World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Roche Products Limited v. Whitehardt Inc.

Case No. D2011-0983

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 Whitehardt Inc. of Nashville, Tennessee, United States of America.

2. The Domain Names and Registrar

The disputed domain names <accutanecolonsurgery.com>, <inflammatoryboweldiseaseaccutane.com> and <ulcerativecolitisaccutane.com> are registered with Tucows Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 7, 2011. On June 9, 2011, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain names. On June 9, 2011, Tucows 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 June 20, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 10, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 11, 2011.

The Center appointed Tuukka Airaksinen as the sole panelist in this matter on August 1, 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 is the owner of the trademark ROACCUTANE, registered and used since 1979, and of the mark ACCUTANE, used since 1972 and still in limited use. The marks are used to designate a drug for the treatment of acne. The disputed domain names were registered on April 30, 2010.

5. Parties’ Contentions

A. Complainant

The Complainant has submitted copies of registration certificates for the trademark ROACCUTANE from several jurisdictions dating back to 1979. The Complainant has also used the mark ACCUTANE since 1972 and the mark is famous in the North American markets, which is supported by filings of unsolicited newspaper articles and a reference to Roche Products Limited v. Andrew Palanich / Merchservice, NAF Claim No. 1354115, where the panel held that “[c]ontinued public use of the product over more than three decades has provided sufficient evidence of secondary meaning and warrants trademark protection”.

The Complainant contends that the three disputed domain names, all including the trademark ACCUTANE entirely, are confusingly similar to the trademarks ROACCUTANE, in which the prefix RO refers to the Complainant’s name “Roche”, and to the trademark ACCUTANE. The addition of generic terms in the disputed domain names does not prevent confusion.

As regards the Respondent’s rights or legitimate interests, the Complainant states that it has not authorized the Respondent to use the mark ACCUTANE or to incorporate the ACCUTANE portion of ROACCUTANE trademark into any domain names. Furthermore, the Respondent’s use of the disputed domain names indicates that the disputed domain names were selected and are being used because of the goodwill in the Complainant’s marks. Furthermore, the disputed domain names resolve to websites where products of the Complainant’s competitors are offered.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant must prove that the disputed domain names are confusingly similar to a trademark to which the Complainant has rights.

The Complainant has submitted copies of registration certificates of the trademark ROACCUTANE in several jurisdictions. The Complainant has also filed newspaper articles regarding its ACCUTANE trademark to demonstrate common law rights to the mark. It is obvious from these publications that the ACCUTANE mark has been used for a long period of time and has accumulated a substantial amount of goodwill. The Panel therefore accepted that the Complainant has common law rights in the trademark ACCUTANE.

All the disputed domain names consist of the trademark ACCUTANE combined with descriptive or other non-distinctive words. Previous panels have in several occasions held that combining a trademark with such words is not sufficient for avoiding confusing similarity with the trademark, see for example Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-1493, Lilly ICOS LLC v. Web Hosting Services, WIPO Case No. D2007-0229 and TRS Quality, Inc. v. Chirs Robert, WIPO Case No. D2010-1663.

As regards the trademark ROACCUTANE and the disputed domain names, it has been held on several occasions that adding or deleting a few letters of a trademark does not remove the confusing similarity, see F.Hoffman-La Roche AG v. Shenhong / Lantian Gongsi, WIPO Case No. D2009-0535, 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.

Hence removing two letters from the Complainant’s trademark and combining it with descriptive words is not sufficient for excluding confusing similarity with the Complainant’s trademarks.

The Panel therefore finds that the disputed domain names are confusingly similar to the Complainant’s trademarks.

B. Rights or Legitimate Interests

Next the Complainant needs to demonstrate that the Respondent has no rights or legitimate interests to the disputed domain names.

The Complainant has contended that it has not authorized the Respondent to use its trademarks in the disputed domain names. Furthermore, according to the Complainant, the Respondent’s use of the disputed domain names, namely having them resolve to websites offering goods of the Complainant’s competitors, may lead consumers to believe that the websites are linked or operated by the Complainant.

Such contention amounts to making a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names.

The Respondent has not challenged the Complainant’s contentions. Therefore, based on the case record, the Panel finds that the Respondent lacks rights or legitimate interests to the disputed domain names.

C. Registered and Used in Bad Faith

Lastly the Complainant must show that the Respondent has registered and is using the disputed domain names in bad faith.

Given the long-standing use and reputation of the Complainant's marks, combined with the fact that they are coined trademarks, it is unlikely that the Respondent would not have been aware of the Complainant's trademarks when registering the disputed domain names. This is backed by the fact that the disputed domain names resolve to websites with links to further websites which offer goods of competitors of the Complainant. It is therefore evident that the disputed domain names were registered to derive commercial value from the Complainant’s trademarks by way of attracting Internet traffic to the Respondent’s websites.

The Respondent has therefore intentionally registered the disputed domain names 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 websites which is recognized as bad faith registration and use under paragraph 4(b)(iv) of the Policy. See for example Micro Electronics, Inc. v. J Lee, WIPO Case No. D2005-0170.

Another allegation made by the Complainant is that the Respondent’s websites promote products of the Complainant’s competitors, which is demonstrated by the links included in the websites. The Panel finds it likely that the disputed domain names were also registered for attracting Internet users seeking the Complainant’s products to websites of other companies, another violation of paragraph 4(b)(iv) of the Policy, see Hoffmann-La Roche Inc. v. Samuel Teodorek, WIPO Case No. D2007-1814, citing Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784.

Hence the Panel finds that the disputed domain names were registered and are being used in bad faith.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <accutanecolonsurgery.com>, <inflammatoryboweldiseaseaccutane.com> and <ulcerativecolitisaccutane.com> be transferred to the Complainant.

Tuukka Airaksinen
Sole Panelist
Dated: August 9, 2011

 

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