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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Hoffmann-LaRoche Inc. v. sasha rutova

Case No. D2008-0746

 

1. The Parties

The Complainant is Hoffmann-LaRoche Inc., United States of America, represented by Lathrop & Gage L.C., United States of America.

The Respondent is sasha rutova, Thailand.

 

2. The Domain Name and Registrar

The disputed domain names <buy-isotretinoin-accutane.com>, <acne-isotretinoin-accutane.com>, <generic-isotretinoin-accutane.com> and <isotretinoin-accutane-side-effects.com> are registered with Direct Information PVT. Ltd. D/B/A PublicDomainRegistry.Com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 14, 2008, by e-mail and a hardcopy was received on May 15, 2008. On May 14, 2008, the Center transmitted by e-mail to Direct Information PVT. Ltd. D/B/A PublicDomainRegistry.Com a request for registrar verification in connection with the domain name at issue. On May 15, 2008, Direct Information PVT. Ltd. D/B/A PublicDomainRegistry.Com transmitted its verification response to the Center by e-mail, confirming that the Respondent is listed as the Registrant and providing the contact details.

On May 20, 2008, the Center sent an e-mail to the Complainant, pointing out that the Complainant did not comply with paragraph 3(b)(xiii) of the Rules regarding mutual jurisdiction and inviting the Complainant to submit an Amendment to the Complaint. The Complainant submitted an Amendment to the Complaint on May 22, 2008 by e-mail and on May 23, 2008 in hardcopy.

The Center verified that the Complaint and Amendment thereto 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 23, 2008. In accordance with the Rules, paragraph 5(a), the due date for the Response was June 12, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on June 13, 2008.

The Center appointed the undersigned as the sole panelist in this matter on June 24, 2008. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence on June 23, 2008, as required by the Center to ensure compliance with the Rules, paragraph 7.

 

4. Factual Background

The Complainant is Hoffmann-LaRoche Inc., a manufacturer of pharmaceutical and diagnostic products. The Complainant is the holder of the trademark ACCUTANE in the United States of America (“United States”), registered with the United States Patent and Trademark Office (“USPTO”) on August 28, 1973, Registration Number 966,924, with a first use date of November 27, 1972. The evidence submitted shows that the trademark registration was up for renewal in 2003. Verification in the online trademark register of the USPTO has shown that the trademark registration has been renewed in time and is valid until 2013.

The parent company of the Complainant, F. Hoffmann-LaRoche AG, is the registrant of the domain name <accutane.com> (created in 1997).

The Respondent registered the disputed domain names on October 9, 2007.

 

5. Parties’ Contentions

A. Complainant

Identical or confusingly similar

The Complainant notes that it has used the trademark ACCUTANE for a dermatological preparation since 1972 in the United States. It contends that, as a result of extensive advertising and promotion of the dermatological product under the ACCUTANE trademark for several years, the product has acquired fame and celebrity, symbolizing the good will that the Complainant has created in the United States. The Complainant refers to evidence of the media attention for the trademark. Furthermore, the Complainant states that the sales of the ACCUTANE dermatological preparation have exceeded hundreds of millions of dollars.

The Complainant points out that, when it detected the use of the disputed domain names, it sent a letter by International Express Mail and by e-mail to the Respondent’s addresses indicated in the WHOIS records for the disputed domain names, requesting the Respondent to transfer the disputed domain names to the Complainant. The letter sent to the Respondent by International Express Mail was returned to the Complainant’s attorneys with the comment “Return by addressee request”. The Complainant states, however, that the transmitted e-mail was, by all indications, received by the Respondent. Apparently, the Respondent chose not to react.

The Complainant asserts that the disputed domain names create a strong likelihood of confusion as to the source, sponsorship association or endorsement of the Respondent’s websites associated with its domain names by the Complainant.

The Complainant points out that the disputed domain names contain the entire ACCUTANE trademark. It states that numerous panel decisions have established that the addition of words, letters or numbers to a mark used in a domain name does not alter the fact that a domain name is confusingly similar to the mark. Referring to UDRP decision America online, Inc. v. Anson Chan, WIPO Case No. D2001-0004, and the cases cited therein, the Complainant argues that addition of the descriptive words “isotretinion” (the generic form of the drug ACCUTANE), “acne”, “buy”, “generic” and “side effects”, does not prevent the likelihood of confusion in this case.

The Complainant mentions that a website to which the purchasers are linked to purchase ACCUTANE, “www.rxtrustedpills.com”, offers “Generic Accutane” without a prescription, which according to the Complainant is illegal and further confuses purchasers.

Rights or legitimate interests of the Respondent

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain names, since “Accutane” is not a word and has no valid use other than in connection with the Complainant’s trademark, and the Complainant has not licensed or authorized the Respondent to use its trademark or incorporate the trademark into a domain or trade name.

According to the Complainant, it is clear that neither the Respondent nor its websites have been commonly known by the domain names.

The Complainant asserts that the Respondent does not make a legitimate noncommercial use of the domain names, nor uses the disputed domain names for a bona fide use of goods or services. It states that the websites operating under the disputed domain names contain links to websites which sell the ACCUTANE products or another form of istretinoin (the generic form of the drug ACCUTANE). The Complainant claims that the Respondent is using the disputed domain names to divert Internet users seeking the Complainant’s website to the aforementioned websites. It contends that these websites make use of the ACCUTANE trademark without license or authorization and refer in a misleading manner to a “generic” product when the Complainant’s brand product is depicted or, alternatively, offer a generic product with depiction of an ACCUTANE capsule. Furthermore, the Complainant points out that the sales of isotretinoin on the Internet without prescription violates the United States law, since a prescription is required for this drug.

Referring to various UDRP decisions, the Complainant claims that the Respondent’s unauthorized use and incorporation of the Complainant’s famous trademark ACCUTANE in the disputed domain names and the commercial use of the corresponding websites for the illegal sales of prescription medicine, cannot be considered as a bona fide offering of goods and services or as a legitimate noncommercial or fair use.

Registration and use in bad faith by the Respondent

The Complainant advances several arguments to demonstrate the Respondent’s bad faith in registering and using the disputed domain names. It states that the Respondent’s purpose in registering the disputed domain names was to capitalize on the reputation of the Complainant’s ACCUTANE mark by diverting Internet users seeking Complainant’s website to its own web sites, which solicit orders for the Complainant’s ACCUTANE prescription drug through commercial links. According to the Complainant, the bad faith of the Respondent is clearly evident from the fact that the disputed domain names are not words, that the Complainant’s mark ACCUTANE is an invented and coined famous mark which has a strong reputation and that there exists no relationship between the Respondent and the Complainant. Under these circumstances, the only reasonable conclusion according the Complainant is that the Respondent was aware of the ACCUTANE trademark.

Furthermore, the Complainant states that, by using the disputed domain names to illegally sell the prescription-only ACCUTANE product either falsely as a generic product or offering a generic product depicted under a photograph of the Complainant’s brand pill without permission, the Respondent has intentionally attempted to attract for financial gain Internet users to the Respondent’s websites by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s websites or the goods on the Respondent’s websites.

The Complainant refers to several UDRP decisions to substantiate its argument that the use of the disputed domain names to promote the sales of the Complainant’s product and also to promote competing and unrelated products, demonstrates bad faith use.

Based on the foregoing, the Complainant requests that the disputed domain names be transferred to the Complainant.

B. Respondent

The Respondent did not file a Response.

 

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant is the owner of a trademark registration for ACCUTANE.

Since the entire ACCUTANE trademark is incorporated in each disputed domain name, the Panel finds the domain names to be confusingly similar to the trademark. The addition of the generic words “isotretinion”, “acne”, “buy”, “generic” and “side effects” to the trademark ACCUTANE in the respective domain name does not alter this (see, for instance, The Nasdaq Stock Market, Inc. v. Green Angel, WIPO Case No. D2001-1010; Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Distribution Purchasing & Logistics Corp., WIPO Case No. D2000-0464; World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306). The addition of the words “isotretinoin” and “acne” even adds to the confusing similarity of the respective domain name and the trademark, since these words refer respectively to the generic form of the drug ACCUTANE and the disorder for which it is prescribed. The addition of these words could therefore lead users to believe that Complainant operates the web sites associated with each disputed domain name (see also Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin; WIPO Case No. D2003-0888; Western Union Holdings, Inc. v. Manuel Rodriguez, WIPO Case No. D2006-0850).

B. Rights or Legitimate Interests

The Panel is of the opinion that the Respondent does not have rights or legitimate interests in any of the disputed domain names. The Complainant has not given the Respondent permission to register the domain names. Furthermore, there is no evidence that the Respondent has been known by the name ACCUTANE or any of the domain names, that the Respondent used or uses the name ACCUTANE in connection with a bona fide offering of goods or services, or that it makes a legitimate noncommercial or fair use of the domain name.

C. Registered and Used in Bad Faith

The Panel finds that the Respondent has registered and is using the disputed domain names in bad faith.

The Complainant has submitted print-outs of the websites operated under the disputed domain names, which show pages that promote and provide links to various websites where medicines are being sold online. Some of these links contain advertisements for – amongst others – “low cost Accutane”, “generic Accutane isotretinoin” and “Accutane isotretinoin no prescription” and connect to the website “rxtrustedpills.com”. On this website the prescription-only product ACCUTANE or competing products containing isotretinoin are apparently offered for sale without prescription.

It may be assumed that the Respondent was aware of the Complainant’s trademarks, since “accutane” is an invented word, and, although there exists no relationship between the Respondent and Complainant, the Respondent has chosen to use the word mark ACCUTANE in its domain names in combination with words associated with the product of the Complainant. Moreover, the websites operated under the disputed domain names provide information on skin products, in particular ACCUTANE, and provide links to websites that sell ACCUTANE or related products. It is therefore difficult to imagine that the Respondent was not aware of the Complainant’s trademark when it registered and subsequently used the disputed domain names.

Taking into account the confusing similarity between the disputed domain names and the ACCUTANE trademark, as well as the similarity between the products offered on the Respondent’s website and the products offered by the Complainant, there is a clear likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the disputed domain names.

Considering the use of the disputed domain names for websites promoting commercial sites for the sales of the Complainant’s products, products of competitors of the Complainant and unrelated pharmaceutical products, the Panel finds that the disputed domain names have been registered and are being used to trade off the goodwill of the Complainant’s trademark (see Hoffmann-LaRoche Inc. v. Samuel Teodorek, WIPO Case No. D2007-1814; Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784 and the cases cited therein).

By using the disputed domain names in this manner, the Respondent intentionally attempts to attract, for commercial gain, Internet users to its 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 its website or location or of a product or service on its website or location.

 

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 names <buy-isotretinoin-accutane.com>, <acne-isotretinoin-accutane.com>, <generic-isotretinoin-accutane.com> and <isotretinoin-accutane-side-effects.com> be transferred to the Complainant.


Wolter Wefers Bettink
Sole Panelist

Dated: July 8, 2008

 

Источник информации: https://internet-law.ru/intlaw/udrp/2008/d2008-0746.html

 

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