WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Roche Products Limited v. Private Whois Service

Case No. D2010-1983

1. The Parties

Complainant is Roche Products Limited of San Francisco, California, United States of America, represented by Lathrop & Gage LLP, United States of America.

Respondent is Private Whois Service of Nassau, Bahamas.

2. The Domain Name and Registrar

The disputed domain name <orderaccutaneonline.com> is registered with Internet.bs Corp.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 19, 2010. On November 19, 2010, the Center transmitted by email to Internet.bs Corp. a request for registrar verification in connection with the disputed domain name. On November 20, 2010, Internet.bs Corp. transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on November 23, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 13, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 21, 2010.

The Center appointed Francisco Castillo-Chacón as the sole panelist in this matter on January 7, 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

Complainant and its affiliated Companies (“Roche”), is a large pharmaceutical company with operations in over 100 countries. Complainant owns several trademarks amongst which we find ROACCUTANE and ACCUTANE. Registrations for the former date back to 1979 and to 1972 for the latter.

The trademark ROACCUTANE owned by Complainant is used for the treatment of severe nodular and/or inflammatory acne conglobata or recalcitrant acne.

Complainant has used ACCUTANE as a trademark for many years; it still uses it on a limited basis on a medication used to treat acne.

Complainant has spent resources in promoting and building the trademarks ACCUTANE and ROACCUTANE. Complainant operates the domain name <accutane.com>.

The disputed domain name was registered on October 15, 2010. The disputed domain name resolves to a website linked to an online pharmacy were competitive third party products are offered for sale.

5. Parties’ Contentions

A. Complainant

Complainant contends that the disputed domain name is identical or confusingly similar to Complainant’s ACCUTANE and ROACCUTANE trademarks. Respondent has no rights or legitimate interests and Respondent registered and is using the disputed domain name in bad faith. Complainant operates the domain name <accutane.com>.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Effect on Default

There is a consensus that a respondent's default does not automatically result in a decision in favor of the complainant, the complainant must still establish each of the three elements required by paragraph 4(a) of the UDRP (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.2). Notwithstanding this, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.

This Panel has not found any exceptional circumstances to justify Respondent’s failure to submit a Response. In short Respondent does not expressly deny any of the facts stated by Complainant and the Panel therefore infers that Respondent does not deny the facts asserted and contentions made by Complainant from these facts. Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084; Ross-Simons, Inc. v. Domain.Contact, WIPO Case No. D2003-0994.

Thus this Panel will take Complainant’s assertions as facts, including the fact that Respondent is selling a generic product, not manufactured by Complainant, and other acne and other third party pharmaceutical products through the linked site “www.your-drug-store.com”.

With that being said, asserted facts that are not unreasonable will be taken as true and Respondent will be subject to the inferences that derive from the information provided by Complainant. Reuters Limited v. Global Net 2000, Inc., Supra; RX America, LLC. v. Matthew Smith, WIPO Case No. D2005-0540.

B. Identical or Confusingly Similar

Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

Complainant’s trademark rights are measured as at the date when the Complaint was filed. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 1.4.

Respondent registered the disputed domain name well after Complainant established rights in its ACCUTANE and ROACCUTANE trademarks, (see, e.g., Dow Jones & Company, Inc. v. Idea Studios LLC dba Envent, WIPO Case No. D2009-1033). Complainant has clearly demonstrated that it had registered national and international trademarks ACCUTANE and ROACCUTANE well before October 2010 when the disputed domain name was registered. Complainant further evidenced its rights over the domain name <accutane.com>.

Previous UDRP panels have held that when a domain name wholly incorporates a complainant's registered trademark, this is sufficient to establish confusing similarity for purposes of the Policy. See, e.g., Telstra Corporation Limited v. Barry Cheng Kwok Chu, WIPO Case No. D2000-0423; Pfizer Inc. v. United Pharmacy Ltd., WIPO Case No. D2001-0446; E.I. du Pont de Nemours and Company v. Richi Industry S.r.l., WIPO Case No. D2001-1206; Utensilerie Associate S.p.A. v. C & M, WIPO Case No. D2003-0159; Shaw Industries Group Inc., Columbia Insurance Company v. Wan-Fu China, Ltd., WIPO Case No. D2007-0282. This Panel believes that likelihood is increased by the generic words added to the registered trademark, as any person would believe that he or she could order Complainant’s Accutane product through the website at the disputed domain name. The Panel has found no facts or arguments that could justify a dissent from the consensus view, therefore in consent with previous panels, this Panel finds that the mere addition of a generic terms such as “order” or “online” to a trademark such as ACCUTANE, does not eliminate the confusing similarity between the two, in this case the Panel believes the choice of words increases the likelihood of confusion. The Panel also finds that the disputed domain name is confusingly similar to the ROACCUTANE trademark.

Therefore the Panel finds that the disputed domain name is confusingly similar to Complainant’s ACCUTANE and ROACCUTANE trademarks.

C. Rights or Legitimate Interests

Complainant has made its prima facie case that Respondent lacks any rights or legitimate interests in the disputed domain name. Respondent failed to respond or to offer any evidence to demonstrate that Complainant has ever authorized it to use the ACCUTANE or ROACCUTANE trademarks in a domain name.

The Panel finds no bona fide offering of goods and services in this case, where the disputed domain name incorporates a site is using a registered trademark as part of its name to directly or indirectly solicit orders for pharmaceutical products without a license or authorization from the trademark holder, even if such solicitation is done through a site linked to the website at the disputed domain name.

It is the view of this Panel that Complainant has satisfied its burden and provided the Panel with sufficient evidence to meet the prima facie requirement showing that Respondent has no rights to or legitimate interests in the disputed domain name. By defaulting in the proceedings Respondent has not provided the Panel with any evidence to demonstrate rights or legitimate interests in the disputed domain name as set forth in paragraph 4(c) of the Policy. Therefore the Panel concludes that Respondent has no rights or legitimate interests in the disputed domain name. Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465. This holding is consistent with WIPO Panel Views on Selected UDRP Questions, paragraph 2.1., pursuant to which “once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.”

For all of these reasons, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied by Complainant

D. Registered and Used in Bad Faith

It is evident from the content of the website at the disputed domain name that Respondent knew about ACCUTANE and its uses, as the nature and use of the product is described on it. It is even more evident after following the link which reads “Click Here To Order Accutane” the page were the visitor is directed clearly depicts a box of Complainant’s product ACCUTANE, the picture even shows “Roche”. Though the Panel believes the picture to correspond to an actual box of Complainant’s product, according to Complainant assertions the product being sold is not Complainant’s product, but rather a generic version made by a competitor, no evidence was submitted to contradict such assertion, hence the Panel will acknowledge it as true.

The Policy indicates that certain circumstances may, "in particular but without limitation", be evidence of bad faith (Policy, paragraph 4(b)). Among these circumstances are (1) that the domain name has been registered or acquired by a respondent "primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [respondent’s] documented out-of-pocket costs directly related to the domain name" (Id., paragraph 4(b)(i)); (2) that a respondent has registered the domain name "in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct" (id., paragraph 4(b)(ii)), and (3) that a respondent "by using the domain name, … [has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] web site or location of a product or service on [its] web site or location" (id., paragraph graph 4(b)(iv)).

It is clear to this Panel that Respondent is only using the disputed domain name to attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant’s mark as to the source of a product. For the lay person it would seem as if the site is affiliated to Complainant, and that Respondent is an authorized distributor of the product. The Panel does not consider Respondent’s non compliance with the iPledge program, first because Respondent is not domiciled in the United States, hence compliance with the program would not be mandatory, but mainly because not complying with an FDA program should be addressed at a different forum.

Absent some exceptional justification from Respondent, it is reasonable to infer that Respondent registered the domain name with the primary intention of either confusing visitors as to the source of the domain name or simply benefiting from Complainant’s well established trademark. This constitutes bad faith within the meaning of the Policy.

The Panel does not believe that the reproduction of Complainant’s trademark in the disputed domain name is an accident, as ACCUTANE has no meaning in English which is the language of the disputed domain name. It is evident Respondent knew about Complainant’s trademark and its product after reviewing the content of the web site and its link. The Panel concurs with previous UDRP decisions holding that registration of a well-known trademark as a domain name may be a further evidence of bad faith. See PepsiCo, Inc. v. "null", aka Alexander Zhavoronkov, WIPO Case No. D2002-0562; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Pepsico, Inc. v. Domain Admin, WIPO Case No. D2006-0435.

The Panel also finds that in this case the content of the website is especially relevant in the finding of bad faith. As indicated before, Respondent's website contains a description of Complainant’s product, its uses, and it would appear to be a supplier of the product. The Panel concurs with the understanding of several other UDRP panels that in circumstances similar to this case the use of a domain name to point to a website that offers competing products is an evidence of bad faith. It has been clearly established in this case that Complainant registered and has been using the trademark ACCUTANE and ROACCUTANE long before the disputed domain name was registered. Mudd, (USA) LLC v. Unasi Inc. (MUDDPRODUCTS COM DOM), WIPO Case No. D2005-0591; Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556.

Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <orderaccutaneonline.com> be transferred to Complainant.

Francisco Castillo-Chacón
Sole Panelist
Dated: January 20, 2011