WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Roche Products Limited v. Health Info, Ivan Petrosyan / Oleksandr Mandryk
Case No. D2011-0782
1. The Parties
The Complainant is Roche Products Limited of United Kingdom of Great Britain and Northern Ireland represented by Lathrop & Gage LLP, United States of America.
The Respondent is Health Info, Ivan Petrosyan / Oleksandr Mandryk of Kiev, Ukraine.
2. The Domain Name and Registrar
The disputed domain name <accutaneprice.net> is registered with Name.com LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 5, 2011. On May 5, 2011, the Center transmitted by email to Name.com LLC. a request for registrar verification in connection with the disputed domain name. On May 6, 2011, Name.com LLC. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on May 13, 2011.
The Center verified that the Complaint together with the 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 May 16, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 5, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 6, 2011.
The Center appointed Harini Narayanswamy as the sole panelist in this matter on June 14, 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, Roche Products Limited is incorporated under the laws of United Kingdom of Great Britain and Northern Ireland. The Complainant owns the trademarks ROACCUTANE and ACCUTANE.
The disputed domain name <accutaneprice.net> was registered on February 12, 2011.
5. Parties’ Contentions
The Complainant states it is a leading research-focused health care group in the areas of pharmaceuticals and diagnostics with a presence in over one hundred countries. It uses the trademark ROACCUTANE to market the drug “isotretinoin” which is indicated for the treatment of severe nodular acne.
The Complainant has filed copies of its registered mark ROACCUTANE in several countries, showing registrations dating back to 1979. The Complainant states that it has promoted the trademark ACCUTANE as an isotretinoin drug, since 1972 and continues to use it. The Complainant alleges it has sold several million dollars worth under the ACCUTANE mark. To demonstrate the fame associated with the ACCUTANE mark and its common law rights, the Complainant has filed published articles and news items related to the mark. The Complainant also relies on the decision in Roche Products Limited v. Andrew Palanich, NAF Claim No.1354115, where it was found that the Complainant has used the ACCUTANE mark for over three decades and that the mark had acquired secondary meaning deserving protection under the Policy.
The Complainant states that the disputed domain name contains the entire ACCUTANE mark, and is confusingly similar to its marks. Further, the only difference between ACCUTANE and its registered mark ROACCUTANE are the first two letters “RO” of the Roche name. The addition of a word, letters or numbers to a mark does not alter confusingly similarity with trademark; therefore the word “price” with the trademark in the disputed domain name is construed to be confusingly similar to the mark. The Complainant asserts the Respondent’s website offers skin care products of the Complainant’s competitors and has links to third party pharmaceutical products, such sites include: “www.bestphenonline.com”, “www.proactive.com”, and “www.acnetreatments.com”. The Complainant asserts that it sent a notice to the Respondent dated April 18, 2011 through its counsel about the infringing use of its trademarks.
The Complainant states the Respondent has no rights or legitimate interests in the disputed domain name, as the Complainant has not granted any license or authorization to the Respondent to use its marks ACCUTANE or ROACCUTANE. Further, the Respondent is not known by the said names, which are coined words with no dictionary meaning. The Respondent uses the disputed domain name for the goodwill associated with the Complainant’s trademark to divert Internet users to competitor products. Such use is not construed a bona fide offering of goods and services or legitimate noncommercial, fair use of the disputed domain name.
The Complainant further argues that the disputed domain name was registered and is being used in bad faith for the reasons that the word “accutane” is not a dictionary word but is a coined word that is well-known in North America as the Complainant’s trademark. The use of the Complainant’s mark with an intention to attract users for commercial gain by creating a likelihood of confusion as to the source, sponsorship or affiliation of the Respondent’s website is bad faith use. The Respondent has no legitimate business connection or permission to use the Complainant’s mark for selling pharmaceutical or skin care products. The use of the disputed domain name by the Respondent to promote third party competitor products using the Complainant’s well-known mark is bad faith use and the Complainant requests for the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To obtain the remedy of transfer of the disputed domain name, the Policy states that the Complainant has to establish three elements under paragraph 4(a).
(i) The disputed domain name is identical or confusingly similar to a mark 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 was registered and is being used in bad faith by the Respondent.
A. Identical or Confusingly Similar
The first element under paragraph 4(a) of the Policy requires the Complainant to prove the disputed domain name is identical or confusingly similar to a mark in which it has rights.
The Complainant has provided material in these proceedings to establish its rights in the trademarks ACCUTANE and ROACCUTANE. The documents furnished by the Complainant show its trademark registrations for the ROACCUTANE mark in several countries under class 5. The jurisdictions for which the Complainant has furnished copies of trademark registrations for its ROACCUTANE mark include United Kingdom of Great Britain and Northern Ireland, trademark registration number 1119969, Ireland trademark registration number 96401, Malaysian trademark registration 87003256 and in Singapore trademark registration T79/ 83324F. The Panel finds these documents establish the Complainant’s continuous and extensive use of the trademark ROACCUTANE.
The Complainant has provided documents that show unsolicited media news items and other published articles referring to its trademark ACCUTANE to demonstrate its common law rights in the mark. These publications refer to the ACCUTANE trademark and are from several journals and newspapers over a period of time. The Panel is satisfied that the documents show that ACCUTANE is widely known and that the Complainant has common law rights in its unregistered trademark ACCUTANE.
The disputed domain name consists of the trademark ACCUTANE and the generic term “price”. The mere addition of the non-distinctive word “price” with the mark does not distinguish the disputed domain name from the mark. See for instance Lilly ICOS LLC v. Web Hosting Services, WIPO Case No. D2007-0229, where appending the words “half” and “price” to the trademark CIALIS in the domain name <half-price-cialis.com> was found confusingly similar to the complainant’s trademark, or see TRS Quality, Inc. v. Chirs Robert, WIPO Case No. D2010-1663. (<radioshackcoupons.org>), where addition of the term “coupons” with the RADIO SHACK trademark was found confusingly similar to the mark.
Several UDRP decisions have recognized that adding or deleting a letter or two or transposing letters in a trademark does not lessen the confusing similarity of the domain name with the trademark. In F.Hoffman-La Roche AG v. Shenhong / Lantian Gongsi, WIPO Case No. D2009-0535, it was found that adding the letters “ZZON” to the trademark VALIUM in the domain name <valiumzzon.com> did not diminish the confusing similarity with the VALIUM mark. Also see Columbia Pictures Industries, Inc. v. Caribbean Online International Ltd., WIPO Case No. D2008-0090 and Panavision, Inc., Panavision International, L. P. v. Roomwithnet Systems (I) P.Ltd./ Eyecircus Studio Pvt.Ltd, WIPO Case No. D2005-0521, (finding that adding or removing letters to or from a trademark is not sufficient to escape the finding of similarity and does not change the impression of the trademark being connected with the complainant). In the present case, the Complainant has established its common law rights in the trademark ACCUTANE and registered trademark rights in ROACCUTANE. Omitting the letters “RO” from the Complainant’s registered mark or adding the word “price” in the disputed domain name does not lessen confusing similarity with the marks ROACCUTANE or ACCUTANE.
For the reasons discussed, the disputed domain name is found confusingly similar to the trademarks in which the Complainant has rights. The Panel finds the Complainant has satisfied the first element under paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The second element under paragraph 4(a) of the Policy requires the Complainants to make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The unchallenged submissions of the Complainant are that the Respondent has not been authorized or licensed to use its trademarks and therefore the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides a non-exhaustive list of circumstances by which the Respondent can demonstrate rights or legitimate interests in the disputed domain name. The Respondent can establish under Paragraph 4(c) of the Policy that:
(i) The Respondent has used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services;
(ii) The Respondent has been commonly known by the disputed domain name;
(iii) The Respondent is making legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or tarnish the trademark of the Complainants.
The Respondent has not responded in these proceedings and has not provided any material to show rights in the disputed domain name. The material on record does not show that the Respondent has been known by the disputed domain name or that the Respondent is making any legitimate noncommercial fair use of the disputed domain name.
The Panel finds the facts and circumstances in the present case shows the Respondent who is not connected with the Complainant or its business, nonetheless uses the Complainant’s trademark in the disputed domain name. In the Panel’s view, such use of the Complainant’s mark in the disputed domain name is likely to mislead the public and Internet users that the disputed domain name refers to the Complainant’s mark. A domain name that gives a false impression to users and misleads Internet users does not confer rights or legitimate interests. This view has been upheld in several prior UDRP decisions. See for instance, Pfizer Inc. v. Alex Schreiner / Schreiner & Co., WIPO Case No. D2004-0731.
For the reasons discussed the Panel finds that the Respondent has no rights and legitimate interests in the disputed domain name. The Complainant has satisfied the second element of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The third element under paragraph 4(a) of the Policy requires the Complainant to prove that the disputed domain name has been registered and used in bad faith.
The facts and circumstances in the present dispute indicate that the Respondent registered the disputed domain name knowing of the trademark and the significance of the trademark for the treatment of acne. This can be inferred from the links to acne treatment websites from the Respondent’s website. Further as argued by the Complainant, the ACCUTANE mark is a coined word that has no dictionary meaning. Given the fame of the Complainant’s mark and the fact that the term ACCUTANE has no dictionary meaning, except as referring to the Complainant’s mark, it is the Panel’s view, that the use of the Complainant’s trademark in the disputed domain name gives rise to the inference that the Respondent ought to have registered the disputed domain name for its trademark value. See Bharti Airtel Limited, Body Corporate v. Ramandeep Singh, USA Webhost, Inc., WIPO Case No. D2010-0524, where bad faith registration and use was found when the complainant’s trademark, a coined word, was used by the respondent in a domain name for generating Internet traffic to derive some form of commercial gain from the complainant’s trademark.
The Panel finds there is no reasonable explanation for such registration and use of the disputed domain name except that the Respondent seeks to exploit the reputation and goodwill associated with the Complainant’s mark to attract Internet traffic to the Respondent’s website and to mislead customers to believe that the Complainant is in some way associated with the Respondent’s website. The Respondent has therefore intentionally registered the disputed domain name for the purpose of attracting Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, and affiliation of the website which is recognized as bad faith registration and use under paragraph 4(b)(iv) of the Policy. See Micro Electronics, Inc. v. J Lee, WIPO Case No. D2005-0170, (Bad faith registration and use of the domain name was found where the respondent used the domain name to attract Internet users unwittingly to his site for commercial gain, in the hope that Internet users would be confused into thinking that the site of the disputed domain name is linked to the complainant or its trademark).
The Panel notes the Complainant’s allegations that the disputed domain name is being used by the Respondent for channelizing and diverting Internet users to other websites some of these being competitors of the Complainant. This is evident from the links and advertisements displayed on the Respondent’s website. It can be reasonably inferred that the Respondent’s intention in registering the disputed domain name seems to be motivated by diverting potential customers of the Complainant who seek the Complainant’s product online to other sites. Such use of the disputed domain name is recognized as bad faith. See DaimlerChrysler Corporation, DaimlerChrysler Services North America LLC v. La Porte Holdings, Inc. WIPO Case No. D2005-0143 (Using a domain name to intentionally attract, for commercial gain, Internet users to a website by creating confusion with a complainant’s mark and redirecting the users to complainant’s competitors is evidence of bad faith under the Policy, paragraph 4 (b)(iv)).
Furthermore, the registration of a domain name that uses a well-known mark is further evidence of bad faith registration. See for instance PepsiCo, Inc. v. Domain Admin, WIPO Case No. D2006-0435. (<pepsicolaroadhouse.com>). The Panel therefore finds the Respondent has registered the disputed domain name with the intention of attracting Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship an affiliation, which is recognized as bad faith registration and use under paragraph 4(b)(iv) of the Policy. See AXA, S.A. v. PrivacyProtect.org / Koddos, Ronald Linco, WIPO Case No. D2010-0270.
For the reasons discussed, the Panel finds that the Complainant has successfully established that the disputed domain name was registered in bad faith and is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <accutaneprice.net> be transferred to the Complainant.
Dated: June 28, 2011