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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Hoffmann-La Roche Inc. v. Private Whois for RX-ACCUTANE.COM / LAKSH INTERNET SOLUTIONS PRIVATE LIMITED

Case No. D2008-0682

1. The Parties

The Complainant is Hoffmann-La Roche Inc., New Jersey, United States of America, represented by Lathrop & Gage L.C., United States of America.

The Respondent is Private Whois for RX-ACCUTANE.COM / LAKSH INTERNET SOLUTIONS PRIVATE LIMITED, LAKSH INTERNET SOLUTIONS PRIVATE LIMITED, Mumbai, India.

2. The Domain Name and Registrar

The domain name in dispute <rx-accutane.com> is registered with Lead Networks Domains Pvt. Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 1, 2008. On May 2, 2008, the Center transmitted by email to Lead Networks Domains Pvt. Ltd. a request for registrar verification in connection with the domain name in dispute. On May 15, 2008, Lead Networks Domains Pvt. Ltd. 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 May 15, 2008 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 20, 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 the Respondent of the Complaint, and the proceedings commenced on May 20, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was June 9, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 10, 2008.

The Center appointed J. Nelson Landry as the sole panelist in this matter on June 23, 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.

4. Factual Background

The Complainant, along with its affiliated companies, within the Roche group is one of the leading manufacturers of pharmaceutical and diagnostic products in the world. The ACCUTANE trademark of the Complainant is protected as a trademark for a dermatological preparation and is registered in the name of the Complainant in the United States Patent and Trademark Office pursuant to a first use on November 27, 1972 (herein “the Trademark” or the “Trademark ACCUTANE”).

The Trademark ACCUTANE has been extensively promoted in print advertisements, medical journals, promotional materials, medical informational materials, television advertising and direct mailings. Sales of the ACCUTANE dermatological preparation in the United States of America (“U.S.”) have exceeded hundreds of millions of dollars.

F. Hoffmann-La Roche AG, Roche’s parent company, owns and has registered the domain name <accutane.com> and when an Internet user types the wording “accutane.com” in a web browser’s URL address window he or she is directed to Roche’s website located at “www.rocheusa.com/products,” through which the Complainant’s customers obtain information as to the ACCUTANE dermatological preparation product manufactured and sold by the Complainant.

The domain name in dispute was registered by the Respondent on February 1, 2007. After learning of the Respondent’s unauthorized registration of the domain name in dispute, on February 26, 2008, the Complainant, through its counsel, sent a letter by FedEx and by email to the Respondent’s addresses indicated in the WHOIS record. In this communication, the said counsel advised the Respondent that the registration of the domain name in dispute infringed the Complainant’s Trademark rights and requested that the Respondent transfer the said domain name to the Complainant. The letter and the email transmitted were received by the Respondent.

The Complainant has not authorized the Respondent to use the Trademark ACCUTANE or to incorporate the Trademark into the domain name in dispute and has never granted the Respondent a license to use the ACCUTANE Trademark.

5. Parties’ Contentions

A. Complainant

The Complainant represents that it is the registered owner of the Trademark and that as a result of extensive sales, advertising and promotion for its dermatological preparation in the U.S. under the Trademark ACCUTANE and the unsolicited media attention the product has acquired fame and goodwill associated with the Trademark in the U.S..

The Complainant submits that the domain name in dispute contains its entire Trademark and that the registration and use of the domain name in dispute by the Respondent creates a strong likelihood of confusion as to source, sponsorship, association or endorsement by the Complainant of the Respondent’s website associated with the domain name in dispute by the Complainant. The Complainant notified the Respondent that the registration of the domain name in dispute infringed its Trademark rights and requested that the Respondent transfer the domain name in dispute to the Complainant.

The Complainant relies on numerous UDRP panel decisions in submitting that the addition of words or letters such as “rx” and “.com” to the Trademark used in the domain name in dispute does not alter the fact that the said domain name is confusingly similar to the Trademark and that generally such a user of a Trademark may not avoid likely confusion by appropriating another’s entire Trademark and adding descriptive or non-distinctive matter to it. See J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23:50 (4^th ed. 1998) and America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004.

According to the Complainant, the Respondent has no rights or legitimate interests in the domain name in dispute, since “accutane” is not a word, has no valid use other than in connection with the Complainant’s trademark and the Complainant has not authorized the Respondent to use its Trademark ACCUTANE nor granted the Respondent a license to use the ACCUTANE Trademark. In fact, a visit to the Respondent’s website, indicates clearly that neither the Respondent nor its website has been commonly known by the domain name <rx-accutane.com> pursuant to the Policy, paragraph 4(c)(ii).

The Complainant submits that the Respondent’s use is not legitimate commercial use of the domain name in dispute, to the contrary it is purely disreputable because its said domain name uses the Complainant’s Trademark ACCUTANE as a part of its said domain name through which the ACCUTANE product or a competitive generic form is provided to purchasers without a prescription which is an illegal sale. Such activity is infringing, and likely to confuse purchasers, may cause damage to the Complainant and possibly harm to the public. Since March 1, 2006, prescriptions for and sales and distribution of ACCUTANE and any other isotretinoin product are subject under U.S. law to the strict parameters of the iPLEDGE program, which is the only legal method through which ACCUTANE is prescribed and dispensed to patients, and wholesalers and pharmacies must also comply with the iPLEDGE program requirements in order to distribute and dispense these pharmaceutical products. Under U.S. law, Internet pharmacies are not authorized to participate in the iPLEDGE program. These actions by the Respondent may lead a consumer to believe that the Complainant is the source of the ACCUTANE product and related information on the Respondent’s website, or that the Respondent’s use of ACCUTANE in the domain name in dispute and website are authorized, affiliated with, or sponsored, or owned by the Complainant.

The Complainant represents that the Respondent seeks to capitalize on the reputation associated with the Complainant’s ACCUTANE Trademark furthermore, to use that recognition to divert Internet users seeking the Complainant’s website to websites wholly unrelated to the Complainant since the Respondent’s website has no affiliation or connection whatsoever with the Complainant and such offering for sale of the Complainant’s product ACCUTANE or any isotretinoin product are not only clear indications of bad faith on the part of the Respondent, but are thus illegal under U.S. law. See Justerini & Brooks Limited v. Juan Colmenar Rueda as Registrant “Colmenar”, aka “jokolm”/”JCRco.”, WIPO Case No. D2000-1308, where the panel in evaluating the respondent’s legitimate rights and interests in the domain name <justeriniandbrooks.com> considered factors such as the notoriety and distinctiveness of the trademark which is not one which another trader would legitimately choose unless the trader sought to create an impression of association with the complainant or its products, attract business from the complainant, misleadingly divert members of the public and/or damage the reputation and business of the complainant. According to the Complainant all these factors are present in this case and the same conclusion is inescapable, in that the Respondent has no rights or legitimate interests in the domain name under the Policy, paragraph 4(a)(ii).

The Complainant alleges that the Respondent is using the domain name in dispute to promote products of competitors of the Complainant and links to online pharmacies and such use demonstrates the Respondent’s lack of a legitimate noncommercial interest in, or fair use of the domain name in dispute. See Hoffmann-La Roche Inc. v. Onlinetamiflu.com, WIPO Case No. D2007-1806; Pfizer Inc. v. jg a/k/a/ Josh Green, WIPO Case No. D2004-0784; The Bear Stearns Companies Inc. v. Darryl Pope, WIPO Case No. D2007-0593; COMSAT Corporation v. Ronald Isaacs, WIPO Case No. D2004-1082; Fat Face Holdings Lt. v. Belize Domain WHOIS Service Ltd., WIPO Case No. D2007-0626 and Sanofi-aventis v. Montanya Ltd., WIPO Case No. D2006-1079.

Furthermore the Complainant represents that the Respondent is not using the domain name in dispute in connection with a bona fide offering of goods or services but rather to divert Internet users seeking the Complainant’s website associated with the ACCUTANE dermatological preparation product to unrelated websites which use the Complainant’s famous Trademark ACCUTANE without license or authorization. These activities of the Respondent are evidence of the Respondent’s intent to trade upon the reputation of the Complainant’s ACCUTANE Trademark. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847. Consequently there is no bona fide offering of goods or services by the Respondent. See also America Online, Inc. v. Xianfeng Fu, WIPO Case No. D2000-1374, wherein the panel stated that it would be unconscionable to find “a bona fide offering of services in a respondent’s operation of (its) website using a domain name which is confusingly similar to the complainant’s mark and for the same business” which is cited in Hoffmann-La Roche Inc. v. Aneko Bohner, WIPO Case No. D2006-0629 and Hoffmann-La Roche Inc. v. Samuel Teodorek, WIPO Case No. D2007-1814.

According to the Complainant, there is no evidence that the Respondent is making a legitimate noncommercial or fair use of the domain name in dispute without intent for commercial gain. Because the Respondent is trading on the Complainant’s goodwill and is using the domain name in dispute to offer and sell the Complainant’s ACCUTANE prescription drug or a competitive isotretinoin product without a license or authorization from the Complainant.

In contending that the Respondent acted in bad faith in registering and using the domain name in dispute, the Complainant relies on numerous facts within the evidence submitted. The true purpose of the Respondent in registering the domain name in dispute which incorporates the Complainant’s Trademark ACCUTANE in its entirety is to capitalize on the reputation of the Complainant’s ACCUTANE Trademark by diverting Internet users seeking the Complainant’s website to the Respondent’s own website through which orders for the Complainant’s ACCUTANE prescription drug without a prescription are solicited, and a competitor’s generic version of isotretinoin is provided. Clear evidence resides in the facts that “rx-accutane” is not a word, that the Complainant’s Trademark Accutane is an invented and coined trademark that has an extremely strong worldwide reputation, there exists no relationship between the Respondent and the Complainant, and the Complainant has not given the Respondent permission to use its famous Trademark ACCUTANE, and that such sales are in clear violation of the iPLEDGE program and U.S. law. On these facts, the Complainant concludes that the Respondent was aware of the ACCUTANE Trademark, refuses to relinquish ownership of the domain name in dispute or cease diverting Internet users to a website through which competing products of competitors and/or the Complainant’s ACCUTANE product or isotretinoin product are advertised and sold in violation of U.S. law when such acts of the Respondent create confusion in the marketplace and cause harm to Complainant and the public. See America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004.

When, according to the Complainant, the Respondent’s website has no legitimate business connection with the Complainant or its ACCUTANE dermatological preparation, in the absence of permission or a license granted to use the Trademark ACCUTANE, such unauthorized use of the Complainant’s Trademark to promote sales competing and unrelated products by the Respondent suggests either opportunistic bad faith or demonstrates bad faith use. See Veuve Clicquot Ponsardin, Maison Fondйe en 1772 v. The Polygenix Group Co., Case No. D2000-0163; Hoffmann-La Roche Inc. v. Samuel Teodorek, WIPO Case No. D2007-1814; Pfizer Inc. v. jg a/k/a/ Josh Green, WIPO Case No. D2004-0784; Google, Inc. v. wwwgoogle.com and Jimmy Siavesh Behain, WIPO Case No. D2000-1240; Casio Keisanki Kabushiki Kaisha (Casio Computer Co., Ltd.) v. Jongchan Kim, WIPO Case No. D2003-0400 and Downstream Technologies, LLC v. Bartels System GmbH, WIPO Case No. D2003-0088.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order for a domain name to be cancelled or transferred:

(i) The domain name registered by the respondent 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 interest in respect of the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has clearly shown that by the use of the Trademark ACCUTANE since November 27, 1972, in association with a dermatological preparation, its registration before the United States Patent and Trademark Office and its subsequent use, promotion and advertising of the Trademark in various media, journals, television and mailings, it has rights in the Trademark which has acquired distinctiveness, fame and goodwill associated therewith in the U.S.

The Panel finds that the Complainant has rights in the Trademark ACCUTANE.

The domain name in dispute incorporates the whole of the Trademark of the Complainant. As acknowledged in earlier UDRP decisions relied upon by the Complainant which this Panel adopts, the addition of letters such as “rx” and top level domain name indicia “.com” these additions do not in any way diminish the confusion generated by the incorporation of the whole ACCUTANE Trademark in the domain name in dispute.

This Panel finds that the domain name in dispute is confusingly similar to the ACCUTANE Trademark of the Complainant within the meaning of paragraph 4(a)(i) of the Policy.

The first criterion has been met.

B. Rights or Legitimate Interests

The Respondent has not filed any response in this proceeding. Therefore the Panel may accept all reasonable inferences and allegations included in the Complaint as true. The Complainant has made a prima facie case that the Respondent lacks right or legitimate interest in the domain name in dispute by stating that the Respondent has never been known by the name Accutane or the domain name in dispute and that its use of the said domain name is not legitimate non-commercial or fair use of the domain name in dispute.

Furthermore, the Complainant has never given a license nor in any way authorized the Respondent to make use of its ACCUTANE Trademark. There is no evidence that the Respondent has ever engaged is any legitimate business under the Complainant’s Trademark. To the contrary the use of the domain name in dispute by the Respondent which incorporates a famous mark indicating the intent to trade upon the reputation of the Trademark of the Complainant to divert Internet visitors to websites of competitors is not bona fide use of the domain name in dispute within the meaning of the Policy. The evidence adduced by the Complainant clearly shows that the sale of a competitive generic form provided to purchasers without a prescription is illegal and furthermore may cause possible harm to the public who by reason of the confusion between the domain name in dispute and the Trademark may think that the Complainant is associated with such illegal activities.

In relying on earlier UDRP decisions, which this Panel adopts, the Complainant has demonstrated that the use by the Respondent of the domain name in dispute and links to online pharmacies to promote products of competitors of the Complainant, the Respondent lacks legitimate non-commercial interest in, or fair use of, the domain name in dispute.

The second criteria has been met.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name 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 the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 your website or location or of a product or service on your website or location.

Considering the facts that, firstly the “rx-accutane” and “accutane” are not common words, rather the latter is a coined term used exclusively as a Trademark by the Complainant, secondly the absence of authorization by the Complainant in the use of the Trademark wholly incorporated in the domain in dispute and thirdly the nature of the products offered for sale on the online pharmacies linked to the website of the Respondent, these elements indicate to this Panel that the Respondent was most likely, if not certainly, aware of the existence of the Trademark of the Complainant when it registered the domain name in dispute confusingly similar to the Trademark of the Complainant, the Panel is convinced by the evidence adduced by the Complainant that the registration was made intentionally in an attempt to attract for financial gain Internet users to the Respondent’s website by creating a likelihood of confusion with the Trademark of the Complainant as to source, affiliation or endorsement of the Respondent’s website and such registration was made in bad faith.

The evidence is clear that the sales of the ACCUTANE product or competitive products were made possible by the use of the website of the Respondent associated with the domain name in dispute to reach online pharmacies, which is illegal in the U.S. and that such sales result from the confusion created by the domain name in dispute and the well known Trademark of the Complainant. These activities have been considered as causing harm to the public and the Complainant and are showing use of the domain name in bad faith as the panel held in America Online, Inc. v. Anson Chan, WIPO Case D2001-0004 which this Panel agrees with and adopts.

Furthermore as represented by the Complainant with the support of UDRP earlier decisions which this Panel adopts, the unauthorized use by the Respondent of the Trademark in the domain name in dispute to promote sales of competing and unrelated products demonstrate use of the domain name in dispute in bad faith. See Hoffmann-La Roche Inc. v. Samuel Teodorek, WIPO Case No. D2007-1814; Casio Keisanki Kabushiki Kaisha (Casio Computer Co., Ltd.) v. Jongchan Kim, WIPO Case No. D2003-0400 and Downstream Technologies, LLC v. Bartels System GmbH, WIPO Case No. D2003-0088.

The Panel finds that the domain name in dispute has been registered in bad faith and used in bad faith.

The third criterion has been met.

7. Decision

The Panel concludes that:

(a) the domain name <rx-accutane.com> is confusingly similar to the Complainant’s Trademark;

(b) the Respondent has no rights or legitimate interest in the domain name in dispute;

(c) the domain name in dispute has been registered and is being used in bad faith.

Therefore, in accordance with paragraphs 4(a) and 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <rx-accutane.com> be transferred to the Complainant.

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J. Nelson Landry
Sole Panelist

Date: July 2, 2008