WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Roche Products Limited v. PrivacyProtect.org / Stas Chernov
Case No. D2011-2096
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 (“United States”).
The Respondent is PrivacyProtect.org, Domain Admin of Nobby Beach, Null, Queensland, Australia; Stas Chernov of Voronezh, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <accutanebuyonline.com> is registered with DomainContext, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 30, 2011. On November 30, 2011, the Center transmitted by email to DomainContext, Inc. a request for registrar verification in connection with the disputed domain name. On December 6, 2011, DomainContext, 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 December 7, 2012 providing the registrant and contact information disclosed by DomainContext, Inc., and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 10, 2012.
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 December 21, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 10, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 11, 2012.
The Center appointed John Katz QC as the sole panelist in this matter on January 30, 2012. 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 multinational pharmaceutical company with global operations in over 100 countries. It is one of the world’s leading research-based companies marketing pharmaceuticals and diagnostics. Its name is well known in the field of pharmaceuticals generally and in particular in the world of prescription drugs as an innovator. Little introduction to it is required.
It is generally accepted that Hoffmann-La Roche is credited with the discovery of the beneficial uses of the compound known as Isotretinoin for the treatment of cystic acne, a dermatological condition that causes anxiety, stress and embarrassment to untold hundreds of thousands of people. Although the original compound, marketed by the Complainant or its related companies as either Accutane or Roaccutane, was patented, the patent has long since expired. As a result of this there are a number of generic products in the market using the same or similar active ingredients.
The generic name of the Complainant’s product is Isotretinoin. The product was however marketed under and by reference by its trade name “Accutane” or “Roaccutane”. That name was protected by the Complainant pursuant to various trade mark registrations for ROACCUTANE in numerous countries worldwide. A number of those registrations are in evidence and a search of Trade Mark Offices in other countries shows a consistency of protection of the trade mark.
The trade mark, whether ACCUTANE or ROACCUTANE, has been used by the Complainant for nearly 40 years as a result of which it is synonymous with the product developed and marketed by the Complainant or one of its associated entities. Although it appears sales are no longer quite as significant or substantial (due presumably to the entry of generic competitors) the registered trade marks remain as also does the common law goodwill and the Complainant is entitled to enforce its rights and does so.
Although there are a number of generic products on the market worldwide, the active ingredient remains essentially the same. The compound is one that is extremely difficult to obtain and market in certain jurisdictions without regulatory approval due to a significant number of side effects. Hence, in many countries it may only be obtained by prescription from a medical professional. These points are made not as any comment on the drug itself but to highlight its potency and side effect profile and thus the danger in allowing unregulated sale of generic equivalents on line.
The Respondent, according to the Complainant, offers on line purchasing of generic Isotretinoin through its associated websites. These are marketed and identified on the websites by reference variously to the compound Isotretinoin and also the trade mark ACCUTANE or ROACCUTANE, which, as can immediately be seen, includes the entire registered trade mark ROACCUTANE.
The web pages captured and printed off by the Complainant and in evidence show that the disputed domain name is used to advertise, promote and sell generic Accutane. The screens clearly use the trade mark ROACCUTANE together with ACCUTANE. The English on the primary screen is stilted, suggestive of a non English speaking residence for the supplier.
The other pages or screens contain prescribing or patient information but appear to be in a proper or non stilted manner perhaps suggestive of different authorship than the primary screen or copying from another source.
There are links to another website “www.basic-pills.com” which is a portal to enable visitors to click on various indications or illnesses and see what treatments are available and what pharmaceuticals can be obtained on line. This would suggest a large scale operation. The checkout defaults to another website “www.secure-paypage.com”.
The various screens in evidence show and therefore reflect the concerns of the Complainant that the true Respondent Stas Chernov is using the Complainant’s trade marks and is also using them for the purposes of marketing generic Isotretinoin. That is suggestive of some link or affiliation with the Complainant, contrary to the fact. The Complainant is also concerned that the Respondent is marketing a controlled prescription drug over the internet but without the type of regulatory safeguard that accompanies prescription-only medicines.
The Respondent PrivacyProtect.org is a well known entity that offers people anonymity in respect of registered domain names. As its website states “It masks all personal details of the true owner of the domain name”. The organization does not act as a mailbox and states that to contact the anonymous owner of a domain name and inquire it must complete an online form.
There is nothing of itself wrong or unlawful about such a service. But it does allow people who wish to use or trade in domain names to do so with apparent anonymity. By utilizing such a facility true owners of domain names must accept that notifications and correspondence with the privacy service provider may not be passed on.
5. Parties’ Contentions
The Complainant relies upon its registered trade marks. It could also rely upon the common law goodwill built up over the years through the marketing and sale of the product under and by reference to the trade mark ROACCUTANE.
The Complainant contends that any pharmaceutical for the treatment of acne and advertised, promoted and sold under and by reference to the trade mark ACCUTANE or ROACCUTANE would be regarded by consumers or potential purchasers as likely to be a product of or associated in some way with the Complainant. That is due to the registered trademarks ROACCUTANE which adds only the prefix RO to the mark ACCUTANE. The Complainant contends that it is entitled to protect its trade marks and that <accutanebuyonline.com> is confusingly similar. The Complainant also contends that the Respondent does not have any rights or legitimate interests in the disputed domain name and that the Respondent registered and use the disputed domain name in bad faith.
As the Respondent has defaulted there is no evidence or submission from it. The Complainant sent a letter before action to the Respondent PrivacyProtect.org. At that stage the details of the co-Respondent Stas Chernov were not known. It does not appear from the case file if a subsequent letter before action was sent to Stas Chernov. However the letter to the Respondent PrivacyProtect.org indicated it may not be the true registrant of the disputed domain name and therefore asked for such details to be provided. None appear to have been forthcoming.
The amended Complaint was sent to PrivacyProtect.org in Queensland, Australia, and to Stas Chernov at the address given, in the Russian Federation. The Respondents have been given every opportunity to respond. Neither has done so. Despite the apparent absence of a further letter before action to Stas Chernov in the Russian Federation, it is clear that that person has received the amended Complaint so is without doubt on notice of the Complaint.
6. Discussion and Findings
The Policy is directed towards resolving disputes concerning allegations of abuse of domain name registrations.
As part of the process, a complainant must provide evidence and submissions in support of its complaint. The expectation is that the complainant will provide such supporting evidence as is necessary to make out its case under all three heads in paragraph 4(a) of the Policy. The respondent is given full opportunity to respond. In this instance, both the Respondents have defaulted.
Paragraph 4(a) of the Policy sets out three elements that must be established by a complainant to merit a finding that a respondent has engaged in abuse of domain name registration and to obtain relief. These elements are that:
(i) the respondent’s domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the respondent’s domain name has been registered and is being used in bad faith.
Each of three elements must be established by a complainant to warrant relief.
A. Identical or Confusingly Similar
As to the first ground, the disputed domain name must be shown to be identical or confusingly similar to trade marks in which the Complainant has rights.
The Complainant must establish that it has registered or unregistered trade mark or service mark rights and that those rights are being abused by the Respondent.
The Complainant has registered trade marks in various jurisdictions worldwide, which registrations are for ROACCUTANE. That mark includes the word ACCUTANE. It is understood that in the United States at least, ROACCUTANE was known as ACCUTANE for some years. The disputed domain name drops the prefix “RO” and adds the descriptive suffix “buyonline”. The suffix is no more than an indication that perfectly describes the facility or function of enabling visitors to the website to purchase on line the medicament known as Accutane or Roaccutane. The prefix “RO” adds little if anything as the dominant part of the mark as used in the disputed domain name is ACCUTANE. Moreover, the screens from the site show that both ACCUTANE and ROACCUTANE are used as marks, as if they were one and the same and interchangeable.
The Complainant covers these issues fully and it suffices to say that the adoption or incorporation of the essential part of the registered trade mark (ACCUTANE as a part of ROACCUTANE) into the disputed domain name must be the use of a name or mark that is confusingly similar. There is no question that the Complainant has rights to the trade mark ROACCUTANE whether pursuant to its registrations in the various jurisdictions around the world or at common law. The prefix “RO” or the descriptive suffix “buyonline” as used in the disputed domain name cannot save the domain name.
The Panel accordingly finds that paragraph 4(a)(i) of the Policy is made out.
B. Rights or Legitimate Interests
As to the second ground, that there are no rights or legitimate interests possessed by the Respondent, the Respondent does not put forward in evidence any business or trading operation known as or by reference to the trade mark in suit thereby justifying a proprietory right to the mark.
Under paragraph 4(a)(ii) a respondent can justify its registration of a domain name on certain grounds some of which are set out in paragraph 4(c) of the Policy. Such grounds resolve broadly to own name use, bona fide use, or legitimate noncommercial or fair use.
Even though the Respondent has defaulted, it is not sufficient simply to assume from that that the Respondent has no rights or legitimate interests or can claim none.
The use of which complaint is made is of the mark ACCUTANE in the disputed domain name. Given the findings in B above the Respondent would need to demonstrate that it has some rights or legitimate interests in that mark or name. Clearly it is entitled to market its products (pharmaceutical regulatory issues aside) under and by reference to the active ingredient or the generic name, Isotretinoin. That is used in some of the screens and there can be, and indeed is, no objection to that. But the Respondent is not entitled to use the registered or unregistered trade marks of the Complainant or any colourful imitations of them.
The Complainant has not granted any licence or authority to the Respondents to use the trade mark. It can only be assumed that the Respondents’ use is deliberate and as a tool or device to attract visitors to the websites in the hope of selling generic Isotretinoin.
The other screens in evidence show that the Respondent Stas Chernov is also advertising marketing and offering for sale other pharmaceuticals including those which compete with products of the Complainant, presumably also without any authorization from third parties.
The Complainant again discusses these issues fully and has satisfied the Panel that the Respondent could not possibly have any rights or legitimate business interests in using or incorporating the dominant part of the Complainant’s trade mark in the disputed domain name.
There being no response from the Respondent, the Complainant more than satisfies its obligations of proof under this head.
The Panel accordingly finds that paragraph 4(a)(ii) of the Policy is made out.
C. Registered and Used in Bad Faith
As to the third ground, this requires that the disputed domain name be registered and used in bad faith. As has previously been said in other UDRP Panel decisions together with earlier decisions of this Panel, both elements must be made out. Accordingly, both registration and use in bad faith have to be established by the Complainant.
This is not the place, nor is it the purpose of the Policy or the ICANN procedures to seek to regulate on-line offering for sale of pharmaceuticals especially those that may generally only be purchased on prescription.
Nevertheless, such activities by providers who shelter behind a mask of anonymity and largely beyond the control of Governmental regulators such as the United States Food and Drugs Administration or the Australian Therapeutic Goods Administration can potentially cause immense damage to the owners of trade marks where the website in issue uses or incorporates those trade marks to offer for sale and sell unregulated generic pharmaceuticals. That is activity of which a proprietary pharmaceutical company and innovator such as the Complainant may quite properly be concerned.
The registered and unregistered trade marks rights of the Complainant go back well over 30 years. The disputed domain name was registered on October 5, 2011. Given the discussion and findings under A and B above it must follow that the registration of the disputed domain name was in bad faith, for the purposes of trading on the good will of the Complainant and its product.
But the Complainant must also establish use in bad faith. The websites were until recently active as described above (they are now blocked), there is clearly here also use in bad faith.
The Panel accordingly finds that paragraph 4(a)(iii) of the Policy is made out.
For all 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 <accutanebuyonline.com> be transferred to the Complainant.
John Katz QC
Dated: February 13, 2012