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 Rajendra Mumbai, Ahmedabad, Manipur,India.
2. The Domain Name and Registrar
The disputed domain name <genericaccutane.org> (the “Domain Name”) is registered with EstDomains, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 31, 2007. On November 1, 2007, the Center transmitted by email to EstDomains, Inc. a request for registrar verification in connection with the Domain Name at issue. On November 2, 2007, EstDomains, Inc. transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on November 14, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was December 4, 2007. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 7, 2007.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on December 21, 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, together with its affiliated companies, is one of the leading manufacturers of pharmaceutical and diagnostic products in the world.
The ACCUTANE Trademark of Complainant is protected as a Trademark for a dermatological preparation in the United States of America. ACCUTANE is registered to Complainant in the United States Patent and Trademark Office (“U.S.P.T.O.”), as of August 28, 1973 under Reg. No. 966,924, having a first use date of November 27, 1972.
The ACCUTANE Trademark designates a dermatological preparation, namely, a pharmaceutical product indicated for the treatment and prevention of acne. For many years, Complainant’s ACCUTANE Trademark has been extensively promoted, without limitation, in print advertisement in medical journals, promotional materials, packaging, medical informational materials, television advertising and direct mailings.
As a result of advertising and promotion under the ACCUTANE Trademark, the product has acquired fame and celebrity, symbolizing the good will that Complainant has created in the United States of America.
The Domain Name was first created on January 21, 2008.
5. Parties’ Contentions
A. Complainant
Complainant argues that:
- The Domain Name is confusingly similar to its Trademark in which Complainant has rights;
- Respondent has no rights or legitimate interests in the Domain Name and has not been commonly known by the Domain Name;
- Respondent has not used the Domain Name for a bona fide offering of goods or services;
- Respondent is not making a legitimate noncommercial or fair use of the Domain Name without intent for commercial gain; and
- Respondent registered and is using the Domain Name in bad faith.
B. Respondent
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
The burden that Complainant must meet under paragraph 4(a) of the Policy is to prove:
(i) that the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) that Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant demonstrated that it has trademark rights in the ACCUTANE Trademark.
The Panel refers to the Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Decision Overview”), at ยง1.1: “If the complainant owns a registered Trademark then it satisfies the threshold requirement of having Trademark rights. The location of the registered Trademark and the goods and/or services it is registered for are irrelevant when finding rights in a mark.”.1 The only remaining question, then, is whether the Domain Name is identical or confusingly similar to Complainant’s Trademark.
The Panel finds that the Domain Name is confusingly similar to Complainant’s Trademark. The Domain Name contains the entire ACCUTANE Trademark of Complainant preceded by the word “generic”.
Also, the addition of the descriptive word “generic” does not prevent the confusing similarity between the Domain Name and the ACCUTANE Trademark.
The Panel thus finds that the Domain Name is confusingly similar to Complainant’s ACCUTANE Trademark within the meaning of the Policy, paragraph 4(a)(i).
Under the Policy, rights or legitimate interests in the domain name may be demonstrated by showing that: (i) before any notice of this dispute, Respondent used, or demonstrably prepared 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) Respondent has been commonly known by the domain name, even if no Trademark or service mark rights have been acquired; or (iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue. Paragraph 4(c) of the Policy.
Complainant is required to make out a prima facie case that Respondent lacks rights or legitimate interests. Once such prima facie case is made, Respondent carries the burden of demonstrating its rights or legitimate interests in the domain name at issue.
Complainant contends that Respondent has no rights or legitimate interests in the Domain Name. Respondent has not submitted any arguments or evidence in rebuttal.
Nothing in the record suggests that Respondent is commonly known by the Domain Name or that, before any notice of this dispute, Respondent used, or demonstrably prepared to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services.
There is, moreover, no evidence that Respondent is making a legitimate non-commercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert customers or to tarnish the ACCUTANE Trademark. Respondent registered the Domain Name many years after Complainant established rights in its ACCUTANE Trademark through extensive use.
In short, there is no evidence from which the Panel could conclude that Respondent has rights to or legitimate interests in the Domain Name.
For these reasons and in view of the use of the Domain Name as discussed below under Section C “Registered and Used in Bad Faith”, in accordance with Paragraph 4(a)(ii) of the Policy, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
Complainant argues that Respondent’s bad faith in registering and using the Domain Name is demonstrated by numerous facts. Complainant referred to abundant evidence.
Respondent’s true purpose appears to be to capitalize on the reputation of Complainant’s ACCUTANE Trademark by diverting Internet users seeking Complainant’s website to Respondent’s own website which solicits orders for Complainant’s Accutane prescription drug.
The Panel agrees with Complainant that the bad faith of Respondent can be inferred from the following facts:
(a) “Genericaccutane” is not a dictionary word.
(b) Complainant’s ACCUTANE Trademark is an invented and coined mark that has a worldwide reputation.
(c) There exists no relationship between Respondent and Complainant, and Complainant has not given Respondent permission to use its ACCUTANE Trademark.
(d) Under these circumstances, the only reasonable conclusion is that Respondent was aware of the ACCUTANE Trademark, but has refused to relinquish ownership of the Domain Name or cease diverting Internet users to a website which advertises and sells the Accutane product in violation of United States law. Such acts committed by Respondent create confusion in the marketplace and cause harm to Complainant and the public.
(e) Because Respondent is using the Domain Name to sell generic pharmaceutical products, which are advertised under the ACCCUTANE Trademark, Respondent has intentionally attempted to attract for financial gain Internet users to Respondent’s website by creating a likelihood of confusion with the Complainant’s Trademark as to the source, sponsorship, affiliation or endorsement of Respondent’s website or the goods on Respondent’s website.
(f) Respondent’s website has no legitimate business connection with Complainant or its ACCUTANE dermatological preparation. Complainant has not granted Respondent permission or a license of any kind to use the ACCUTANE Trademark. Such unauthorized use of Complainant’s ACCUTANE Trademark by Respondent, suggests opportunistic 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.org> be transferred to Complainant.
Flip Jan Claude Petillion Sole Panelist
Dated: January 4, 2008
1 Although the WIPO Decision Overview is not binding precedent, it embodies a consensus of positions set forth in the opinions of several WIPO UDRP panelists during the first five years of the administration of the UDRP. See, Fresh Intellectual Properties, Inc. v. 800Network.com, Inc.,WIPO Case No. D2005-0061. It is prudent for panelists to follow such a consensus in order to promote consistency among UDRP decisions. See, Howard Jarvis Taxpayers Association v. Paul McCauley,
WIPO Case No. D2004-0014. See also, Last Minute Network Limited v. Web Domain Names,
WIPO Case No. D2007-1161.
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