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 Aneko Bohner, Arlington, Washington , United States of America.
2. The Domain Name and Registrar
The disputed domain name <buyaccutane.com> (the
“Domain Name”) is registered with eNom.
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 e-mail to eNom a request for registrar verification in connection with the Domain Name. On May 23, 2006, eNom transmitted by e-mail to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the administrative, billing, 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 Respondent of the Complaint, and the proceedings commenced on May 31, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was June 20, 2006. Respondent did not submit any response. Accordingly, the Center notified Respondent of his default on June 21, 2006.
The Center appointed Robert A. Badgley as the sole
panelist in this matter on June 29, 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 following facts are alleged in the Complaint and are undisputed by Respondent. Unless indicated otherwise, the facts set forth in this section are found by the Panel to be plausible and/or supported by evidence annexed to the Complaint.
Complainant, together with its affiliated companies (collectively referred to herein as “Complainant”), is one of the leading manufacturers of pharmaceutical and diagnostic products. Complainant’s ACCUTANE mark is protected as a trademark for a dermatological preparation in a multitude of countries worldwide. For example, ACCUTANE is registered to Complainant in the United States Patent and Trademark Office, as of August 28, 1973, under Registration No. 966,924, having a first use date of November 27, 1972.
The mark ACCUTANE designates a dermatological preparation, namely, a pharmaceutical product indicated for the treatment and prevention of acne. Complainant’s mark ACCUTANE has been extensively promoted in various media, and has been the object of considerable unsolicited media attention. Worldwide sales of the ACCUTANE dermatological preparation have exceeded hundreds of millions of dollars.
Complainant owns the domain name <accutane.com>, and uses that domain name, through re-direction to an affiliated site, to promote and inform consumers about its Accutane product.
Respondent registered the Domain Name on September 10, 2002. Complainant subsequently discovered that Respondent was using the Domain Name to attract users to a website where Accutane products were marketed without Complainant’s license or authorization.
On March 3, 2006, Complainant sent a letter by certified
mail, return receipt requested, and by e-mail to Respondent’s addresses
indicated in the Whois record for the Domain Name. In this letter, Complainant
advised Respondent that the registration of the Domain Name infringed Complainant’s
trademark rights and requested that Respondent surrender the Domain Name. Both
the certified letter and the e-mail were returned to Complainant as undeliverable.
5. Parties’ Contentions
A. Complainant
Complainant’s factual assertions are set forth above, and its legal arguments will be taken up in the discussion below.
B. Respondent
The Respondent did not reply to the Complainant’s
contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy in order to succeed:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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.
A. Identical or Confusingly Similar
The Panel finds that Complainant has rights, through
registration and use, of the mark ACCUTANE. The Panel further finds that the
Domain Name, which differs from the mark only by virtue of the prefix “buy,”
is confusingly similar to Complainant’s mark. Numerous panels in prior
cases under the Policy have held that the mere addition of a descriptive word
to the complainant’s trademark does not overcome confusing similarity.
See, e.g, Sanofi-aventis v. Edith Van Der Linden, WIPO
Case No. D2006-0372 (April 24, 2006) (involving <buyambien.info>).
Indeed, the addition of a promotional word such as “buy” tends only
to reinforce the (false) association between Complainant’s mark and the
Domain Name.
The Panel finds that the Domain Name is confusingly similar to Complainants mark.
Accordingly, the Panel finds that paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant bears the burden of proof on the “rights
or legitimate interests” issue (as it does for all three elements of the
Policy). Louis de Bernieres v. Old Barn Studios Limited, WIPO
Case No. D2001-0122 (March 26, 2001).
Respondent, who filed no response in this proceeding, has not invoked any of the circumstances of Policy, paragraph 4(c) to suggest any “rights or legitimate interests” in respect of the Domain Name.
Respondent was not licensed or authorized by Complainant to use the latter’s
mark in any manner. Respondent’s commercial activities undertaken through
use of the Domain Name are neither fair use nor bona fide under the Policy.
There are numerous prior decisions under the Policy holding that the unauthorized
appropriation of another’s trademark in one’s domain name and the
commercial use of the corresponding website do not confer rights or legitimate
interests upon the owner of such a domain name. See, e.g.America
Online, Inc. v. Xianfeng Fu, WIPO Case
No. D2000-1374 (December 11, 2000) (“it would be unconscionable to
find that a bona fide offering of services in a respondent’s operation
of web-site using a domain name which is confusingly similar to the complainant’s
mark and for the same business”).
The Panel finds that the Respondent has no rights or legitimate interests in the Domain Name.
Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel finds that Respondent in all likelihood had Complainant’s well-known mark ACCUTANE in mind when registering the Domain Name. ACCUTANE is a fanciful mark; that combination of letters has no known meaning other than as a reference to Complainant’s product.
The Panel finds that Respondent has used the Domain Name in bad faith, within the meaning of paragraph 4(b)(iv) of the Policy. The Domain Name resolves to a website where Complainant’s products are offered for sale without authorization. Based on the undisputed evidence, there is no reasonable conclusion other than that Respondent registered the Domain Name with the intention of seeking to attract, for commercial gain, Internet visitors to his website by creating confusion between the Domain Name and Complainant’s mark.
Accordingly, the Panel finds that Policy paragraph 4(a)(iii) is satisfied.
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 <buyaccutane.com> be transferred to Complainant.
Robert A. Badgley
Sole Panelist
Dated: July 6, 2006
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