WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Roche Products Limited v. Alex Uvarov/ Whois Privacy Protection Service
Case No. D2011-1797
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 Alex Uvarov of Panama; Whois Privacy Protection Service of Xiamen, Fujian, China.
2. The Domain Name and Registrar
The disputed domain name <accutanewithoutrx.com> is registered with Bizcn.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 20, 2011. On October 21, 2011, the Center transmitted by email to Bizcn.com, Inc. a request for registrar verification in connection with the disputed domain name. On October 24, 2011, Bizcn.com, Inc. transmitted by email to the Center its verification response 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 26, 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 27, 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 October 31, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 20, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 21, 2011.
The Center appointed Jonas Gulliksson as the sole panelist in this matter on November 25, 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 has submitted evidence of the following registrations:
- Trademark of the United Kingdom No. 1119969 ROACCUTANE in respect of pharmaceutical, veterinary and sanitary preparations and substances in Class 5. Registered on September 3, 1979 and renewed September 3, 2000 for a period of 10 years.
- Trademark of Ireland No. 96401 ROACCUTANE in respect of pharmaceutical preparations in Class 5. Registered on September 3, 1979 and renewed March 8, 2000 for a further period of ten years with effect from the expiration of the last period of registration.
- Trademark of Malaysia No. 87003256 ROACCUTANE in respect of pharmaceutical preparations for human use in Class 5. Registered on July 27, 1987 and renewed for a period of 14 years with effect from July 27, 1994.
- Trademark of Singapore No. 83324 ROACCUTANE in respect pharmaceutical, veterinary and sanitary preparations and substances in Class 5. Registered on December 3, 1979 and renewed for a period of 10 years from December 3, 2000.
The disputed domain name was registered on September 17, 2011.
5. Parties’ Contentions
The Complainant, together with its affiliated companies (“Roche”), is one of the world’s leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics and operates in more than 100 countries. The Complainant owns the registered ROACCUTANE trademark in multiple countries with registration dates as early as 1979 which is still in use.
The ROACCUTANE trademark designates a drug, isotretinoin, indicated for the treatment of severe nodular and/or inflammatory acne conglobata or recalcitrant acne. The famous mark ACCUTANE has been used by Roche since 1972 and has been the subject of hundreds of millions of dollars in sales as well as media attention. The brand is still sold by Roche on a limited scale, and the fame of the brand is retained.
The disputed domain name is identical or confusingly similar to the Complainant’s ACCUTANE and ROACCUTANE trademarks within the meaning of the Policy. The registered trademark ROACCUTANE adds only “ro”, the first two letters of Roche, the owner of these names, to ACCUTANE. The disputed domain name contains the entire ACCUTANE trademark. The descriptive words “without” and “rx” do not prevent the likelihood of confusion.
The Respondent has no rights or legitimate interests in the disputed domain name. “Roaccutane” and “accutane” are not words and have no valid use other than in connection with Roche brands of isotretinoin acne medication. Neither the Complainant nor any of its affiliate companies (Roche) has authorized the Respondent to incorporate the ACCUTANE trademark into any domain name. The use of the disputed domain name indicates that the Respondent’s disputed domain name was selected and is being used because of the goodwill created by the Complainant in its ROACCUTANE and ACCUTANE trademarks. The Respondent is not, and has not been, commonly known by the disputed domain name.
The Respondent’s use of the disputed domain name is purely disreputable. The web site linked to the disputed domain name offers the Accutane brand, depicting the Accutane packaging of Roche. The web site sells competitive third party products including competitive generic isotretinoin.
The Respondent has registered and is using the disputed domain name in bad faith. The Respondent’s registration and use of the disputed domain name creates a strong likelihood of confusion as to source, sponsorship, association or endorsement of the Respondent’s web site associated with its disputed domain name by Roche. The Respondent seeks to capitalize on the reputation associated with the Complainant’s trademarks and divert Internet users seeking information of Accutane or Roaccutane products to its own web site. Through the web site linked to the disputed domain name, the Respondent links to the third party web sites. These web sites sell products including isotretinoin, competitive to the Accutane and Roaccutane acne drug products of Roche, and other multiple pharmaceutical products of the Complainant’s competitors. The Respondent’s appropriation and use of the ACCUTANE trademark is a clear attempt to create and benefit from consumer confusion regarding the Respondent’s activities and the bona fide business of Roche. By using the disputed domain name to offer products by the Complainant’s competitors, the Respondent is not using the disputed domain name connection with a bona fide offering of goods or services.
The Complainant’s counsel sent a letter to the Respondent on October 5, 2011 advising the Respondent that the registration of the disputed domain name infringed trademark rights of the Complainant and requesting a transfer of the disputed domain name to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Complainant must make out its case in accordance with the requirements set out in paragraph 4(a) of the Policy. Namely the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name (paragraph 4(a)(ii)); and
(iii) the disputed domain name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
A. Identical or Confusingly Similar
The Complainant has relied on the trademark registrations of the ROACCUTANE trademark and has also submitted documents to prove established common law rights in the ACCUTANE trademark. The Panel has found that the evidence consisting of the reference to trademark registrations submitted does not prove rights to the trademarks which are valid, since the last trademark rights expired on December 3, 2010. Therefore, the Panel has deemed it necessary to visit the web site of the United Kingdom Intellectual Property Office (IPO) in order to reach the right decision. The Panel finds this undertaking to be in accordance with the consensus view regarding the Panel’s possibilities to perform a limited factual research into matters of public record. (See the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.5) Through the online trademark database of the IPO web site the Panel found out that the Complainant is the owner of the above mentioned ROACCUTANE trademark number 1119969 which has been renewed and is valid until September 3, 2020. Therefore, the Panel finds that the Complainant holds prior rights to the ROACCUTANE trademark.
Regarding the common law rights, the WIPO Overview 2.0, paragraph 1.7 states that “The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such ‘secondary meaning’ includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition” and “[h]owever, a conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required”.
The Panel has noted that prior UDRP panels in other cases have concluded that the Complainant has common law rights in ACCUTANE. This does not by itself prove that this is the case here unless supporting evidence thereof has been presented before this Panel. This Panel could have invited the Complainant to submit such materials, but since there are sufficient grounds for a decision due to the prior trademark rights in ROACCUTANE, the Panel has refrained from asking for it for practical reasons.
In this case, the Complainant has submitted four articles in support of its common law rights to ACCUTANE. The Panel notes that the most recent article is dated November 2007 and that none of the articles mention the Complainant in connection with ACCUTANE. The Panel finds that the Complainant has not proven that it holds common law rights to the ACCUTANE trademark in the meaning of the Policy.
The Panel finds that the ACCUTANE part of the Complainant’s trademark ROACCUTANE is the most distinctive element of the Complainant’s trademark and the disputed domain name. The disputed domain name combines ACCUTANE with the descriptive words “without” and “rx”. “Rx” is inter alia used as an abbreviation for the word prescription. Further, the Panel finds that the removal of “ro” and the addition of the two descriptive words does not serve to distinguish the disputed domain name from the trademark. Also, since buying the Roaccutane product generally requires a prescription, the Panel finds that the descriptive words used in the disputed domain name further increases the likelihood of Internet user confusion. (See Lime Wire LLC v. David Da Silva/Contractprivacy.com, WIPO Case No. D2007-1168)
In accordance with the findings above the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s ROACCUTANE trademark in the meaning of the Policy, paragraph 4 (a)(i). The first element of the Policy is thus fulfilled.
B. Rights or Legitimate Interests
The Complainant must make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name under Policy, paragraph 4(a)(ii), and then the burden of production shifts to the Respondent to prove its rights or legitimate interests.
The Complainant has stated that there are no business relations between the Complainant and the Respondent. Further, the print out of the web site at the disputed domain name proves that it contains information on a product named ACCUTANE and sales offers on generic products provided by competitors of the Complainant.
The Panel finds, based on the submitted WhoIs information on record and the Registrar’s verification, that the Respondent is not commonly known by the disputed domain name. Also, there are no indications that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
In the light of what is stated above, the Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name. The Respondent has not proved otherwise. Therefore, the Panel finds that the second element of the Policy is fulfilled.
C. Registered and Used in Bad Faith
The UDRP Policy, paragraph 4(b)(iv) states that if by using the domain name someone has intentionally attempted to attract, for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on someone’s web site or location, that shall be evidence of the registration and use of a domain name in bad faith.
The Panel finds the fact that the registration of the disputed domain name was made long after the Complainant’s trademark registrations of ROACCUTANE as an indication of bad faith. Also, the Panel finds it highly improbable that the Respondent has selected arbitrarily the disputed domain name’s word combination without having prior knowledge of the Complainant’s rights and business. In accordance therewith, it is the Panel’s firm view that the Respondent has registered the disputed domain name in awareness of the Complainant’s rights.
By the print out from web site linked to the disputed domain name it is proven that the Respondent is using the disputed domain name to offer information and provide sales offers on generic products provided by competitors of the Complainant using the Complainant’s trademark. The Panel finds that the Respondent’s registration and use of the disputed domain name has intentionally attempted to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainant's mark as to inter alia the source of its web site.
All in all, the Panel finds that the disputed domain name was registered and is being used in bad faith. The third element of the Policy is thus fulfilled.
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 <accutanewithoutrx.com> be transferred to the Complainant.
Dated: December 8, 2011