sells generic isotretinoin, while depicting Complainant’s Accutane package, in a 30, as well as 60 and 90 day supply, which, is against FDA regulations, as well as other third party pharmaceutical acne and other skin care products and other pharmaceutical products of Complainant’s competitors for sale without license or permission of any kind.
Respondent uses without authorization Complainant’s ACCUTANE mark in a copyright notice, as if it were a company name, which contains Complainant’s famous ACCUTANE mark in its entirety.
The disputed domain name is identical or confusingly similar to Complainant’s ACCUTANE trademark.
Respondent has no rights or legitimate interests in the domain name <accutanemed.com>. “Accutane” is not a word and has no valid use other than in connection with Complainant’s trademark. Complainant has not authorized Respondent to use its trademark ACCUTANE or to incorporate the trademark into any domain name or as a part of a copyright notice. Furthermore, Complainant has never granted Respondent a license to use the ACCUTANE mark. In fact, Respondent’s use of the disputed domain name indicates that the Respondent’s domain name was selected and is being used because of the goodwill of the ACCUTANE trademark. Moreover, Respondent has been commonly known by the disputed domain name pursuant to the Policy, paragraph 4(c)(ii).
Respondent, by use and registration of the disputed domain name, which contains Complainant’s ACCUTANE trademark in its entirety, seeks to capitalize on the reputation associated with Complainant’s ACCUTANE trademark. Furthermore, Respondent seeks to use that recognition to divert Internet users seeking Complainant’s web site to a web site wholly unrelated to Complainant. The web site associated with the domain name has no affiliation or connection whatsoever with Complainant and such uses of Complainant’s mark ACCUTANE is a clear indication of bad faith on the part of Respondent.
The panel in Justerini & Brooks Limited v. "Colmenar",, WIPO Case No. D2000-1308, in evaluating respondent’s legitimate rights and interests in the domain name <justeriniandbrooks.com> stated that: “[on] the evidence given the notoriety and distinctiveness of the JUSTERINI & BROOKS trademark, it is not one which another trader would legitimately choose unless the trader sought to: create an impression of association with complainant; create an impression of association with JUSTERINI & BROOKS products; attract business from complainant; misleadingly divert members of the public; and/or damage the reputation and business of complainant.”
Respondent’s appropriation and use of Complainant’s famous trademark is a clear attempt to create and benefit from consumer confusion regarding Respondent’s activities and Complainant’s bona fide business. As such, it is clear that Respondent has no rights or legitimate interests in the disputed domain name.
Respondent is using the disputed domain name to divert Internet users seeking more information about Complainant and the ACCUTANE dermatological preparation product to an unrelated web site which uses the Complainant’s famous trademark ACCUTANE without license or authorization of any kind.
Respondent’s use and incorporation of Complainant’s famous trademark ACCUTANE in the disputed domain name and as part of a copyright notice is evidence of Respondent’s intent to trade upon the reputation of Complainant’s ACCUTANE trademark. Hoffmann-La Roche Inc. v. Alisia Uzun, WIPO Case No. D2008-1138 citing Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847.
There is no bona fide offering of goods or services by Respondent. Respondent’s commercial activity undertaken through use of the domain name is neither fair use nor bona fide under the policy. The unauthorized appropriation of another’s trademark in a domain name and the commercial use of the corresponding website cannot confer rights or legitimate interests upon Respondent. See, e.g. America Online, Inc. v. Xianfeng Fu, WIPO Case No. D2000-1374 (“it would be unconscionable to find… a bona fide offering of services in a respondent’s operation of (its) web-site using a domain name which is confusingly similar to the complainant’s mark and for the same business”), cited in Hoffmann-La Roche Inc. v. Aneko Bohner, WIPO Case No. D2006-0629 and in Hoffmann-La Roche Inc. v. Samuel Teodorek, WIPO Case No. D2007-1814.
Respondent’s use of Complainant’s trademark is infringing. Under these circumstances, Respondent’s use of the domain name cannot be considered bona fide. See, e.g., Alta Vista Company v. Mr. James A. Maggs, NAF Claim No. FA0008000095545 (October 24, 2000).
The American Heritage Dictionary of the English Language (Third Edition, 1992) defines “bona fide” as “made or carried out in good faith,” “authentic” or “genuine.” The use by Respondent of marks identical and/or confusingly similar to valid, Federally-registered marks of another cannot constitute offering of services “in good faith” and certainly not “authentic” or “genuine,” especially since Respondent has no authorization from Complainant.
There is no evidence that Respondent is making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain. Respondent is trading on Complainant’s goodwill, and is using Complainant’s ACCUTANE mark in the disputed domain name <accutanemed.com>, in a copyright notice and in the redirected third party web site “www.canadian-medshop.com” through which products including isotretinoin of competitors to Complainant’s Accutane prescription drug product, and other pharmaceutical products of third parties are sold.
Respondent has no legitimate interest in the disputed domain name reproducing Complainant’s famous mark ACCUTANE, is in no way connected with Complainant, and is trading on Complainant’s famous mark ACCUTANE for commercial gain, all to the detriment of the rightful trademark owner, Complainant, and the possible harm of the purchasing public.
The website associated with the disputed domain name displays a photo of an ACCUTANE package.
Respondent’s bad faith in registering and using the disputed domain name is demonstrated by numerous facts. Specifically, Respondent’s true purpose in registering the disputed domain name which incorporates Complainant’s mark ACCUTANE in its entirety is to capitalize on the reputation of Complainant’s ACCUTANE mark by diverting Internet users seeking Complainant or its parent company to Respondent’s own web site, which reproduces the Complainant’s famous trademark without any permission and which solicits orders through use of a picture of Accutane package. Moreover, Respondent offers,, through the redirected site “www.canadian-medshop.com”, a generic form of isotretinoin, as well as other third party pharmaceutical products.
The bad faith of Respondent is clearly evident from the fact that: (a) “Accutane” is not a word, (b) Complainant’s mark ACCUTANE is an invented and coined mark that has an extremely strong reputation, and (c) there exists no relationship between Respondent and Complainant, and Complainant has not given Respondent permission to use its famous mark ACCUTANE in a domain name, or a part of a copyright notice, or to use it in any manner on Respondent’s web site.
By using the domain name <accutanemed.com> to redirect Internet users to the website “www.canadian-medshop.com” to sell competitive third party isotretinoin product, without permission or license of any kind, by using Complainant’s ACCUTANE trademark in a domain name, in a copyright notice, and by offering a third party generic form of Accutane while depicting Accutane package on its web site, Respondent has intentionally attempted to attract for financial gain Internet users to its web site by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s web site or the goods sold on or through Respondent’s web site, which are, in fact, third party products.
The use of the <accutanemed.com> domain name to promote sales of competitors’ products demonstrates bad faith use.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
The Panel considers that Respondent, by registering the disputed domain name with the Registrar (an Internet Corporation for Assigned Names and Numbers’ –ICANN– accredited domain name registrar), agreed to be bound by all terms and conditions of the Registration Agreement, and any pertinent rule or policy, and particularly agreed to be bound by the Policy (incorporated and made a part of the Registration Agreement by reference), which requests that proceedings be conducted according to the Rules and the “selected administrative dispute resolution service provider’s supplemental rules”, in the present case being the Supplemental Rules. Therefore, the dispute subject matter of this proceeding is within the scope of the above mentioned agreements and Policy, and this Panel has jurisdiction to decide this dispute.
Furthermore, the Panel considers that in the same manner, by entering into the above mentioned Registration Agreement, Respondent agreed and warranted that neither the registration of its domain name nor the manner in which it intended to use such domain name would directly or indirectly infringe the legal rights of a third party, and that as a result of a dispute under the Policy, Respondent’s domain name registration services might be cancelled or transferred.
The Panel also particularly considers that it is essential to dispute resolution proceedings that fundamental due process requirements be met.
Such requirements include that the Parties, and particularly Respondent in this case, be given adequate notice of the proceedings; that the Parties have a fair and reasonable opportunity to exercise their rights and to present their respective cases; that the composition of this Panel be properly made and the Parties be notified accordingly; and that both Parties be treated with equality in these administrative proceedings.
In this case, the Panel is satisfied that these proceedings have been carried out by complying with such elemental due diligence requirements, and particularly contemplating the notification of the filing of the Complaint and the initiation of these proceedings giving Respondent a right to respond.
Paragraph 4(a) of the Policy directs that Complainant must prove the presence of 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 Complainant has rights; and (ii) that Respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
This Panel finds that Respondent’s domain name <accutanemed.com> is confusingly similar to Complainant’s well-known ACCUTANE trademark.
The domain name <accutanemed.com> wholly comprises Complainant’s ACCUTANE trademark, with the addition of the word “med”. The descriptive language added here, namely, “med”, in composition with Complainant’s trademark, makes the domain name <accutanemed.com> confusingly similar to Complainant’s ACCUTANE trademark.
Furthermore, the addition of the gTLD “.com” is not a distinctive element, it is just a necessary element required for the registration of a first level domain name.
B. Rights or Legitimate Interests
This Panel finds, from the information and facts that were analyzed and from the lack of evidence to the contrary, that there is no indication that Respondent has any rights or legitimate interests in connection with the disputed domain name; that the disputed domain name is being used to intentionally misdirect to Respondent’s website visitors who attempt to visit Complainant’s website; that Respondent has not used nor prepared to use the <accutanemed.com> domain name in connection with any good faith offering of goods or services as contemplated under paragraph 4(c)(i) of the Policy; nor that Respondent is commonly known by the domain name as contemplated under paragraph 4(c)(ii) of the Policy; nor that 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 as contemplated under paragraph 4(c)(iii) of the Policy. The Panel therefore finds that Respondent has no rights or legitimate interests in respect of the domain name under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds, from the information and facts that were analyzed, and from the lack of evidence to the contrary, that the registration and use of the domain name <accutanemed.com> by Respondent is in bad faith pursuant to paragraph 4(b)(iv) of the Policy, in particular but without limitation, in view of the fact that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s trademark ACCUTANE, as to the source, sponsorship, affiliation, or endorsement of the website “www.accutanemed.com”.
Therefore, and in consideration of the Complaint’s compliance with the formal requirements for this domain name dispute proceeding, to the factual evidence and legal contentions that were submitted, to the conclusive confirmation of the presence of each of the elements contemplated in paragraph 4(a)(i), (ii) and (iii) of the Policy, and on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and other applicable rules and principles of law, as directed by paragraphs 14(a) and (b) and 15(a) of the Rules, this Panel orders that the domain name <accutanemed.com> be transferred to Complainant.
Pedro W. Buchanan Smith
Dated: September 16, 2010