WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Roche Products Limited v. SalesMaverick.com
Case No. D2010-1863
1. The Parties
The Complainant is Roche Products Limited of United Kingdom of Great Britain and Northern Ireland represented by Lathrop & Gage L.C. of United States of America.
The Respondent is SalesMaverick.com of North Carolina, United States of America.
2. The Domain Names and Registrar
The disputed domain names <accutaneexposed.com> and <shockingaccutanereport.com> are registered with GoDaddy.com, Inc.
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 GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On November 3, 2010, GoDaddy.com, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 9, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 13, 2010.
The Center verified that the Complaint amended 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 15, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 5, 2010. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on December 6, 2010.
The Center appointed Beatrice Onica Jarka as the sole panelist in this matter on December 10, 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 at Welwyn Garden Park, United Kingdom, and a 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, 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/portal/usa/products” for information about Accutane.
The disputed domain names had been registered on April 24, 2010. Nothing is known about the Respondent except for the information incorporated in the registration of the disputed domain name.
5. Parties’ Contentions
The Complainant asserts that:
- The disputed domain names contain the entire ACCUTANE trademark of the Complainant.
- The Respondent's registration and use of the disputed domain names creates a strong likelihood of confusion as to source, sponsorship, association or endorsement of the Respondent's web sites associated with its disputed domain names by the Complainant.
- The cease and desist letter sent to the Respondent on May 17, 2010, by the Complainant remained without effect.
- The disputed domain names incorporate the whole of the ACCUTANE mark of the Complainant, which is also similar to the Complainant’s mark ROACCUTANE, and add the terms “exposed”, “shocking” and “report.”
- The Respondent’s sites offer third party pharmaceutical skin care products of Complainant’s competitors for sale, through linked sites including “www.acne-treatment.exposedskincare.com”, “www.vilantae.com”, “www.topacneproducts.org”, “www.proactiv.com”, “www.acnetreatmentsonline.com” and “www.exposedskincare.com” without license or permission of any kind from the Complainant.
- The Respondent is responsible for the sales from such competitive commercial links listed on the parked sites provided by GoDaddy.com, Inc.
- The disputed domain names are identical or confusingly similar to the ACCUTANE and ROACCUTANE marks within the meaning of the Policy, paragraph 4(a)(i).
- The Respondent has no rights or legitimate interests in the disputed domain names.
- “Roaccutane” and “Accutane” are not dictionary words and have no valid use other than in connection with Complainant’s brands of isotretinoin acne medication.
- The Complainant has not authorized the Respondent to use the mark ACCUTANE or to incorporate the ACCUTANE portion of the ROACCUTANE trademark into any domain name, and has never granted the Respondent a license to use its mark ACCUTANE or the ACCUTANE portion of its mark ROACCUTANE mark in any manner.
- Based upon the Respondent's web sites, it is clear that neither the Respondent nor its web sites have been commonly known by the disputed domain names pursuant to the Policy, paragraph 4(c)(ii).
- The Respondent's use of the disputed domain names is purely disreputable. The Respondent's disputed domain names resolve to parked pages with links to web sites which offer competitive acne products of third party competitors of the Complainant. Such activity is infringing and likely to confuse purchasers, all to the damage of the Complainant and also may lead consumers to believe that the disputed web sites reached and/or the linked sites are sites owned and/or operated by the Complainant.
- The Respondent, by use and registration of the disputed domain names, seeks to capitalize on the reputation associated with such trademarks of the Complainant.
- Furthermore, the Respondent seeks to use that recognition to divert Internet users seeking a web site of a member of the Roche group concerning ACCUTANE or ROACCUTANE to Respondent’s web sites, wholly unrelated to Roche. Such uses of the mark ACCUTANE of the Complainant, nearly identical to its mark ROACCUTANE, are clear indications of bad faith on the part of the Respondent.
- The Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services.
- There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names without intent for commercial gain as the disputed domain names containing the mark ACCUTANE are being used to promote acne drugs of the competitors of Complainant and to sell such products through linked sites.
- The Respondent registered and is using the domain names in bad faith
- The Respondent’s bad faith is clearly evident from the fact that:
(a) “accutane” is not a dictionary word.
(b) The mark ACCUTANE is an invented and coined mark that has an extremely strong reputation in North America.
(c) By using the disputed domain names to sell competitive acne products of third party competitors, without permission or license of any kind, by use of the ACCUTANE trademark, which is also similar to the ROACCUTANE mark, in the domain names, the Respondent has intentionally attempted to attract for financial gain Internet users to the Respondent's web sites 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 web sites or the goods sold on or through the Respondent's web sites, which are, in fact, sold by commercial providers of third party pharmaceutical product(s).
(d) The Respondent's web sites have no legitimate business connection with Complainant or the ACCUTANE or ROACCUTANE isotretinoin dermatological preparations. The Complainant has never granted Respondent permission or a license of any kind to use its trademark ACCUTANE in domain names or in connected web sites through which to sell third party skin care products.
(e) Use of the disputed domain names to promote sales of competitors’ products through use of the famous ACCUTANE mark of the Complainant, also similar to its ROACCUTANE mark, demonstrates bad faith use.
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 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 ACCUTANE mark, which is also similar to the Complainant’s mark ROACCUTANE, and add the terms “exposed”, “shocking” and “report.”. To these combinations of words the disputed domain names also add the gTLD suffix “com”.
Prior WIPO panels have recognized that the incorporation of a trademark in its entirety in a domain name may be sufficient to establish that such a domain name is identical or confusingly similar to the complainant’s registered mark. See EAuto, L.L.C. 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; and Hoffmann-La Roche Inc. v. Patsy Hail, WIPO Case No. D2008-1343.
Moreover, the addition of such terms as “exposed”, “shocking” and “report” 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, as the Respondent’s websites under the disputed domain names are apparently, despite of being parked free by the registrar, linked to different websites, some of them referring to acne mediation sales, acne medication side effects, law suits or to Accutane injury law suits. 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’s registered trademarks by having people think that it relates to the Accutane drug. See Hoffmann-La Roche Inc. v. Patsy Hail, supra; Rhino Entertainment Company v. DomainSource.com, WIPO Case No. D2006-0968 and SurePayroll, Inc. v. Texas International Property Associates, WIPO Case No. D2007-0464.
It is also now well established that the confusing similarity thus created is not negated by the presence in the 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, 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. From the WhoIs data results it also appears that neither Respondent nor its web sites have been commonly known by the disputed domain names pursuant to the Policy, paragraph 4(c)(ii). Despite being properly notified the Respondent had not provided any evidence to rebut the showing of the Complainant and the logical inferences of the case file.
According to the printouts of the websites under the disputed domain names dated October 27, 2010 provided in the case file by the Complainant, the disputed domain names resolve to web sites parked via GoDaddy.com, Inc., which offer links to competitive acne products of third party competitors of the Complainant but also information on Accutane drug related injury law suits. The case file also includes printed images of the websites to which the disputed domain names resolved dated November 15, 2010, when the links related to Accutane and other skincare products were removed from the “www.accutaneexposed.com” website and replaced on the “www.shockingaccutanereport.com” website with links apparently not connected to Accutane or acne websites but still referring to skin care treatments.
In a letter of response to the Complainant dated June 1, 2010 addressed by a Mr.Sharp, the person listed in the WhoIs records the registrant’s administrative contact, it was argued that the registration of the two disputed domain names does not represent an infringement of the Complainant’s rights as they are simply parked and not used in a targeted manner.
The circumstances of the case as presented above do not indicate any rights and legitimate interests for the Respondent in connection with the disputed domain names. Neither the use of the disputed domain names for simply parking them with GoDaddy.com, Inc. or having them used through GoDaddy.com, Inc. to offer third parties products on skin treatment do not represent, in the opinion of the Panel, a bona fide offering of goods or services.
As the Complainant contended in the Complaint, the Respondent in this case in its capacity as registrant has the power to have GoDaddy.com, Inc. remove any links from its websites under the disputed domain name while the Complainant does not. In this Panel’s view, the Respondent is responsible for the sales from such competitive commercial links listed on sites by GoDaddy.com, Inc. Whether or not the Respondent itself is the recipient of revenues from the website associated with the disputed domain name, the Panel notes that there is a reasonable likelihood that unjustified revenues will be generated thereby. See F. Hoffmann-La Roche AG v. Rudiger Meissner, WIPO Case No. D2009-1127.
In addition, as the disputed domain names are being used to promote products of Complainant’s competitors, such use demonstrates 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 the Complainant has accordingly also established the second of the three elements that it must prove.
C. Registered and Used in Bad Faith
The record in this case clearly indicates the Respondent's bad faith registration and use of the disputed domain names. 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 widely-known mark that has a 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 at the time of registration, 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;
- by operating the disputed domain names, the Respondent has intentionally attempted to attract for financial gain Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or the goods on the Respondent’s website,
- such websites to which customers are directed through the Respondent’s websites have no legitimate business connection with the Complainant or its products.
It is the Panel’s opinion that, by registering and using the disputed domain names, the Respondent has sought apparently 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.
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 <accutaneexposed.com> and <shockingaccutanereport.com> be transferred to the Complainant.
Beatrice Onica Jarka
Dated: December 21, 2010