World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Roche Products Limited v. Private Whois Service

Case No. D2010-1861

1. The Parties

The Complainant is Roche Products Limited of Welwyn Garden City, United Kingdom of Great Britain and Northern Ireland, represented by Lathrop & Gage LLP, United States of America.

The Respondent is Private Whois Service of Nassau, Bahamas.

2. The Domain Names and Registrar

The disputed domain names <buy-accutane30mg.com> and <buy-accutane40mg.com> are registered with Internet.bs Corp.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 2, 2010. On November 3, 2010, the Center transmitted by email to Internet.bs Corp. a request for registrar verification in connection with the disputed domain names. On November 4, 2010, Internet.bs Corp. 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 November 11, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 1, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 3, 2010.

By email dated November 2, 2010, the Complainant, informed the Center that, while submitting via email the Complaint to the Center and to the Respondent according to the Supplemental Rules, it received delivery failure notifications related to the emails to the Respondent at the addresses listed in WhoIs. Nevertheless, the Panel considers that the Complainant discharged of its obligations under paragraph 4 of the Supplemental Rules, while in accordance with paragraph 4(a) of the Rules, it is the Center’s obligation to forward the Complaint electronically to the Respondent together with the instructions.

The Center appointed Beatrice Onica Jarka as the sole panelist in this matter on December 9, 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 in this administrative proceeding is Roche Products Limited, a company duly organized under the laws of United Kingdom, with offices in Welwyn Garden Park city, United Kingdom of Great Britain and Northern Ireland, member of the Roche Group.

The Complainant together with its affiliated companies is one of the leaders in research and development of pharmaceutical and diagnostic products and has global operations.

One of its products is Accutane, a brand name for isotretinoin, a vitamin A analog used in the treatment of acne and other conditions. The product has been sold well since about 1972 and has been extensively promoted in print advertisements in medical journals, promotional materials, packaging, medical informational materials, and television advertising and direct mailings.

The Complainant owns the trademarks ROACCUTANE and ACCUTANE which are registered worldwide with a first use date recorded in 1972. The parent company owns the domain name <accutane.com>, which refers visitors to the website “www.rocheusa.com/products” for information about Accutane.

The disputed domain names were registered on August 3, 2010. Nothing is known to this Panel about the Respondent except for the information incorporated in the registration of the disputed domain names.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

- The trademark ROACCUTANE is in use since 1972;

- The disputed domain names at issue contain the entire ACCUTANE trademark and part of the ROACCUTANE trademark;

- The Respondent’s use of the disputed domain names creates a strong likelihood of confusion as to the source, sponsorship, association and endorsement of the Respondent’s associated websites to the disputed domain names by the Complainant;

- The disputed domain names incorporate the whole of the ACCUTANE mark of the Complainant, so similar to the Complainant’s mark ROACCUTANE, and adds the terms “buy”, “30”, or “40” and “mg”;

- The Respondent’s websites under the disputed domain names offer Accutane product, but in fact, through link sites “www.buy-cheap-online-pharm.com” and “www.canadianrxstore.net”, both of which depict brand Accutane packaging, sells third party generic isotretinoin (not ACCUTANE brand), while depicting the Accutane package of Roche, in a 30, as well as 60 and 90 day supply;

- Depicting the Accutane package of Roche, in a 30, as well as 60 and 90 day supply is against FDA regulations, and other pharmaceutical products of Complainant’s competitors for sale, without license or permission of any kind from the Complainant, the trademark owner.

- The sales site for isotretinoin infringe the strict rules of iPLEDGE, e.g., multiple pregnancy tests and birth control methods, by allowing “cyber doctor” prescriptions for dispensing Accutane, who never have personal visits with web customers ordering off the site and are unable to confirm compliance with conditions such as pregnancy testing and birth control usage under iPLEDGE, all to the possible harm of the purchasing public;

- brand packaging of the Complainant is depicted for sale through the Respondent’s sites, on link sites which actually offer competitive third party product(s) including isotretinoin in more than a 30 day supply of isotretinoin, which is against FDA regulations (and other pharmaceutical products of third party competitors of the Complainant, activity is infringing, and likely to confuse purchasers, all to the damage of the Complainant and the possible harm of the purchasing public;

-the Respondent, by use and registration of the disputed domain names, seeks to capitalize on the reputation associated with such trademarks of the Complainant;

- the Respondent seeks to use that recognition to divert Internet users seeking websites of a member of the Roche group as to ACCUTANE or ROACCUTANE to the Respondent’s websites, wholly unrelated to the Complainant.;

- Such uses of the mark ACCUTANE nearly identical to the mark ROACCUTANE, are clear indications of bad faith on the part of the Respondent, and also , do not comply with the iPLEDGE program, the only permissible way that ACCUTANE or any other isotretinoin product may be sold into the United States;

- the Respondent's unauthorized use of the disputed domain names through which to solicit sales of third party competitive products for treating acne through domain names making use of the ACCUTANE mark, very similar to the ROACCUTANE mark, without permission from the trademark owner, renders such activities on and through the instant domain names not a bona fide offering of goods and services under the Policy, paragraph 4(c)(i);

- the Respondent's purpose in registering the disputed domain names is to capitalize on the reputation of the ACCUTANE mark by diverting Internet users seeking the Roche group website(s) to the Respondent's own websites, which contain the ACCUTANE mark without any permission and which, solicit orders through use of a picture of ACCUTANE packaging, actually selling a generic form of isotretinoin, as well as other third party pharmaceutical products through the linked sites “www.buy-cheap-online-pharm.com” and “www.canadianrxstore.net”.

- The bad faith of the Registrant is clearly evident from the fact that:

(a) “accutane” is not a common word.

(b) The Complainant's mark ACCUTANE is an invented and coined mark that has an extremely strong reputation in North America.

(c) Such sales are in clear violation of the iPLEDGE program, which is the only permissible way isotretinoin products may be sold into the United States of America. Such sales also violate the language in the FDA-approved product information, which specifically prohibits internet sales of Accutane, and in excess of a one month supply of isotretinoin.

(d) By using the disputed domain names to sell third party generic isotretinoin product(s), without permission or license of any kind, under the ACCUTANE trademark in domain names and through the Respondent’s websites on link sites “www.buy-cheap-online-pharm.com” and “www.canadianrxstore.net”, Respondent has intentionally attempted to attract for financial gain Internet users to the Respondent's websites by creating a likelihood of confusion with the ACCUTANE mark, and the nearly identical ROACCUTANE mark, as to the source, sponsorship, affiliation or endorsement of the Respondent's websites or the goods sold on or through the Respondent's websites, which are, in fact, commercial providers of third party pharmaceutical product(s).

(e) The Respondent's websites have no legitimate business connection with the Complainant or the Accutane or Roaccutane isotretinoin dermatological preparations. The Complainant has never granted the Respondent permission or a license of any kind to use its trademark ACCUTANE in domain names or in connected websites to sell third party competitive isotretinoin products.

(f) Use of the disputed domain names to promote sales of competitors’ products through use of the famous ACCUTANE mark of Roche, so similar to the ROACCUTANE mark, demonstrates bad faith use.

- The Complainant requests that the disputed domain names be transferred to it.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

A.1.The Complainant holds rights in the ROACCUTANE and ACCUTANE trademarks.

The Complainant has provided sufficient evidence showing that it is the owner of the ROACCUTANE and ACCUTANE trademarks. The Panel is satisfied in considering that the Complainant holds rights in the ROACCUTANE and ACCUTANE trademarks.

A.2. The disputed domain names are confusingly similar with the Complainant’s ROACCUTANE and ACCUTANE trademarks.

The disputed domain names incorporate the whole of the Complainant’s ACCUTANE mark, so similar to the Complainant’s mark ROACCUTANE, and add the terms “buy”, “30”, or “40” and “mg.” To these combinations of words the disputed domain names add the gTLD suffix “. com”.

Prior UDRP panels have recognized many times that the incorporation of a trademark in its entirety in a domain name may generally be sufficient to establish that such a domain name is identical or confusingly similar to the Complainant’s registered mark. See EAuto LLC v. Triple S Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047 and F. Hoffmann-LaRoche AG v. George McKennitt, WIPO Case No. D2005-1300, Hoffmann-La Roche Inc. v. Patsy Hail, WIPO Case No. D2008-1343.

Moreover, the addition of terms as “buy”, “30”, or “40” and “mg” to the ACCUTANE mark does not mitigate the confusing similarity between the disputed domain names and the Complainant’s trademark. The said terms are descriptive in scope, reflecting that the Respondent’s websites under the disputed domain names are linked to different websites selling Accutane drug. Consequently, the addition of these terms to the Complainant’s trademarks does not render the disputed domain names different from the Complainant’s trademarks. Rather, it strengthens the association with the Complainant registered trademarks by causing Internet users to think that it relates to the ACCUTANE drug. See Hoffmann-La Roche Inc. v. Patsy Hail, WIPO Case No. D2008-1343, Rhino Entertainment Company v. DomainSource.com, WIPO Case No. D2006-0968 and SurePayroll, Inc. v. Texas International Property Associates, WIPO Case No. D2007-0464. Roche Products Limited v. Domains by Proxy, Inc. / Christian Hunter, WIPO Case No. D2010-1892.

It is also now well established that the confusing similarity thus created is not negated by the presence in a domain name of suffixes such as the gTLD suffix “.com”.

As the Complainant clearly has rights in the ACCUTANE and ROACCUTANE trademarks as their owner and the disputed domain names substantially incorporate these trademarks, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademarks and that the Complainant has accordingly established the first of the three elements that it must prove.

B. Rights or Legitimate Interests

The Complainant’s trademarks ROACCUTANE and ACCUTANE are not common words and have no valid use other than in connection with the Complainant’s brands of isotretinoin acne medication.

There is no evidence that the Complainant has authorized the Respondent to use the mark ACCUTANE or to incorporate the ACCUTANE portion of the ROACCUTANE trademark into any domain name. Furthermore, there is no evidence that the Complainant has ever granted Respondent a license to use its mark ACCUTANE or the ACCUTANE portion of its mark ROACCUTANE mark in any manner. Also neither the Respondent nor its websites have been commonly known by the disputed domain names pursuant to the Policy, paragraph 4(c)(ii).

The websites under the disputed domain names refers to direct sales of Accutane. According to the evidence provided by the Complainant, the sales site for isotretinoin infringe the strict rules of iPLEDGE, e.g., multiple pregnancy tests and birth control methods, by allowing “cyber doctor” prescriptions for dispensing Accutane, who never have personal visits with web customers ordering off the site and are unable to confirm compliance with conditions such as pregnancy testing and birth control usage under iPLEDGE, all to the possible harm of the purchasing public.

Moreover, according to the evidences provided by the Complainant, brand packaging of the Complainant is depicted for sale through the Respondent’s sites, on link sites which actually offer competitive third party product(s) including isotretinoin and other pharmaceutical products of third party competitors of the Complainant, activity which is infringing, and likely to confuse purchasers, all to the damage of the Complainant and also the possible harm of the purchasing public.

Such use cannot be considered bona fide offering of goods or services, according to the Policy.

Moreover, such use demonstrates the Respondent’s lack of a legitimate noncommercial interest in, or fair use of, the domain names. Hoffmann-La Roche Inc. v. Onlinetamiflu.com, WIPO Case No. D2007-1806, citing Pfizer Inc. v. jg a/k/a/ Josh Green, WIPO Case No. D2004-0784.

The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that that the Complainant has accordingly established also the second of the three elements that it must prove.

C. Registered and Used in Bad Faith

The record in this case indicates clear the Respondent's bad faith registration and use of the disputed domain names. Based on the evidences provided in the case file and in the absence of the Respondent’s response, the Panel is persuaded by the Complainant’s contentions that:

- the Complainant’s mark ACCUTANE is not a common word but an invented and coined well-known mark that has strong North American reputation;

- there exists no relationship whatsoever between the Respondent and the Complainant, and the Complainant has not given the Respondent permission to use in any way its trademarks in a domain name;

- the Respondent was likely aware of the ROACUTANE and ACCUTANE trademarks, and seeks to divert Internet users to its website for its own commercial gain, all to the confusion of the public and detriment of the Complainant, the trademark owner;

- the sales available on the websites under the disputed domain names are in clear violation of the iPLEDGE program, which is the only permissible way isotretinoin products may be sold into the United States of America. Such sales also violate the language in the FDA-approved product information, which specifically prohibits internet sales of ACCUTANE, and in excess of a one month supply of isotretinoin.

- by using the disputed domain names to sell third party generic isotretinoin product(s), without permission or license of any kind, under the ACCUTANE trademark in domain names and through the Respondent’s websites on link sites “www.buy-cheap-online-pharm.com” and “www.canadianrxstore.net”, the Respondent has intentionally attempted to attract for financial gain Internet users to the Respondent's websites by creating a likelihood of confusion with the ACCUTANE mark, and the nearly identical ROACCUTANE mark, as to the source, sponsorship, affiliation or endorsement of the Respondent's websites or the goods sold on or through the Respondent's websites, which are, in fact, commercial providers of third party pharmaceutical product(s).

It is the Panel’s opinion that, by registering and using the disputed domain names, the Respondent has sought to profit from and exploit the Complainant's mark in violation of the Policy.

Accordingly, the Panel finds that the Complainant has satisfied all the requirements of paragraph 4(a)(iii) of the Policy.

7. Decision

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 <buy-accutane30mg.com> and <buy-accutane40mg.com> be transferred to the Complainant.

Beatrice Onica Jarka
Sole Panelist
Dated: December 23, 2010

 

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