Hoffmann-La Roche Inc. v. Aditya Roshni, Web Services Pty
Case No. D2008-1086
1. The Parties
The Complainant is Hoffmann-La Roche Inc., Nutley, New Jersey 07110-1199, United States of America, represented by Lathrop & Gage L.C., of the United States of America.
The Respondent is Aditya Roshni, Web Services Pty, New Delhi, Delhi, India.
2. The Domain Name(s) and Registrar(s)
The disputed domain name <accutaneacne.com> is registered with Answerable.com (I) Pvt Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 17, 2008. On July 18, 2008, the Center transmitted by email to Answerable.com (I) Pvt Ltd (the “Registrar”) a request for registrar verification in connection with the disputed domain name. On July 21, 2008 and on August 1, 2008, the Registrar 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 Complainant on July 24, 2008 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on July 28, 2008. 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”), 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 August 4, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was August 24, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 25, 2008.
The Center appointed Marilena Oprea as the sole panelist in this matter on September 22, 2008. 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.
The language of the proceedings is English.
4. Factual Background
Complainant (including its affiliated companies) is one of the leading international manufacturers of pharmaceutical and diagnostic products.
Complainant owns registration on the Principal Register of the United States Patent and Trademark Office for the trademark ACCUTANE, Registration No. 966,924, of August 28, 1973 (setting forth a first use date of November 27, 1972), for goods in international class 5 “dermatological preparation”.
The mark ACCUTANE designates a dermatological preparation indicated for the treatment and prevention of acne. Complainant states that, as a result of the extensive advertising and promotion of the mark ACCUTANE in the United States of America (“United States”), the product has acquired fame and celebrity and the sales of ACCUTANE products have exceeded hundreds of millions of dollars.
Complainant's parent company, F. Hoffman-La Roche AG, owns the domain name <accutane.com> which resolves to Complainant's website wherein information on its products, including the ACCUTANE product, is made available.
The disputed domain name was created on May 4, 2007. On February 11, 2008, the Complainant addressed a letter to the holder of the domain name registered in the WHOIS database requesting the transfer of the disputed domain name to the Complainant within two weeks.
Complainant was involved as Complainant in several previous UDRP cases in relation to ACCUTANE trademark (see for example, Hoffmann-La Roche Inc. v. Guillaume Ansart, WIPO Case No. D2008-1005 regarding the domain name <buy-accutane-isotretinoin.com>; Hoffmann-La Roche Inc. v. Eric Kaiser a/k/a eDrugNet, WIPO Case No. D2003-0721 regarding the domain names < accutane-acne-treatments-medication.com>, <1accutane.com >; Hoffmann-La Roche Inc. v. Domain Ownership Limited, WIPO Case No. D2007-0891 regarding the domain name <genericaccutane.com>).
5. Parties' Contentions
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are given in the present case, as follows:
(i) The domain name <accutaneacne.com> is confusingly similar to the ACCUTANE trademark. The domain name incorporates the whole ACCUTANE trademark in addition to the descriptive word “acne”, addition of the latter does not prevent the likelihood of confusion.
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name, and has not been commonly known by the domain name; Respondent is not making a legitimate noncommercial or fair use of the domain name without intent for commercial gain.
Inter alia, Complainant contends the following: “accutane” is not a word and has no valid use other than in connection with Complainant's trademark. Complainant has not authorized Respondent to use its ACCUTANE trademark, or to incorporate the trademark into any domain name, nor is Respondent a licensee of Complainant. In fact, Respondent's use of the disputed domain name indicates that the name was selected and is being used because of the similarity to Complainant's ACCUTANE trademark in which it has established and enjoys goodwill. Based upon Respondent's website, it is clear that neither Respondent nor its website has been commonly known by the domain name <accutaneacne.com>. Further, the use of the domain name is “purely disreputable”, as on this website Internet users may purchase ACCUTANE products, as well as generic forms of the same and Complainant's competitors' products, all these to the damage of Complainant and for the commercial gain of Respondent. Moreover, Respondent's use of the domain name is a violation of the iPLEDGE program which is a FDA (U.S. Food and Drug Administration) program providing mandatory strict parameters for the sale and distribution of ACCUTANE and other Isotretinoin products in(to) the United States. Further, consumers may believe that the website reached from the disputed domain name is a site owned and/or operated by Complainant.
Respondent's use does not satisfy the test for bona fide use as Respondent uses Complainant's mark without authorization and operates a website for the same business; moreover, Respondent's website contains offers not only for ACCUTANE products but for competing products as well.
The disputed domain name is used to promote products of Complainant without its authorization, and Complainant's competitors' products, thus demonstrating Respondent's lack of legitimate non-commercial or fair use of the domain name.
(iii) The domain name was registered and is being used in bad faith.
Relying on most of the points above mentioned, Complainant contends that Respondent registered and is using the disputed domain name in bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the policy, these rules and any rules and principles of law that it deems applicable.”
In accordance with paragraph 4(a) of the Policy, the Complainant must prove to the Panel that the following three circumstances are cumulatively met in order to obtain the transfer of the disputed domain name:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent does not hold rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used by the Respondent in bad faith.
Consequently, the Panel shall further analyze the eventual concurrence of the above-mentioned circumstances in the present case. Nonetheless, before entering in the said analysis, the Panel deems necessary to clarify the issue regarding the appropriate identity of the Respondent.
Identification of Respondent
An initial search of the Whois database by the Complainant showed the apparent registrant to be “PrivacyProtect.org”, which is a service that allows registrants to protect their identity. After receiving the Center's “Request for Registrar Verification”, on July 21, 2008 the Registrar provided the Center with the correct Respondent (Registrant) of the domain name and has procedeed to disable the privacy protection service. The domain name registrant was indicated to be “Aditya Roshni, Web Services Pty”, the contact details available with the Registrar were provided to the Center.
Further, where information is available to the Center through either a change in the registration information or through a communication from the Registrar to the provider, the Center generally requests that the Complainant amend its Complaint, mentioning that such amendment is commonly made by the simple addition of the newly identified registrant to the Complaint. Consequently, the Complainant amended its Complaint and named both PrivacyProtect.org and Aditya Roshni, Web Services Pty as Respondents.
Paragraph 1 of the Rules defines “Respondent” as the holder of a domain-name registration against which a complaint is initiated.
The Panel must therefore identify the appropriate Respondent or Respondents in this case. This leads to the question, addressed by previous panels as well, whether a privacy service provider should be considered as the Respondent or one of the Respondents in the administrative procedure, should the identity of the real registrant be disclosed before the procedure starts. In such previous cases panels either (1) treated both the initially listed registrant (privacy service provider) and the subsequently disclosed registrant as the Respondent (Ohio Savings Bank v. 1&1 Internet, Inc. and David Rosenbaum, WIPO Case No. D2006-0881; Microsoft Corporation v. Whois Privacy Protection Service / Lee Xongwei, WIPO Case No. D2005-0642) or (2) elected to disregard the privacy service provider entirely and to analyze only the acts of the underlying registrant (Costco Wholesale Corporation and Costco Wholesale Membership Inc. v. Yezican Industries and Domains By Proxy, Inc., WIPO Case No. D2007-0638; The iFranchise Group v. Jay Bean / MDNH, Inc. / Moniker Privacy Services , WIPO Case No. D2007-1438).
As the Registrar provided the information regarding the disputed domain name registrant before the proceedings were formally notified (see also WIPO Case No. D2007-1438 above), Aditya Roshni Web Services Pty is the domain name holder currently listed with the Whois database and the private protection service was disabled immediately after receiving the request for registrar verification, the Panel elects to treat Aditya Roshni, Web Services Pty as the Respondent in this case.
A. Identical or Confusingly Similar
There are two requirements that a Complainant must establish under this paragraph, namely: that it has rights in a trade or service mark, and that the domain name is identical or confusingly similar to the mark.
Complainant has held the ACCUTANE trademark registration since 1973.
As found in the previous cases, specifically Hoffmann-La Roche Inc. v. Eric Kaiser a/k/a eDrugNet, WIPO Case No. D2003-0721 “the generic descriptors to the word “accutane” are not sufficient to negate the confusing similarity between the domain names and Complainant's trademark.”
The Panel agrees with the previous UDRP panels and concludes that adding the descriptive term “acne” to a domain name incorporating entirely a trademark, does not prevent the domain name from being confusingly similar to the Complainant's registered trademark, therefore the <accutananeacne.com> domain name, after disregarding the “.com” generic Top Level Domain, is confusingly similar to Complainant's ACCUTANE trademark.
As per the above mentioned, the Panel finds that the first element of the Policy is established, and Complainant has proven that the disputed domain name is confusingly similar to the trademark in which Complainant has rights, pursuant to the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
Complainant has provided a prima facie case under this element of the Policy showing that it has had no relationship with Respondent and has not granted Respondent any right to use its trademark. Further, the burden of proof on this element shifts to Respondent; either by demonstrating one of the three circumstances under paragraph 4(c) of the Policy or by providing other relevant acceptable grounds.
Respondent failed to submit any Response to the Complaint, and to Complainant's cease & desist letter prior to commencing the administrative proceeding, thus the Panel might infer a lack of rights or legitimate interests from this as well. Further, there is sufficient evidence of record to establish that Respondent does not hold rights or legitimate interests in respect of the disputed domain name.
Respondent's use of Complainant's distinctive well-known trademark is infringing. Such unlawful use of the domain name cannot be considered bona fide.
There is no evidence to suggest that Respondent has made a bona fide use of the disputed domain name, or has been known by this domain name, or is making any legitimate noncommercial or fair use of the domain name. To the contrary, the disputed domain name is being used to promote and offer on various sponsored links competing products as well as Complainant's ACCUTANE product, although the dispersion of this product via the Internet in this manner is forbidden, according to the product labeling. This is definitely not a bona fide use of a domain name.
For these reasons, the Panel finds that the second element of the Policy is established, and the Respondent has no rights or legitimate interests in respect of the domain name, pursuant to the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
There is no doubt in this case that the domain name was initially registered with Complainant's trademark and corresponding product in mind as the domain name, which was registered some 30 years after Complainant's applicable trademark registration, incorporates entirely Complainant's mark ACCUTANE together with the descriptive term “acne”, while Complainant's ACCUTANE product is a treatment for acne.
Also, paragraph 4(b)(iv) of the Policy lists as a typical situation of bad faith evidence the fact of “using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website.”
Based on the record in this case, Respondent used Complainant's known trademark in the pharmaceutical industry to attract Internet users to its website for commercial gain, as the domain name leads to various sponsored links. It is clear that the Respondent is using the disputed domain name to direct traffic to a website where Respondent obtains commercial gain through sponsored listings. As the panel found in Digital Spy Limited v. Moniker Privacy Services and Express Corporation, WIPO Case No. D2007-0160, “[r]egistering a domain name with knowledge of another company's rights in the name, and with intention to divert traffic, is evidence of bad faith.”
Some of these sponsored links are leading to online pharmacies promoting products manufactured by competitors of Complainant which directly compete with ACCUTANE. As a previous panel stated the “registration and use of a domain name to redirect Internet users to websites of competing organizations constitutes bad faith registration and use under the Policy” (see Edmunds.com, Inc. v. Ult. Search Inc., WIPO Case No. D2001-1319).
Respondent has no rights, no authorization whatsoever from Complainant with regard to ACCUTANE trademark or product.
Further, Respondent has not replied to Complainant's cease & desist letter, has not contested any of the allegations made by Complainant, and did not provide any evidence of any legitimate noncommercial, or fair use of the disputed domain name.
For all these reasons, the Panel finds that the third element of the Policy is established, accordingly the disputed domain name was registered and is being used in bad faith, pursuant to the Policy, paragraph 4(a)(iii).
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, <accutaneacne.com> be transferred to the Complainant.
Dated: October 6, 2008