WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Roche Products Limited v. Tycoon
Case No. D2011-1807
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 Tycoon of Groningen, Netherlands.
2. The Domain Name and Registrar
The disputed domain name <accutane10mg.org> is registered with Todaynic.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 Todaynic.com, Inc. a request for registrar verification in connection with the disputed domain name. On November 3, 2011, November 7, 2011 and November 9, 2011, Todaynic.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 November 9, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 29, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 1, 2011.
The Center appointed Philippe Gilliéron as the sole panelist in this matter on December 22, 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 a company incorporated under the laws of United Kingdom which belongs to the pharmaceutical group Roche, one of the world’s leading research-focused healthcare groups in the fields of pharmaceutical and diagnostics which has global operations in more than hundred countries.
The Complainant holds the verbal trademark ROACCUTANE in numerous countries. Such in particular is the case in the United Kingdom (under Reg. No. 1119969) and Ireland (Reg. No. 96401) in class 5 of the Nice Classification, for both countries since September 3, 1979.
The trademark ROACCUTANE designates a drug, namely isotretinoin, which is indicated for the treatment of severe nodular and/or inflammatory acne conglobate or recalcitrant acne. The isotretinoin has been heavily marketed and promoted under the brand Accutane, in particular in the United States since at least 1982, and is usually prescribed in doses of 10 to 40mg doses.
The disputed domain name <accutane10mg.org> was registered on September 9, 2011. Prior to the filing of the Complaint, the disputed domain name was directing towards a website selling drugs labeled under the brand Accutane without any authorization from the Complainant.
On October 5, 2011, the Complainant sent a cease and desist letter as well as an email to the Respondent, drawing Respondent’s attention upon the infringement of its rights, and inviting the Respondent to cease its sales activity and transfer the disputed domain name in its favor. While the cease and desist letter was returned to the Complainant as the recipient was unknown at the indicated address, the email appears to have reached the Respondent. The Respondent did not respond.
5. Parties’ Contentions
The Complainant first argues that it enjoys unregistered rights in the trademark ACCUTANE, which has been used by Roche since 1972 by extensively promotion in print advertisements, medical journals, television advertising, etc. ACCUTANE in any case is fully contained in the registered trademark ROACCUTANE. The addition of the figure “10” (ten) and the acronym “mg” being merely descriptive, the Complainant asserts that these elements have to be excluded from the appraisal and that, as a result, the disputed domain is confusingly similar with its trademarks.
The Complainant further affirms that it has never granted any authorization or license to the Respondent with regards to its trademarks. The unauthorized sales of generic products depicting the Accutane brand in a confusing way can obviously not be considered as a bona fide offering of products, and cannot lead to any rights or legitimate interests of the Respondent.
The Complainant finally claims that, by having registered and using the disputed domain name, the Respondent seeks to capitalize upon the Complainant’s trademarks reputation. These elements and the unauthorized sale of generic products bearing the Complainant’s trademarks increase the likelihood of confusion among users and are clear evidence that the disputed domain name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “[…] decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) The disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service 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 has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
According to the Policy, paragraph 4(a)(i), the Complainant has to prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
While the Complainant holds a registered trademark ROACCUTANE, the disputed domain name is <accutane10mg.org>. The Complainant mostly bases its claim upon the distinctive sign Accutane that however does not appear to have been registered as a trademark.
According to prior UDRP panels, for a number of reasons, including the nature of the Internet, the availability of trademark-like protection under passing-off laws, and considerations of parity, unregistered rights can be taken into account for the purposes of the UDRP even when the complainant is based in a civil law jurisdiction (see paragraph 1.7 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) and quoted references).
In the present case, the Complainant has demonstrated that Accutane has undoubtedly gained distinctiveness for the drug commonly designated under that brand since 1982, and enjoyed a wide reputation in this industry thanks to the heavy marketing and success of the product from that date. While one may wonder whether that designation has not enjoyed such success and gained such distinctiveness as to become a generic word for the drug itself, the Panel however considers that it is not up to it to solve such a legal issue considering the limited scope of these proceedings, and that such concerns shall be left for state courts to rule upon.
As a result, the Panel considers that the Complainant enjoys unregistered trademark rights in the ACCUTANE designation, all the more than it is seated in the United Kingdom, and can therefore base its claim upon such unregistered trademark rights.
Consequently, the similarity between the unregistered trademark ACCUTANE and the disputed domain name leaves no doubt in the Panel’s opinion.
It is indeed widely agreed upon that incorporating a trademark into a domain name can be sufficient to establish that the domain name is identical or confusingly similar to a registered trademark for purposes of the Policy (see e.g. Bayerische Motoren Werke AG, Sauber Motorsport AG v. Petaluma Auto Works, WIPO Case No. D2005-0941 and Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358).
Such happens to be the case here. The disputed domain name <accutane10mg.org> incorporates the unregistered trademark ACCUTANE in its entirety. The mere addition of the term “10mg”, which refers to the prescribed dose of the drug, is merely descriptive and bears no influence with regards to the confusing similarity resulting from such incorporation.
As a result, the Panel finds that the Policy, paragraph 4(a)(i) has been satisfied.
B. Rights or Legitimate Interests
According to the Policy, paragraph 4(a)(ii), the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.
As the panel stated in Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624, demonstrating that the respondent has no rights or legitimate interests in the domain name “would require complainant to prove a negative, a difficult, if not impossible, task.” Thus, in that decision, the panel opined that “[w]here a complainant has asserted that the respondent has no rights or legitimate interests in respect of the domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting this assertion”. Following that decision, subsequent panels developed a consensual view that it was deemed sufficient for a complainant to make a prima facie case that the respondent lacks rights or legitimate interests in a domain name. Once a prima facie case has been made, it is the respondent’s burden to demonstrate its rights or legitimate interests. If it fails to do so, the complainant is deemed to have satisfied to paragraph 4(a)(ii) of the Policy (see e.g. paragraph 2.1 of WIPO Overview 2.0).
In the present case, the Panel finds that the Complainant has made a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name. It is therefore the Respondent’s burden to demonstrate rights or legitimate interests by showing, among other circumstances, any of the following elements (paragraph 4(c) of the Policy):
(i) Before any notice to it of the dispute, he used or made preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) The Respondent is commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) The Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
In the case at hand, the Respondent did not respond to the Complainant’s allegations and therefore did not rebut the Complainant’s prima facie case, failing to invoke any circumstances that could demonstrate any rights or legitimate interests in the disputed domain name.
The Respondent’s lack of rights or legitimate interests in the disputed domain name further results from the content of the website attached to the disputed domain name. As convincingly pointed out by the Complainant, the Panel finds that the Respondent has extensively reproduced the unregistered trademark ACCUTANE to offer products – arguably generics – without the prior authorization of the Complainant. The unauthorized reproduction of third parties’ trademarks on a website for identical or similar products whose authenticity is more than doubtful typically amounts to abusive use (see, among others: ECCO Sko A/S v. He Shaonan, Lin Zhiyuan, Qinghuo Ou, WIPO Case No. D2010-0650; GoDaddy.com Inc. v. GoDaddysDomain.com, Clark Signs, Graham Clark, WIPO Case No. D2007-0303). Such decisions are in line with another line of decisions according to which the use of third parties’ trademarks for commercial purposes do not typically constitute a bona fide use of these terms (See e.g. F. Hoffmann-LaRoche AG v. Transliner Consultants, WIPO Case No. D2007-1359; National Football League v. Peter Blucher d/b/a BluTech Tickets, WIPO Case No. D2007-1064).
Consequently, in light of the above, the Panel considers the Policy, paragraph 4(a)(ii) to be fulfilled.
C. Registered and Used in Bad Faith
For a complaint to succeed, a panel must be satisfied that a domain name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).
In this Panel’s review, to have registered the disputed domain name in bad faith, the Respondent first must have been aware of the existence of the Complainant’s trademark.
In that regard, the Panel first notes that the Complainant has been extensively using and promoting its product under the term Accutane since at least 1982, i.e. decades before the registration of the disputed domain name in 2011.
In the present case, there is no doubt in the Panel’s opinion that the Respondent must have been aware of the existence of the Complainant’s trademarks when it registered the disputed domain name. Further, the Panel finds that bad faith becomes obvious when one takes a look at the content of the website, which reproduces to a large extent the Complainant’s products labeled under the trademark ACCUTANE whose authenticity appears to be more than doubtful. Should the Respondent have been an official retailer, it would have been up to him to come forward with evidence substantiating such authorization; absent any explanation, and considering the Complainant’s assertions that such an authorization has never been granted, the Panel is convinced that the disputed domain name has been registered and is being used in bad faith (paragraph 4(b)(iv) of the Policy). As ruled by prior UDRP panels, use of the disputed domain name to promote sales of competitors’ products through use of the Complainant’s trademark demonstrate bad faith (F. Hoffmann-La Roche, Inc., v. Samuel Teodorek, WIPO Case No. D2007-1814; Pfizer Inc. v. jg a/k/a/ Josh Green, WIPO Case No. D2004-0784; Casio Keisanki Kabushiki (Casio Computer Co., Ltd.) v. Jonchan Kim, WIPO Case No. D2003-0400).
For these reasons, the Panel finds that the Respondent both registered and is using the disputed domain name in bad faith and that the Complainant has therefore made out the third element of its case.
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 <accutane10mg.org> be transferred to the Complainant.
Dated: December 29, 2011