WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. Louis V. Simpson, NA
Case No. D2016-1707
1. The Parties
The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented by FairWinds Partners, LLC, United States of America (“US”).
The Respondent is Louis V. Simpson, NA of New York, New York, US.
2. The Domain Name and Registrar
The disputed domain name <generic-accutane.com> is registered with Paknic (Private) Limited (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 23, 2016. On August 23, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 26, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 31, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 20, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 21, 2016. Due to an administrative oversight, the Notification of Complaint was re-sent to all Parties on September 27, 2016, adding one more email address. The Respondent was also given an additional five days to respond. The Respondent again did not submit any response. Accordingly, on October 3, 2016, the Center sent out an email informing the Parties that the Panel Appointment Process had commenced.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on October 14, 2016. 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 amongst other things owns the International Registration Number 840371, ACCUTANE, in respect of pharmaceutical products. The trademark has been registered since December 6, 2004. It has also provided evidence of other registered trademarks for ROACCUTAN and ROACCUTANE, which date from, respectively, 1979 and 1982.
It appears that the active pharmaceutical ingredient in the Complainant’s ACCUTANE product is isotretinoin. It is used in the treatment of severe cases of acne. Information included in the Complaint indicates that the Complainant’s ACCUTANE product is the market leader in its category in terms of sales in the US.
The disputed domain name was registered on April 27, 2016.
The disputed domain name resolves to a website at “www.readingworksdetroit.org”. The page which the disputed domain name resolves to is headed “Generic Accutane”. Down the left hand side, there is an image which appears to the packaging of the Complainant’s product in the form of 10 tablets of 40mg dosage. Then, there is a listing of the prices for various quantities of pills. The main body of the page contains text which explains what isotretinoin is and gives directions for taking isotretinoin/Accutane, when not to take it and what to do if one overdoses or misses a dose. There is also a large image of what appears to be generic isotretinoin tablets of different shape and what appears to be different packaging to that used by the Complainant.
At the foot of the page are three “boxes” offering different quantities of different strength pills, with a button to “Buy Online”.
There is also a statement that “Reading Works is dedicated to raising the level of adult literacy in metro Detroit and promoting the idea that Reading Works – in the family and in the workplace.”
If one clicks on one of the “Buy Online” buttons, one is redirected to a page on the website “www.pharmacycloud.net”. This page appears to have a heading according to the origin of the browser. For example, “United States Pharmacy Shop” or “Australian Pharmacy Shop”. The currency used appears to vary correspondingly.
The body of the page lists prices for various quantities of pills at different strengths. Each item, for example 10 pills, or 20 pills or 30 pills, also offers “Free Viagra, Cialis or Levitra pills” as part of the sale.
There are also numerous links on the page to other categories of drugs, such as Bestsellers, Erectile Dysfunction, Allergies, Anti Fungal and so on.
5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or 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.
No Response has been filed. The Complaint has been served, however, on the physical and electronic coordinates specified in the WhoIs record (and confirmed as correct by the Registrar) in accordance with paragraph 2(a) of the Rules. Accordingly, the Panel finds that the Complaint has been properly served on the Respondent.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the International Registration for ACCUTANE identified above.
The disputed domain name differs from that trademark by the addition of the suffix “generic-” and the generic Top-Level Domain (“gTLD”), “.com”.
The latter element can be disregarded as a functional element of the domain name system: WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2.
Semantically, the word “generic” might be thought to teach away from a finding of confusing similarity in the sense of confusion as to trade source, at least among fluent English speakers. However, it has long been established that that is an unacceptably narrow view of confusing similarity under the Policy. See e.g., WIPO Overview 2.0 paragraph 1.3. It does not take into account inter alia the potential for confusion among those who are not fluent in English. Perhaps even more importantly, it assumes that the only relevant confusion is confusion as to source. The concern underlying much of the view referred to in the WIPO Overview 2.0 is that such domain names can be used precisely for the abusive or extortionate purposes the Policy was designed and intended to stop. Examples of such registrations can be found in Standard Chartered PLC v. Purge I.T., WIPO Case No. D2000-0681 and Wachovia Corporation v. Alton Flanders, WIPO Case No. D2003-0596. The requirement is therefore a threshold requirement to ensure that only those with a legitimate basis to complain under the Policy have standing to file a complaint. See also David Lindsay, International Domain Name Law: ICANN and the UDRP, (Hart Publishing, 2007), 262 – 75. In these types of cases, the domain name has been adopted precisely because of the association that will be made with the trademark and clearly for the purposes struck at by the Policy.
In the present case, the Complainant’s trademark is clearly recognizable and is moreover the distinctive element of the disputed domain name. Its use in the disputed domain name is clearly intended to call forth an association with the Complainant’s product. Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant’s trademark and the requirement under the first limb of the Policy is satisfied.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable 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] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] 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.
These are illustrative only and are not an exhaustive listing of the situations in which the Respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the Respondent. Accordingly, it is usually sufficient for the Complainant to raise a prima facie case against the Respondent under this head and an evidential burden will shift to the Respondent to rebut that prima facie case. See e.g., WIPO Overview 2.0, paragraph 2.1.
The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it in any way. The disputed domain name is plainly not derived from the Respondent’s name nor that of either of the websites to which the disputed domain name resolves.
It is not clear from the website which the disputed domain name resolves to whether it offers for sale the Complainant’s genuine ACCUTANE products, counterfeit products or generic isotretinoin tablets. If in fact the products are the Complainant’s genuine ACCUTANE products, the disputed domain name is misleading. There is also no such thing as “generic” ACCUTANE in the trademark sense. If the products are counterfeit or generic isotretinoin tablets, the use of the disputed domain name is also misleading. In neither case does it constitute an offer of goods in good faith under the Policy.
There is also no disclosure on the website which the disputed domain name resolves to of the nature of the relationship between the Respondent and the Complainant. There is no clear disclosure that the Respondent, or those operating the websites, are not related to or associated with the Complainant in any way. That failure is exacerbated by the confusion about whether the prospective purchaser would be buying genuine ACCUTANE pills or something else.
In these circumstances, the Respondent does not satisfy the conditions for a reseller to establish rights or legitimate interest under the Policy: WIPO Overview 2.0 paragraph 2.4. The use of the disputed domain name to offer for sale products in these circumstances is not a good faith offering of goods within the meaning of the Policy. The Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not sought to rebut that prima facie case. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also.
C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
Given the nature of the website which the disputed domain name resolves to, it is clear that the Respondent is well aware of the Complainant’s trademark. There cannot be any serious suggestion that the name “generic Accutane” would have been adopted for some reason other than to refer to the Complainant’s product or some product with the characteristics of the Complainant’s product. In addition, the very short time between the registration of the disputed domain name and its use in the way described above supports a strong inference that the Respondent registered the disputed domain name with the Complainant’s trademark in mind for the use it has been put to. Noting also that the Respondent does not have rights or a legitimate interest in the disputed domain name, therefore, the Panel finds that the registration and use are in bad faith under the Policy.
Accordingly, the Panel finds that the Complainant has proved the third requirement under the Policy.
For 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, <generic-accutane.com> be transferred to the Complainant.
Warwick A. Rothnie
Date: October 24, 2016