Hoffmann-La Roche Inc. v. Domain Ownership Limited
Case No. D2007-0891
1. The Parties
Complainant is Hoffmann-La Roche Inc., Nutley, New Jersey, United States of America, represented by Lathrop & Gage L.C., United States of America.
Respondent is Domain Ownership Limited, Belize City, Belize.
2. The Domain Name and Registrar
The disputed domain name <genericaccutane.com> (“Domain Name”) is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 15, 2007. On June 19, 2007, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the Domain Name. That same day, June 19, 2007, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 July 3, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was July 23, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 24, 2007.
The Center appointed James H. Grossman as the sole panelist in this matter on August 1, 2007. 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
Complainant and its affiliates are a large international manufacturer of pharmaceutical and diagnostic products. The ACCUTANE trademark was registered to Complainant by the United States Patent and Trademark Office as of August 28, 1973 (Reg No. 966,924) setting forth a first use date of November 27, 1972. The mark ACCUTANE designates a dermatological preparation indicated for the treatment and prevention of acne. According to Complainant, sales of ACCUTANE (“the Product”) “have exceeded hundreds of millions of dollars”.
The Complainant’s parent company, F. Hoffman-La Roche AG, owns and has registered the domain name <accutane.com>. An internet user who types the wording “accutane.com” is directed to Complainant’s website wherein information on its products including the Product is made available. Complainant submits that it controls the portion of the website located at “www.rocheusa.com” which pertains to the Product.
Since Respondent has failed to file any response to the Complaint, there is no way of knowing any of its reasoning as to the factual background relating to the Domain Name.
5. Parties’ Contentions
A. Complainant
Complainant alleges that Respondent’s use of the domain name <genericaccutane.com> creates a strong likelihood of confusion as to the source, sponsorship, association or endorsement of Respondent’s website by Complainant. Complainant points out that the addition of a word such as “generic” does not alter the fact that the domain name is confusingly similar to the mark. Complainant confirms that it has not authorized Respondent to use its trademark ACCUTANE in any form in any way. Instead, Complainant alleges the name is being used because of goodwill created by Complainant over time. Complainant alleges that potential customers are being misled into thinking they are purchasing a generic brand of ACCUTANE (isotretinoin) with the likelihood of the Roche Group somehow being involved in the Product.
Further, Complainant describes what it considers the false and misleading statements relating to the sale of ACCUTANE as being legal without prescription and without any mention of the strict parameters of the iPLEDGE program which is a legal requirement and prerequisite to the distribution of the product under the law of the United States of America.
Complainant argues that Respondent has not used the Domain Name for a bona fide offering of goods in that Respondent is using a confusingly similar domain name to wrongfully use the well established goodwill of another without any permission to do so. In fact, the Complainant claims Respondent has registered and is using the Domain Name in bad faith with an intent to cause harm to the Complainant and the public.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to Paragraph 4(a) of the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Respondent’s 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.
A. Identical or Confusingly Similar
The Panel finds that there is no question that the Respondent’s Domain Name is confusingly similar to the ACCUTANE trademark and likely to cause confusion among Complainant’s customers in that Respondent has simply added the word “generic” in front of a well recognized trademark used in a domain name. Complainant sites a well- known treatise on trademark law which states, inter alia, that “….[g]enerally, a user of a mark ‘may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it.’” 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition 23:50 (4th ed. 1998). See also General Electric Company v. CPIC NET and Hussain Syed,
WIPO Case No. D2001-0087. The Panel is of the view that a potential consumer would in all likelihood believe that he is buying a generic version of Complainant’s product which it clearly is not or the Product itself. The average consumer would in all likelihood believe that this site was controlled by the Roche Group which sells products around the world and that the sale of the Product on line was authorized by the Roche Group.
The Panel finds that Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
Complainant unequivocally states that Respondent has no rights or legitimate interests in the Domain Name. In support of this position, Complainant advises that the word “accutane” has no valid use other than in connection with its trademarked Product. Further, Complainant states that it has not authorized Respondent to use its trademark ACCUTANE or to incorporate the trademark into any domain name or trade name. Complainant points out that it has never granted Respondent any license to use the trademark ACCUTANE and that Respondent’s use of the Domain Name is simply an effort to capitalize on the goodwill created by Complainant in the ACCUTANE trademark.
The Panel agrees with Complainant’s view that Respondent is passing off its product as a generic form of the ACCUTANE brand of isotretinoin or possibly even Complainant’s Product without any right or legitimate interest in the Product.
Additionally, Complainant at this point raises the significant issue of the legality of the sale and purchase online of ACCUTANE. Respondent’s website at “www.legalmedsonline.com” provides “information” to viewers in the form of questions such as “Is it legal to purchase prescription meds online? The answer provided is “Absolutely, positively, 110% for sure! In fact Complainant points out that since March 1, 2006, at least in the United States of America, such sales online are illegal in that prescriptions for and sales and distribution of the Product must also comply with the so called iPLEDGE program. The imposition of very strict procedures for any distribution of the Product arises from extremely serious side effects which may arise from use of the Product. Any potential user must pledge by use of a signed statement to comply with a very rigorous course of action and inaction in order to obtain a prescription for the Product. Thus, above and beyond the lack of any legitimate interests granted to, or rightful use by, Respondent, the Panel takes judicial notice of the fact that Respondent may be encouraging potential users of the Product to violate public policy of the United States of America.
Notwithstanding the Panel’s belief in agreement with Complainant as to Respondent’s lack of any rights or legitimate interest in using the word ACCUTANE in its Domain Name, under the Policy, Complainant is required only to make out an initial prima facie case that the Respondent lacks rights or legitimate interests. Once such prima facie case is made as in this case, Respondent carries the burden of demonstrating its rights or legitimate interests in the particular domain name at issue. Thus, Respondent’s failure to respond in this to the Complaint provides the Panel with sufficient reason to rule that Respondent had no rights or legitimate interests in the Domain Name. See paragraph 4(a)(ii) of the UDRP.
C. Registered and Used in Bad Faith
The registration of a domain name incorporating a widely recognized mark is itself evidence of bad faith registration. Pfizer Inc. v. Fizer, Inc., WIPO Case No. D2005-0285 (May 11, 2005). The Panel is of the view that, without a showing to the contrary by the Respondent which was not forthcoming, it must be presumed that Respondent was fully aware of the extremely close connection of the Domain Name to the trademark ACCUTANE registered by the Roche Group. The Panel is of the view that the issue of bad faith is confirmed by the intention of Respondent to attract Internet users to its site for commercial gain by creating the likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the product. In this case, the word “generic” attached to ACCUTANE either leads customers to believe they are buying a Roche product with all the credibility that this inspires or at least a generic of the Product but with the likelihood again of Roche’s backing behind the product. If the product to be sold online by Respondent were a generic of isotretinoin, then that product would not be entitled to use the word Accutane as part of its domain name. The Respondent is intentionally misdirecting and diverting customers who believe they are going to find a Roche backed product even though it may be a generic.
Since Respondent is using the Domain Name for commercial purposes as evidenced by the sales intent, there is no evidence that Respondent is making a legitimate non-commercial or fair use of the Domain Name without intent for commercial gain. Respondent is using a very well established trademark with its goodwill in its Domain Name without any authorization of any kind from Complainant, falsely stating the sales are legal, misleading purchasers into believing that they are purchasing a generic product when actually it is ACCUTANE that is offered for sale and all of the above for Respondent’s financial gain.
Finally, the sale of products in competition with the mark owner’s products, as the Respondent is actively doing in this case, constitutes bad faith. See, e.g. Pfizer Inc. v. Lorna Kang, WIPO Case No. D2002-0480. Accordingly, the Panel finds that the domain name at issue has been registered and used in bad faith.
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 <genericaccutane.com> be transferred to the Complainant. The Panel notes that this decision is without prejudice to any rights that may be held by the Complainant’s parent company, Hoffman-La Roche AG, in the domain name <genericaccutane.com>.
James H. Grossman
Sole Panelist
Dated: August 14, 2007
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