WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Roche Products Limited v. Pavel Pavlic / WhoisGuard
Case No. D2011-1733
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 Pavel Pavlic of Kiev, Ukraine / WhoisGuard, WhoisGuard Protected of Los Angeles, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <buyaccutane20mg.com> is registered with eNom, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 12, 2011. On October 13, 2011, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the disputed domain name. On October 14, 2011 eNom Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details and disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 21, 2011 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 amendment to the Complaint on October 22, 2011.
The Center verified that the Complaint, together with the amendment to 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 4, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 24, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 25, 2011.
The Center appointed Leon Trakman as the sole panelist in this matter on December 15, 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 (“Roche”), focuses on research in pharmaceuticals and diagnostics operating in more than 100 countries. The Complainant owns ROACCUTANE, a registered trademark in the United Kingdom of Great Britain and Northern Ireland, Malaysia and Singapore.
The mark ROACCUTANE relates to the drug, isotretinoin which is used to treat nodular and/or inflammatory acne conglobata or recalcitrant acne. The mark ROACCUTANE was widely used by Roche since 1972 and the drug, “Accutane”, is still used to a limited degree by Roche; and in domain names by third parties marketing isotretinoin or other acne/skin care/pharmaceutical products. See Roche Products Limited v. Andrew Palanich, NAF Case No. FA1010001354115 (National Arbitration Forum, November 29, 2010); "Continued public use of the product over more than three decades has provided sufficient evidence of secondary meaning and warrants trademark protection… under the Policy 4(a)(i)."
5. Parties’ Contentions
The Complainant alleges that the Respondent's registration and use of the disputed domain name, <buyaccutane20mg.com>, was intended to take advantage of Complainant’s goodwill created by its ROACCUTANE trademarks, consisting of a combination of “Roche” and “Accutane.”. In particular, the Complainant alleges that the Respondent uses the disputed domain name to direct users to a web site which uses the Complainant's federally registered trademark ACCUTANE. However, the Complainant alleges that the Respondent sells ACCUTANE without authorization of the Complainant and contrary to Food and Drug Administration (FDA) regulation: by selling a greater quantity of ACCUTANE than the 30 days of supply permitted by FDA regulation; by selling multiple pharmaceutical products of third party competitors of Roche which infringes upon the Complainant’s mark; by likely causing confusion among purchasers; by likely damaging the reputation of Roche; and by possibly causing public harm.
The Complainant also alleges that the Respondent by its action may lead a consumer to believe that the Respondent is the source of the Accutane product and related information. The Complainant further alleges that the Respondent's use of the disputed domain name <buyaccutane20mg.com> and in its web site is likely to create the impression that the Respondent is affiliated with or sponsored by Roche, or that the Respondent’s web site is owned and/or operated by Roche.
The Complainant also contends that the Respondent, by using and registering of the disputed domain name, seeks to capitalize on the reputation associated with the Complainant’s trademark; that the Respondent seeks unlawfully and in bad faith to divert Internet users seeking information for “Accutane” or “Roccutane” products to the Respondent’s web site, wholly unrelated to the Complainant.
The Complainant maintains that the Respondent’s registration and use of the mark ACCUTANE which, nearly identical to the Respondent’s mark ROCCUTANE, constitute clear indications of bad faith on the part of the Respondent.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name is not identical to the REACCUTANE trademark of the Complainant through its Roche brand. However, it is confusingly similar insofar as the disputed domain name uses the Respondent’s mark in full, adding only the prefix “buy” as a descriptor and the suffix “20mg” as a suffix to the Respondent’s trademark. This similarity is likely to create the false impression that the Complainant is the source or sponsor of the Respondent’s domain name, that that name is being used in association with the Complainant’s business in Roche products, or that the Complainant somehow has endorsed the Respondent use of the disputed domain name.
It is well established in UDRP jurisprudence the addition of descriptive or non-distinctive letters or numbers to an established trademark are often held to be confusingly similar to the Complainant’s trademark. See e. g. America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004 citing Sporty's Farm L.L.C. v. Sportsman's Market, Inc., 202 F. 3d 489, 497-98 (2d.Cir. 2000).
In this case, the disputed domain name, in incorporating the trademark of the Complainant in full, notwithstanding the addition of a suffix and prefix, is confusingly similar to the Complainant’s trademark as defined in paragraph 4(a)(i) of the ICANN Policy.
B. Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in the disputed domain name. “Roaccutane” and “Accutane” are not words of ordinary use in the vernacular, but are words associated with the trademark of Roche and its use of Accutane in isotretinoin acne medication. The Complainant has not authorized the Respondent to register or use the Complainant’s trademark. It has not granted the Respondent a license to use that mark. Nor has any affiliate of the Complainant authorized the Respondent to register or use that trademark. Nor does the Respondent have any legitimate commercial or non-commercial interest in the disputed domain name; nor has it engaged in a fair use of that name. See 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.
As a result, the Panel holds that the Respondent has no right to expropriate and use the trademark of Roche and nor any legitimate interests in doing so; and that the Respondent therefore act acted contrary to paragraph 4 (a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Respondent has registered and used the disputed domain name in bad faith. In particular, it is reasonable to conclude that, in registering and using a domain name that is confusingly similar to the Complainant’s mark, the Respondent has intentionally sought to divert Internet users, believing they were accessing information, sales and services provided by the Complainant, to the Respondent's web site. The Respondent is also in bad faith in using a domain name containing the Complainant’s mark explicitly in attract business away from the Complainant for financial gain, and without any permission, direct or indirect, from the Complainant or any of its affiliates. The Respondent has acted in bad faith, too, in using the disputed domain name to sell Accutane as well as multiple third party pharmaceutical products through its linked site “www.medscvs.com”. 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,citingCasio Keisanki Kabushiki (Casio Computer Co., Ltd.) v. Jonchan Kim, WIPO Case No. D2003-0400.
A Respondent who intentionally trades on the reputation and goodwill of a Complainant’s mark, can not be said to engage in a bona fide offering of goods and services. Hoffmann-La Roche Inc. v. AlisiaUzun , WIPO Case No. D2008-1138, citing Madonna Ciccone, p/k/a Madonna v. Dan Parisi and <Madonna.com>, WIPO Case No. D2000-0847.See to G.D. Searle & Co. v. Mahoney, NAF Case No.FA112559 (June 12, 2002).
It would be unfair to the Complainant to confer any legal rights or interests on the Respondent in light of the latter’s bad faith, contrary to paragraph 4(c)(iii) of the Policy. See America Online, Inc. v. Xianfeng Fu, WIPO Case No. D2000-1374 (“it would be unconscionable to find… a bona fide offering of services in a respondent’s operation of (its) web-site using a domain name which is confusingly similar to the complainant’s mark and for the same business”), cited in Hoffmann-La Roche Inc. v. AnekoBohner, WIPO Case No. D2006-0629. Hoffmann-La Roche Inc. v. Samuel Teodorek, WIPO Case No. D2007-1814.
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 name, <buyaccutane20mg.com>, be transferred to the Complainant
Dated: December 29, 2011