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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Hoffmann-La Roche Inc. v. Online Pharma

Case No. D2006-0628

 

1. The Parties

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

The Respondent is Online Pharma, Singapore, of Singapore.

 

2. The Domain Name and Registrar

The disputed domain name is <buy-accutane-online.com>, which is registered with GoDaddy.com, Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 19, 2006. On May 22, 2006, the Center transmitted by email to GoDaddy.com, Inc. (the “GoDaddy”) a request for registrar verification in connection with the domain name at issue. On May 22, 2006, GoDaddy transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. The Center verified that 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 30, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was June 19, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 20, 2006.

The Center appointed Knud Wallberg as the sole panelist in this matter on June 28, 2006. 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, together with its affiliated companies, is one of the leading manufacturers of pharmaceutical and diagnostic products.

The Complainant is the owner of the trademark ACCUTANE for a dermatological preparation in a multitude of countries worldwide, including the United States of America with the priority date of December 8, 1972, claiming the first use date in commerce as of November 27, 1972.

The trademark ACCUTANE, registered for dermatological preparation, designates pharmaceutical product indicated for the treatment and prevention of acne. The Complainant’s mark ACCUTANE has been extensively promoted and the sales of the Accutane dermatological preparations in the United States of America and around the world have exceeded hundreds of millions of dollars.

The Complainant’s parent company, F. Hoffmann-La Roche AG, owns and has registered the domain name <accutane.com>. When the wording “accutane.com” is typed in a web browser’s URL address window, the Internet user is directed to the website located at “www.rocheusa.com/products”, through which the Complainant’s customers obtain information as to the Complainant’s Accutane dermatological preparation product.

No factual information has been provided about the Respondent.

 

5. Parties’ Contentions

A. Complainant

1. The domain name is confusingly similar to a trademark or service mark in which the Complainant has rights

The domain name of the Respondent contains the entire ACCUTANE trademark of the Complainant. In light of the Complainant’s registered trademark and the domain name <buy-accutane-online.com>, the Respondent’s registration and use of the domain name creates a strong likelihood of confusion as to source, sponsorship, association or endorsement of the Respondent’s website by the Complainant.

The Respondent’s domain name incorporates the whole of the Complainant’s mark and adds the words “buy” and “online”. The added descriptive language in the Respondent’s domain name, namely the words “buy” and “online”, does not prevent the likelihood of confusion and does nothing to detract from or disassociate the word ACCUTANE and the Complainant.

Therefore, the domain name is identical or confusingly similar to the trademark of the Complainant.

2. Respondent has no rights or legitimate interests in the domain name and has not been commonly known by the domain name

The Respondent has no rights or legitimate interests in the domain name since “Accutane” is not a word and has no valid use other than in connection with the Complainant’s trademark. The Complainant has not authorized the Respondent to use its trademark ACCUTANE or to incorporate the trademark into any domain name or trade name. Furthermore, the Complainant has never granted the Respondent a license to use the ACCUTANE mark.

The Respondent’s use of the domain name indicates that the domain name is being used because of the goodwill created by the Complainant in the ACCUTANE trademark. Based upon the Respondent’s website, it is clear that neither the Respondent nor its website has been commonly known by the domain name.

The Respondent’s use of the domain name is purely disreputable. The Respondent’s domain name uses the Complainant’s federally registered trademark to advertise the sale of the Accutane drug on its website located at “www.buy-accutane-online.com” to consumers on the Internet by using the heading: Buy Accutane. No Prescription.

On the contrary, as of March 1, 2006, prescriptions for sale and distribution of the drug named Accutane are subject under U.S. law to the strict parameters of the iPLEDGE program, which is the only legal method by which Accutane may be prescribed and dispensed to patients. Under U.S. law, Internet pharmacies are not authorized to participate in the iPLEDGE program. Such uses by the Respondent may lead consumers to believe that the website of the Respondent is a website owned and/or operated by the Complainant.

Since the Respondent seeks to use recognition of the Complainant’s ACCUTANE trademark to divert Internet users seeking Complainant’s domain name to the Respondent’s website, where the Complainant’s prescription-only medication Accutane is advertised for sale without prescription, such uses of the Complainant’s mark ACCUTANE are not only clear indications of bad faith on the part of the Respondent, but may violate U.S. law.

The Respondent’s appropriation and use of the Complainant’s famous trademark is a clear attempt to create and benefit from consumer confusion regarding the association between the Respondent’s activities and the Complainant’s bona fide business. As such, it is clear that the Respondent has no rights or legitimate interests in the domain name.

3. Respondent has not used the domain name for a bona fide offering of goods or services

The Respondent is not using the domain name in connection with a bona fide offering of goods or services. The Respondent is using the domain name to divert Internet users seeking the Complainant’s website “www.accutane.com”, or the Accutane dermatological preparation product, to an unrelated website, which uses the Complainant’s famous trademark ACCUTANE without license or authorization of any kind, and advertises the sale of the Accutane drug by suggesting that no prescription is required.

The Respondent’s use of the domain name cannot constitute a bona fide offering of goods or services.

4. Respondent is not making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers

There is no evidence that the Respondent is making a legitimate non-commercial or fair use of the domain name without intent for commercial gain. The Respondent is trading on the Complainant’s goodwill and is using the domain name without a license or authorization from the Complainant to advertise the sale of the Complainant’s Accutane prescription drug.

The Respondent has no legitimate interest in the domain name containing the Complainant’s famous mark ACCUTANE, is in no way connected with the Complainant and is trading on the Complainant’s famous mark ACCUTANE for the commercial gain.

5. Respondent registered and is using the domain name in bad faith

The Respondent’s bad faith in registering and using the domain name is demonstrated by numerous facts. Specifically, the Respondent’s true purpose in registering the domain name, which incorporates the Complainant’s ACCUTANE mark in its entirety, is to capitalize on the reputation of the Complainant’s ACCUTANE mark by diverting the Internet users seeking the Complainant’s website to the Respondent’s own website, which advertises the sale of the Complainant’s prescription drug Accutane.

The bad faith of the Registrant is evident from the facts that <buy-accutane-online.com> is not a word, that the Complainant’s mark ACCUTANE is an invented and coined mark that has an extremely strong worldwide reputation, and that there exists no relationship between the Respondent and the Complainant. The Complainant has not given the Respondent permission to use its famous mark ACCUTANE, and reasonably the Respondent was aware of the ACCUTANE trademark. By using the domain name to advertise the sale of the prescription-only Accutane product without permission or license of any kind from the Complainant, the Respondent has intentionally attempted to attract for financial gain the Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website, or the goods on the Respondent’s website.

Such unauthorized use of the Complainant’s ACCUTANE mark by the Respondent suggests bad faith, and may also violate U.S. law and the iPLEDGE program.

B. Respondent

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

 

6. Discussion and Findings

According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the Complaint where no Response has been submitted.

In accordance with Paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements are satisfied:

(i) the 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 domain name; and

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

Paragraph 4(a) of the Policy states that the burden of proving that all three elements are present lies with the Complainant. At the same time, in accordance with Paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.

A. Identical or Confusingly Similar

The contested domain name contains the Complainant’s distinctive and well-known trademark ACCUTANE in its entirety. Neither the addition of the descriptive words “buy” as prefix and “online” as suffix, nor the insertion of the hyphens between the words “buy” and “accutane” and “accutane” and “online”, alters the fact that the domain name is confusingly similar to the Complainant’s trademark. Likewise, the inclusion of the gTLD denomination “.com” shall be disregarded for the purpose of these proceedings.

The Panel finds that the disputed Domain Name is confusingly similar to the Complainant’s registered trademark and that the requirements in paragraph 4(a)(i) of the Policy therefore are fulfilled.

B. Rights or Legitimate Interests

The Complainant has not licensed or otherwise permitted the Respondent to use its trademark or to apply for any domain name incorporating the Complainant’s trademark.

The Complainant alleges and has made a prima facie showing that the Respondent has no rights or legitimate interests in the domain name. The Respondent has not rebutted this and, based on the record of this case, it is unlikely that any such rights or interests exist.

In this context the Panel notes that Accutane is an invented word that has no specific meaning. It can therefore be ruled out that the Respondent could plausibly claim to use the disputed domain name for any purpose unrelated to the Complainant or its products.

Even if the Respondent was authorized by the Complainant to sell pharmaceutical products bearing the Complainant’s mark ACCUTANE, this would not necessarily give the Respondent the right to incorporate this trademark into its domain name. See inter alia Hoffmann-La Roche Inc. v. # 1 Viagra Propecia Xenial & more Online Pharmacy, WIPO Case No. D2003-0793. This is particularly so when the contested domain name is also used for the sale of other competing products (pharmaceuticals), as is the case here.

The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that the requirements of paragraph 4(a)(ii) of the Policy are therefore fulfilled.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must prove the Respondent’s registration and use of the domain name in bad faith. Paragraph 4(b) sets out, by way of example, a number of circumstances which may be taken as indicative of bad faith.

Given the notoriety of the Complainant’s trademark, the coined nature of the word Accutane, the claimed first use of the trademark in the United States of America since November 27, 1972, and the extensive promotion of the trademark ACCUTANE, it is inconceivable to the Panel that the Respondent registered the domain name without prior knowledge of the Complainant and the Complainant’s mark. This is so even if the Complainant’s trademark has not been shown to be registered in the country of residence of the Respondent, Singapore. See to this effect, inter alia, Advanced Magazine Publishers Inc. v. Computer Dazhong, WIPO Case No. D2003-0668.

As described above, the disputed domain name is used not only to promote Complainant’s goods, but also to promote other competing products (pharmaceuticals). This is done through links to other websites. The Panel therefore finds that the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark. See, inter alia, Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784 and LґOrйal, Biotherm, Lancфme Parfums et Beautй & Cie v. Unasi, Inc, WIPO Case No. D2005-0623.

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

Considering all the facts and evidence, the Panel therefore finds that the requirements of the Policy, paragraph 4(a)(iii), are also fulfilled in this case.

 

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 <buy-accutane-online.com> be transferred to the Complainant.


Knud Wallberg
Sole Panelist

Dated: July 10, 2006

 

Источник информации: https://internet-law.ru/intlaw/udrp/2006/d2006-0628.html

 

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