World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Roche Products Limited v. Domains by Proxy, Inc. / Christian Hunter

Case No. D2010-1892

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 Domains by Proxy, Inc. / Christian Hunter of Scottsdale, Arizona, United States of America and Austin, Texas, United States of America, respectively.

2. The Domain Names and Registrar

The disputed domain names <accutaneawards.com>, <accutanedanger.com>, <accutanedangers.com>, <accutanelegal.com>, <accutaneproblem.com>, <accutaneproblems.com>, <accutanetrial.com>, <helpforaccutane.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 5, 2010. On November 8, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On November 9, 2010, GoDaddy.com, Inc. 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 10, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 30, 2010. The Respondent did not submit any response, except for an email dated December 1, 2010 by which it claimed he does not know about what the UDRP procedure means. Accordingly, the Center notified the Respondent’s default on December 1, 2010.

The Center appointed Beatrice Onica Jarka as the sole panelist in this matter on December 3, 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, 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/products” for information about Accutane.

The disputed domain names had been registered on April 4, 2010. Nothing is known to this Panel about the Respondent except for the information incorporated in the registration of the disputed domain name.

5. Parties’ Contentions

A. Complainant

- 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.

- 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.

- Two of the disputed domain names are names which could have been registered by the Complainant for the purpose of providing clinical information on trial or awards of the ACCUTANE drug, the dangers or problems of the ACCUTANE drug when not prescribed or used according to the directions, assistance help with proper legal use of the ACCUTANE drug and legalities when dispensing of the ACCUTANE drug.

- The disputed domain names add to the Complainant ACCUTANE trademark descriptive words as “award”, “danger”, “dangers”, “legal”, “problem”, “problems”, “trial”, “help” and “for” which do not make them distinctive from the Complainant’s trademarks ACCUTANE and ROACCUTANE.

- Respondent’s websites under the disputed domain names offer for sale skin care products of the Complainant’s competitors through linked sites.

- Respondent's use of the disputed domain names is purely disreputable. Respondent's disputed domain names resolve to web sites which offer competitive acne products of third party competitors of the Complainant. Respondent’s sites offer third party pharmaceutical skin care products of Complainant’s competitors for sale, through linked sites including “www.topacneproducts.org”, “www.proactiv.com”, “www.acnetreatmentsonline” without license or permission of any kind from the Complainant. Such activity is infringing, and likely to confuse purchasers, all to the damage of Complainant.

- Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain.

- Respondent registered and is using the disputed domain names in bad faith in order to capitalize on the fame of the Complainant’s trademarks as:

- The Complainant’s mark ACCUTANE is not a word but an invented and coined famous mark that have an extremely 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 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.

- 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.

- The cease and desist letter sent by the Complainant to the Respondent on September 7, 2010 had no effect.

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

h4B. Respondent

Despite being properly notified, 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 domains name incorporate the Complainant’s entire trademark to which it is added different descriptive words as “award”, “danger”, “dangers”, “legal”, “problem”, “problems”, “trial”, “help” and “for”. 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 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 “award”, “danger”, “dangers”, “legal”, “problem”, “problems”, “trial”, “help” and “for” 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, some of which referr to acne medication side effects law suits or to ACCUTANE 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 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.

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 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 Roche 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 also that, neither Respondent nor its web sites have been commonly known by the disputed domain names pursuant to the Policy, paragraph 4(c)(ii).

Respondent's disputed domain names resolve to web sites which offer competitive acne products of third party competitors of Complainant but also information on Accutane drug related law suits and the side effects of the Accutane drug. If the link to such last sites would be considered for an analysis under the Policy, paragraph 4(c)(iii), the links offering competitive acne products of third party competitors de plano eliminate, in the opinion of the Panel, such analysis as it is an obvious indication of Respondent’s intent to capitalize on the reputation associated with the Complainant’s trademarks.

As the disputed domain names are being used to promote products of Complainant’s competitors, such use demonstrates Respondent’s lack of a legitimate non-commercial 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 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 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 Roche, 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 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 <accutaneawards.com>, <accutanedanger.com>, <accutanedangers.com>, <accutanelegal.com>, <accutaneproblem.com>, <accutaneproblems.com>, <accutanetrial.com>, <helpforaccutane.com> be transferred to the Complainant.

Beatrice Onica Jarka
Sole Panelist
Date: December 17, 2010

 

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