WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Roche Products Limited v. Rex Bowden
Case No. D2011-0735
1. The Parties
The Complainant is Roche Products Limited, Welwyn Garden City, United Kingdom of Great Britain and Northern Ireland, represented by Lathrop & Gage L.C., United States of America.
The Respondent is Rex Bowden, Louisiana, United States of America.
2. The Domain Name and Registrar
The disputed domain name <accutanerebate.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 28, 2011. On April 28, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On April 29, 2011, 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 May 3, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 23, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 27, 2011.
The Center appointed Kaya Köklü as the sole panelist in this matter on June 8, 2011. 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, together with its affiliated companies, is a well-known research-focused healthcare group in the fields of pharmaceuticals and diagnostics with global operations worldwide. The Complainant uses the registered trademark ROACCUTANE for a drug with an active ingredient named isotretinoin, which is mainly used for the treatment of different types of acne. The respective drug was introduced to the market in 1972 already and, since then, has been prescribed several million times so far.
The first ROACCUTANE trademarks were registered in the late 1970’s, in particular in the United Kingdom and Ireland, each covering protection for drugs as described in class 5 of the International Classification of Goods and Services under the Nice Agreement (9th version).
Further to its registered mark ROACCUTANE, the Complainant has also used the brand ACCUTANE for many years to market its isotretinoin drug. Nowadays, however, the brand ACCUTANE is used by the Complainant just on a limited scale only. According to an own press release dated June 29, 2009, the Complainant even stopped to manufacture and distribute ACCUTANE in the United States of America for business reasons.
The Respondent seems to be an individual located in Louisiana, United States of America. Further information on the Respondent is not known. However, it is evidenced that the Respondent registered the disputed domain name <accutanerebate.com> on December 30, 2010.
Prior to filing the Complaint in these administrative proceedings, the Complainant, by its attorneys-at-law, sent a warning letter to the Respondent on April 8, 2011 requesting a cease and desist declaration and a transfer of the disputed domain name.
5. Parties’ Contentions
The Complainant argues that it is one of the world’s leading research-focused pharmaceutical companies. It argues that since 1972 its drug ACCUTANE “has been the subject of hundreds of millions of dollars in sales and has become famous” worldwide for the treatment of acne. The Complainant is of the opinion that the brand ACCUTANE, although nowadays used on a limited scale only, still enjoys international fame, which is supposed to be demonstrated by the continued unauthorized use of ACCUTANE in domain names by third parties who mainly market competing generic isotretinoin or other acne/skin care products.
In the present case, the Complainant points out that the disputed domain name is confusingly similar to its trademarks ROACCUTANE and ACCUTANE as it fully incorporates the brand ACCUTANE, added only by descriptive language, namely “rebate”, indicating a refund or rebate for ACCUTANE. The addition of such descriptive language shall in the view of the Complainant not prevent the likelihood of confusion between the disputed domain name and the Complainant’s brands.
Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name and has registered and used the disputed domain name in bad faith. The Complainant is of the opinion that the Respondent intentionally tries to mislead Internet users by creating the impression of an authorized connection to the Complainant’s brands of isotretinoin acne medication. The Respondent’s use of the disputed domain name shall be purely disreputable as it resolves to a website which offers competitive acne products of third parties. In this regard, the Complainant points out that the brands ROACCUTANE and ACCUTANE are creative fancy names without a specific meaning. It is also stressed by the Complainant that it has never granted a permission or license to the Respondent to use the trademarks ROACCUTANE or ACCUTANE.
It is further alleged that the Respondent has never used and does not use the mark ACCUTANE in connection with a bona fide offering of goods and/or services. It is rather asserted that the Respondent purely uses the disputed domain name to divert Internet users seeking for information on ACCUTANE by the Complainant.
Finally, the Complainant is of the opinion that the Respondent must have known the Complainant’s trademark ROACCUTANE and its brand ACCUTANE well before the registration of the disputed domain name. Hence, the Complainant concludes that the Respondent must have registered and is using the disputed domain name in bad faith. This assessment shall be supported by the fact that the Respondent has not responded to the warning letter sent by the Complainant to the Respondent prior to these administrative proceedings.
Based on the above, the Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the Complaint where no Response has been submitted.
In accordance with paragraph 4(a) of the Policy, the Complainant is obliged to prove that each of the three following elements is satisfied:
(i) The disputed domain name is identical or confusingly similar to the trademark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complaint, Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228.
However, concerning the uncontested information provided by the Complainant, the Panel may as appropriately accept the provided reasonable factual allegations in the Complaint as true, Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.
In this regard it is noted that an independent research, by visiting the Internet site linked to the disputed domain name and by searching for further information on the brand ACCUTANE, has been performed by this Panel on June 18, 2011. The competence of the Panel to perform such independent research is in line with previous UDRP decisions (see, e.g. Hesco Bastion Limited v. The Trading Force Limited, WIPO Case No. D2002-1038).
Further is noted that the Panel has taken note of the second edition of the WIPO Overview of Panel Views on Selected UDRP Questions and, where appropriate, will decide consistent to the new “WIPO Overview 2.0”.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name <accunaterebate.com> is confusingly similar to the Complainant’s ROACCUTANE and ACCUTANE trademarks.
First, the Panel acknowledges that the Complainant is the registered owner of the mark ROACCUTANE, which gains trademark protection in class 5 of the International Classification of Goods and Services under the Nice Agreement (9th version) in various jurisdictions since the late 1970’s.
Second, the Panel acknowledges that the brand ACCUTANE gains trademark protection as well. For not very apparent reasons, the Complainant did not provide any evidence regarding an existing trademark registration of the brand ACCUTANE. However, the Panel has become aware of the Complainant’s ACCUTANE trademark registration in the United States of America. (USPTO registration number 0966924). According to the online trademark register of the USPTO, searched by the Panel on June 18, 2011, the Complainant’s trademark is life and has been renewed in 2003. But even without a trademark registration for ACCUTANE, the Panel would confirm unregistered trademark protection for the mark ACCUTANE as it has apparently been used to identify the Complainant’s isotretinoin drug for more than three decades and – although just used on a limited scale nowadays – still gains high distinctive character and awareness for drugs in relation to the treatment of various kinds of acne and other skin problems. The Panel believes that the high distinctiveness and prominence of the trademarks ROACCUTANE and ACCUTANE is still given because the respective drug of the Complainant was both very successful and controversial discussed because of its side effects at the same time.
Third, the Panel finds that the disputed domain name is confusingly similar to the trademarks ROACCUTANE and ACCUTANE due to the following reasons.
The disputed domain name <accutanerebate.com> fully incorporates the trademark ACCUTANE and largely incorporates the mark ROACCUTANE. The only possibly relevant difference is the addition of the generic term “rebate”.
In the Panel’s view, the addition of content-related generic terms like “rebate” does not negate the confusing similarity between the Complainant’s trademark and the disputed domain name. The Panel finds that the incorporation of the term “rebate” is rather descriptive and does not create a new distinctiveness separate from the Complainant’s trademarks ACCUTANE and ROACCUTANE. Quite the opposite, the Panel believes that the full inclusion of the Complainant’s trademark in combination with some content-related generic terms may even enhance the false impression that the Internet site linked to the disputed domain name is somehow authorized or officially linked to the Complainant or its group members.
Bearing in mind the prominence of the marks ACCUTANE and ROACCUTANE, the Panel concludes that the disputed domain name is likely to confuse Internet users into their believing that the disputed domain name is affiliated or endorsed by the Complainant or that the use of the disputed domain name is at least authorized by the Complainant or its affiliated companies.
Hence, the Panel is of the opinion that the disputed domain name is confusingly similar to the trademarks ROACCUTANE and ACCUTANE and therefore concludes that the first requirement under paragraph 4(a) of the Policy is fulfilled.
B. Rights or Legitimate Interests
The Panel further finds that the Respondent has not demonstrated any rights or legitimate interests in the disputed domain name.
While the burden of proof remains with the Complainant, the panels have recognized that this would result in the impossible task of proving a negative, in particular as the evidence needed to show the Respondent's lack of rights or legitimate interests is primarily within the knowledge of the Respondent. Therefore, the Panel agrees with prior UDRP panels that the Complainant is required to make out a prima facie case before the burden of proof shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name in order to meet the requirements in paragraph 4(a)(ii) of the Policy, Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
The Panel finds that the Complainant has satisfied this requirement, while the Respondent has failed to file any evidence or arguments to demonstrate a right or legitimate interest in the disputed domain name according to the Policy, paragraph 4(a)(ii) and 4(c).
With its Complaint, the Complainant has provided uncontested prima facie evidence that the Respondent has no trademark, license or any similar right to use the Complainant’s trademarks ROACCUTANE and ACCUTANE in the disputed domain name.
In the absence of a Response by the Respondent, there is also no indication in the current record that the Respondent is commonly known by the disputed domain name.
In addition, the Respondent has failed to demonstrate any of the other non exclusive circumstances evidencing rights or legitimate interests under the Policy, paragraph 4(c) or any other evidence of a right or legitimate interest in the disputed domain name. In particular, the Respondent has failed to show that the disputed domain name has been used in connection with a bona fide offering of goods or services.
Finally, there is also no indication that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name without the intent for commercial gain to misleadingly divert users or to tarnish the ROACCUTANE and ACCUTANE trademarks. Quite the opposite, it rather appears that the Respondent tries to gain commercial benefit by offering various skin care products which might be confusingly associated with the Complainant’s acne treatment products. The Panel believes that this sufficiently indicates that there is no legitimate noncommercial or fair use of the disputed domain name.
Hence, the Panel concludes that the Complainant has also satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel further believes that the Respondent has registered and is using the disputed domain name in bad faith.
According to the provided documents in the Complaint, the Panel is convinced of the reputation of the Complainant’s trademarks ROACCUTANE and ACCUTANE, in particular in North America, where the Respondent seems to be located. Hence, the Panel believes that the Respondent must have known both trademarks when it registered and started to use the disputed domain name in 2010. This is in particular likely as the disputed domain name was registered many years after the Complainant’s trademarks have become registered and recognized worldwide.
The Panel is further convinced that the Respondent primarily registered and is using the disputed domain name to create and benefit from consumer confusion. It is apparent that the Respondent tries to monetize on the prominence of the ACCUTANE and ROACCUTANE trademarks of the Complainant by diverting Internet users seeking for official or at least authorized offers of the Complainant’s well-known drug for acne treatment.
Additionally, the Panel finds that the Respondent's failure to respond to both, the Complainant’s warning letter of April 8, 2011 and to the Complaint further supports the conclusion that it has registered and is using the disputed domain name in bad faith in order to mislead Internet users.
Overall, the Panel finds that the above demonstrates a rather typical cybersquatting case.
The Panel therefore concludes that the disputed domain name was registered and is being used in bad faith and that the Complainant consequently has satisfied the third element of the Policy, namely, 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 name <accutanerebate.com> be transferred to the Complainant.
Dated: June 20, 2011