The Complainant is Hoffmann-La Roche Inc. of New Jersey, United States of America represented by Lathrop & Gage LLP, United States of America.
The Respondent is Jason Barnes of North Carolina, United States of America.
2. The Domain Name and Registrar
The disputed domain name <accutaneprice.com> is registered with Dotster, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 21, 2010. On May 21, 2010, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar 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” or “UDRP”), 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 27, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 16, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 18, 2010.
The Center appointed Thomas L. Creel as the sole panelist in this matter on July 1, 2010. 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
ACCUTANE is registered as a trademark for a dermatological preparation with the United States Patent and Trademark Office as Registration No. 966924. It was registered as of August 28, 1973 alleging a first use date of November 27, 1972. It was registered and is currently owned by Complainant Hoffmann-La Roche Inc.
Complainant alleges that an ACCUTANE pharmaceutical product for treating acne has long been sold in the United States (“U.S.”) and that it has been extensively promoted in print, promotional materials, packaging, medical informational materials, television advertising and direct mailings. Evidence was submitted of media articles attesting to the widespread use and effectiveness of this product. Complainant claims U.S. sales of this product have exceeded hundreds of millions of dollars. However, evidence submitted shows that Complainant notified the U.S. Food and Drug Administration in June, 2009 that it would immediately discontinue the manufacture and distribution of the ACCUTANE product. Complainant makes no claim of current sales.
Complainant alleges that it has a parent company, F. Hoffmann-La Roche AG. (“Roche AG”). Roche AG has registered the domain name <accutane.com>.
The Panel finds no reason to doubt the allegations in the Complaint.
Respondent registered the disputed domain name <accutaneprice.com> on February 24, 2010. Contact information for the Respondent of a street address, e-mail address and telephone number is available from the Registrar.
5. Parties' Contentions
A. Complainant
Complainant has requested that the disputed domain name be transferred to it because:
1. the disputed domain name is confusingly similar to a trademark or service mark in which Complainant has rights;
2. Respondent has no rights or legitimate interests in the disputed domain name and has not been commonly known by the domain name;
3. Respondent has not used the disputed domain name for a bona fide offering of goods or services;
4. Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain; and
5. Respondent registered and is using the disputed domain name in bad faith.
B. Respondent
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration.
The Policy establishes three elements that must be established by Complainant to obtain relief. These elements are that:
1. Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
2. Respondent has no rights or legitimate interests in respect of the domain name; and
3. Respondent's domain name has been registered and is being used in bad faith.
Each or these elements will be addressed below, after first addressing jurisdiction.
It is essential to dispute resolution proceedings that fundamental due process requirements are met. Such requirements include that a respondent has notice of proceedings that may substantially affect his rights. The Policy and Rules establish procedures designed to employ reasonably available means to achieve actual notice to a respondent. Thus, a respondent is to be given adequate notice of the proceedings initiated against him or her and a reasonable opportunity to respond.
Counsel for Complainant sent a letter to Respondent at the post and e-mail addresses available from pubclicly available WhoIs page and the Registrar, which addresses were those presumably supplied by Respondent. This letter demanded that he cease the activity which is the subject of the Complaint and requested the disputed domain name be transferred. Both the post copy (sent by Certified Mail) and the e-mail were returned as undeliverable. Also, a copy of the Complaint was sent to Respondent when filed by Complainant via e-mail. This too was returned as undeliverable.
The Center also sent Complainant a notification, together with the Complaint, advising about the proceedings by both courier and e-mail. These communications advised of the consequences of not responding and of default. The e-mail was returned as undeliverable, while the courier correspondence was stated to be: “Delivered. Location. Front Door”. When the deadline for a Response passed, the Center sent a communication by e-mail advising of the default and the consequences thereof. This too was returned as undeliverable
There is no record in the proceedings indicating that any of the e-mail communications to Respondent at the address for Respondent were delivered. However, at least one courier copy of the Complaint appears to have been delivered. Nevertheless, the notification procedures used were reasonably available means calculated to achieve actual notice and were the procedures set forth in the Policy and the Rules. That is enough for the Panel to exercise jurisdiction. It should be noted that Respondent is required to provide accurate locator information to the Registrar so that notification, such as attempted here, can be made. Furthermore, it has been determined that supplying false information can, itself, be additional evidence of bad faith. See Oxygen Media, LLC v. Primary Source,
WIPO Case No. D2000-0362.
A. Identical or Confusingly Similar
The disputed domain name contains the entire ACCUTANE trademark of Complainant. The addition of the descriptive word “price” does not prevent likelihood of confusion in this case. The disputed domain name is confusingly similar to a trademark in which Complainant has rights. Thus, the requirement of paragraph 4(a)(i) of the Policy is met.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy enumerates how a respondent may establish rights to and legitimate interests in a domain name. Respondent has not filed a Response to the Complaint. Complainant has alleged that Respondent has no rights or legitimate interests in the disputed domain name. The Panel does not find anything in the record which would indicate that Respondent has any rights or legitimate interests in the disputed domain name. Indeed, the Panel finds that the record establishes that the Respondent does not have such rights or legitimate interests. Therefore, the requirement of paragraph 4(a)(ii) of the Policy is met.
C. Registered and Used in Bad Faith
Respondent's use indicates that the disputed domain name was selected and is being used because of the goodwill created by Complainant in the ACCUTANE trademark. Respondent intentionally is attempting to create a likelihood of confusion with Respondent's mark for his own financial gain. Respondent's site offers the ACCUTANE product for sale. A prospective customer for the ACCUTANE product, typing the disputed domain name, is directed to another site. That site purports to offer not only the ACCUTANE product, but additional products of Complainant and products of its competitors. Respondent's site also depicts an ACCUTANE brand package and uses the term ACCUTANE in a copyright notice as if it was a company name, all without authorization from Complainant.
Basically, Respondent is using Complainant's ACCUTANE mark to promote and obtain sales through a purported online pharmacy. The Panel infers that Respondent is likely receiving some pecuniary benefit for directing traffic to that pharmacy. However, all prescriptions for sales of ACCUTANE into the U.S. are subject to the requirements of the iPLEDGE program of the U.S. Food and Drug Administration (FDA). The product label approved by the FDA states that ACCUTANE must not be prescribed, dispensed or otherwise obtained through the Internet. Also, no more than a one month supply of this drug can be sold in a single order, whereas 60 and 90 day supplies can be obtained through Respondent's sites. Respondent's sales activites violate the FDA iPLEDGE program.
The Panel agrees with the analysis in Hoffmann-La Roche Inc. v. Whois Protection,
WIPO Case No. D2009-0445, which likewise concerned the ACCUTANE mark. There, the panel ordered the transfer of the domain name <acutane.com> to Complainant. In so doing, the panel stated:
“The Panel finds that, by using the domain name for a set of links to other providers of pharmaceutical products, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's ACCUTANE trademark as to source, sponsorship and affiliation of the website for the following reasons: The domain name represents a misspelled version of the Complainant's trademarks sounding identical and spelled nearly identical to the Complainant's trademarks. In addition to that, the Respondent's website provides links to the Complainant's competitors, selling competitive products and other pharmaceutical products to Internet users. Therefore, Internet users are likely to get the idea that the Respondent's site at the disputed domain name is an official site of the Complainant sponsored by the Complainant or affiliated with the Complainant. Such likelihood of confusion would in all likelihood attract more customers to the site of the disputed domain name resulting in commercial gain as the Respondent's site provides links to numerous commercial websites.”
In addition, it has to be taken into account that ACCUTANE may not be sold via the Internet as it has to comply with the requirements of pharmaceutical regulations. By providing links to websites where users can, despite these regulatory requirements, buy these products, Respondent attempts to attract, for commercial gain, in particular those users seeking to circumvent the regulatory requirements and to buy the products via Internet, by creating a likelihood of confusion.
The Panel finds that Respondent acted intentionally. It is not conceivable to the Panel that Respondent could have registered the disputed domain name without having the Complainant's ACCUTANE trademark in mind. Respondent's intention to use the disputed domain name as a reference to Complainant and its trademarks is obvious considering that no rights or legitimate interests in using the disputed domain name are apparent and considering that Complainant registered its trademarks years before the registration of the disputed domain name. The Complainant's parent company also registered its corresponding domain name <accutane.com> years before the registration of the disputed domain name and had been using for years intensively the term “Accutane” as designation for its products for the treatment and prevention of acne. See Hoffman-La Roche Inc. v. Whois Protection, supra.
The Panel finds the disputed domain name issue was 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 <accutaneprice.com> be transferred to Complainant.
Thomas L. Creel Sole Panelist
Dated: July 15, 2010
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