WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Roche Products Limited v. Private Person, Livas V Kusheykas
Case No. D2011-0754
1. The Parties
The Complainant is Roche Products Limited of Welwyn Garden City, United Kingdom of Great Britain and Northern Ireland and Genentech, Inc. of South San Francisco, California, United States of America.
The Respondent is Private Person, Livas V Kusheykas of Riga, Latvia.
2. The Domain Names and Registrar
The disputed domain names <accutanesale.com> and <buyaccutanewithnoprescription.com> (the “Disputed Domain Names”) are registered with NetEarth One Inc. d/b/a NetEarth.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 29, 2011. On May 2, 2011, the Center transmitted by email to NetEarth One Inc. d/b/a NetEarth
a request for registrar verification in connection with the Disputed Domain Names. On May 3, 2011, NetEarth One Inc. d/b/a NetEarth 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 May 12, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 1, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 20, 2011.
The Center appointed William P. Knight as sole panelist in this matter on June 20, 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 creation of each of the Disputed Domain Names dates from January 13, 2011.
The Complainant is a United Kingdom of Great Britain and Northern Ireland (the “UK”) company and a member of a very large, multinational group of companies which has traded for many decades. The Complainant asserts and provides supporting information that it is the owner of the trademark ROACCUTANE in many countries, dating back to 1979, including:
(a) UK registered trademark No. 1119969 in class 5, with a priority date of September 3, 1979;
(b) Irish registered trademark No. 96401 in class 5, with a priority date of September 3, 1979;
(c) Malaysian trademark No. 87003256 in class 5;
(d) Singaporean trademark No. T79/83324F in class 5.
The product referred to as Roaccutane is extremely well-known internationally. It is based upon the drug isotretinoin, and is indicated for the treatment of severe nodular and/or inflammatory acne conglobate or recalcitrant acne. From a date prior to 1979, the Complainant and its related companies have also supplied internationally a predecessor product called Accutane, which has continued to be sold until at least recent times.
Each of the Disputed Domain Names is being used in a manner which represents that it is that of an “on-line drugstore” known as “Canadian Healthcare”, which is patently false, offering to sell various prescription medications, including Viagra as well as Accutane, and even including free Viagra pills with certain purchases of Accutane. The website includes an image of the packaging of the Complainant’s product.
Referring to the product description of Accutane alone, is the Respondent’s website has what can only be described as a laughably incompetent translation of something supposedly describing Accutane or Roaccutane, were it not for the fact that the supply of prescription medications without prescription – assuming that the products offered are, somehow, genuine and, if not, of completely unknown provenance - is such a serious, worldwide, and dangerous practice.
5. Parties’ Contentions
In accordance with paragraph 4(a) of the Policy, the Complainant asserts, inter alia, as follows:-
(i) that each of the Disputed Domain Names is confusingly similar to the Complainant’s registered trademarks; and
(ii) that the Respondent has no rights or legitimate interests in respect of either of the Disputed Domain Names; and
(iii) that each of the Disputed Domain Names has been registered and is being used in bad faith.
In respect of (i) and (ii), in addition to the undisputed international reputation of the Complainant in the trademark ROACCUTANE, the Complainant relies upon its trading reputation in ACCUTANE. The Complainant also refers the Panel to earlier decisions Roche Products Limited v. Domains by Proxy, Inc./Christian Hunter, WIPO Case No. D2010-1892 which found the Complainant’s established reputation in both these marks. The Complainant further notes that the addition words such as “buy” and “sale” do not serve to differentiate the Disputed Domain Names from the Complainant’s marks and refers to See America On Line, Inc v. Anson Chan, WIPO Case No. D2001-0004.
In respect of (ii), the Complainant asserts that the Respondent is not licensed in any way to supply the Complainant’s products or to use its trademarks.
In respect of (iii), the Complainant advises that, after learning of the Respondent’s registration of the Disputed Domain Names, the Complainant’s counsel sent a letter by FedEx to the Respondent’s stated street address and by email to the Respondent’s stated email address. It transpired that the given street address does not exist. The email address given is also non-functional. The Complainant relies upon Oxygen Media LLC Ltd v. Primary Source, WIPO Case No. D2000-0362 in arguing that the supply of false contact information in a registration is also evidence of bad faith.
The Complainant notes that the Respondent appears to be offering generic isotretinoin, not manufactured by the Complainant but purporting to be, without prescription and for periods exceeding the recommended maximum supply for a single purchase of 30 days. Such conduct is infringing, confusing to consumers and damaging both to the Complainant and to consumers.
In further support of (iii), the Complainant asserts that registration and use in bad faith is evidenced by the fact of the Respondent must have registered the Disputed Domain Names in circumstances where it knew full well of the Complainant’s legal rights to the trademarks ROACCUTANE and ACCUTANE and intended to exploit the Complainant’s reputation to divert custom from the Complainant (or its related companies) in selling generic pharmaceutical products. This conduct is inherently registration and use in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The onus is on the Complainant to prove each of the three elements set out in paragraph 4(a) of the Policy. The Respondent has not replied, and is under no obligation to do so. There is, however, no conceivable justification for the Respondent’s conduct, for all the reasons stated by the Complainant, and the Respondent has certainly not made any attempt to do so.
The Panel therefore concludes that the Respondent has registered and is using the Disputed Domain Names in bad faith.
In the light of the findings in paragraph 6 above, the Panel concludes that:
- each of the Disputed Domain Names is confusingly similar to the each of the Complainant’s ROACCUTANE and ACCUTANE trademarks; and
- the Respondent has no rights or legitimate interests in the Disputed Domain Names; and
- each of the Disputed Domain Names has been registered and is being used in bad faith.
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 Names, <accutanesale.com> and <buyaccutanewithnoprescription.com> be transferred to the Complainant.
William P. Knight
Dated: June 30, 2011