Roche Products Limited v. Andrew Palanich / Merchservice
Claim Number: FA1010001354115
Complainant is Roche Products Limited (“Complainant”), represented by Elizabeth Atkins of Lathrop & Gage L.C., New York, USA. Respondent is Andrew Palanich/ Merchservice (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <buy-accutane-online.us >, registered with INTERNET.BS.CORP.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically October 21, 2010; the Forum received a hard copy of the Complaint October 22, 2010.
On October 22, 2010, INTERNET.BS.CORP confirmed by e-mail to the Forum that the <buy-accutane-online.us >, domain name is registered with INTERNET.BS.CORP and that Respondent is the current registrant of the name. INTERNET.BS.CORP verified that Respondent is bound by the INTERNET.BS.CORP registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On October 26, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 15, 2010, by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 18, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum discharged its responsibility under Paragraph 2(a) of the Rules. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name that Respondent registered, <buy-accutane-online.us >, is confusingly similar to Complainant’s ACCUTANE mark.
2. Respondent has no rights to or legitimate interests in the <buy-accutane-online.us > domain name.
3. Respondent registered and used the <buy-accutane-online.us > domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Roche Products Limited, is a research-focused healthcare group in the field of pharmaceuticals and diagnostics. Complainant is based in the United Kingdom and operates in more than 100 countries. Complainant started using the mark ACCUTANE in 1972 for its version of the acne medicine isotretinoin.
Respondent, Andrew Palanich / Merchservice, registered the disputed domain name <buy-accutane-online.us > August 4, 2010. The Respondent’s disputed domain name resolves to a website showing a picture of Complainant’s ACCUTANE product packaging and links for buying the generic version of ACCUTANE from competing third parties.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Given Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Complainant contends it has rights in both the ROACCUTANE and ACCUTANE marks. The Panel chooses to use Complainant’s ACCUTANE mark in its analysis. While ROACCUTANE is registered with the United Kingdom Intellectual Property Office (“UKIPO”) (Reg. No. 1,119,969 issued September 3, 1979), Complainant has not supplied evidence indicating such a registration for ACCUTANE. The Panel finds that trademark registration with a governmental trademark authority is unnecessary so long as Complainant can establish the requisite secondary meaning necessary to demonstrate common law rights in its ACCUTANE mark. See Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that the Policy does not require that a complainant’s trademark be registered by a government authority or agency in order for the complainant to establish rights in the mark); see also Hiatt v. personal fan & official site builders : we build great sites, FA 881460 (Nat. Arb. Forum Feb. 21, 2007) (“[R]egistration with a trademark authority is unnecessary under Policy ¶ 4(a)(i) in instances where a mark has gained secondary meaning through extensive commercial use and common law rights have been established ….”).
Based on the evidence given in the Complaint, the Panel concludes that ACCUTANE has acquired secondary meaning and is therefore, for the purposes of this decision, an enforceable trademark. ACCUTANE has been used by Complainant since 1972 and has been the focus of print advertisements, television advertisements, direct mailings, and medical journals. Such efforts have resulted in millions of dollars in sales for Complainant. Continued public use of the product over more than three decades has provided sufficient evidence of secondary meaning and warrants trademark protection. See Ass’n of Tex. Prof’l Educators, Inc. v. Salvia Corp., FA 685104 (Nat. Arb. Forum May 31, 2006) (holding that the complainant had demonstrated common law rights in the ATPE mark through continuous use of the mark in connection with educational services for over twenty-five years); see also Kahn Dev. Co. v. RealtyPROshop.com, FA 568350 (Nat. Arb. Forum June 23, 2006) (holding that the complainant’s VILLAGE AT SANDHILL mark acquired secondary meaning among local consumers sufficient to establish common law rights where the complainant had been continuously and extensively promoting a real estate development under the mark for several years). Therefore, the Panel finds that Complainant has shown common law rights in the ACCUTANE mark under Policy ¶ 4(a)(i).
The Panel finds that Respondent’s <buy-accutane-online.us > domain name is confusingly similar to Complainant’s ACCUTANE mark. The disputed domain name fully incorporates Complainant’s mark with a few generic additions. The fact that the disputed domain name fully incorporates the mark in its entirety can render a domain name confusingly similar. See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks”). In this case, the additional generic words “buy” and “online” do nothing to distinguish the domain name from the Complainant’s ACCUTANE mark. See Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end); see also Broadcom Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001) (finding the <broadcomonline.com> domain name is confusingly similar to the complainant’s BROADCOM mark). The hyphens and generic top-level domain (“gTLD”) also provide no distinguishing value. See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005) (“Therefore, the Panel concludes that the addition of a term descriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s mark.”). Accordingly, the Panel finds that Respondent’s buy-accutane-online.us > domain name is confusingly similar to Complainant’s ACCUTANE mark for the purposes of Policy ¶ 4(a)(i).
For the reasons stated above, the Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant alleges that Respondent does not have any rights or legitimate interests in the <buy-accutane-online.us> domain name. Once Complainant makes a prima facie case to support its allegations, the burden of proof shifts to Respondent to prove that it does have such rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant made a sufficient prima facie case. Given Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain name. However, this Panel still examines the record to determine whether evidence there suggests that Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Law Soc’y of Hong Kong v. Domain Strategy, Inc., HK-0200015 (ADNDRC Feb. 12, 2003) (“A respondent is not obligated to participate in a domain name dispute . . . but the failure to participate leaves a respondent vulnerable to the inferences that flow naturally from the assertions of the complainant and the tribunal will accept as established assertions by the complainant that are not unreasonable.”).
The Panel finds no evidence in the record to support any claim that Respondent is known as the <buy-accutane-online.us> domain name pursuant to Policy ¶ 4(c)(ii). The WHOIS information indicates the Respondent is known by a different name. The Respondent has also not provided any evidence. The Panel finds that the record supports Complainant’s allegations that Respondent lacks rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Respondent uses the disputed domain name to resolve to a website that features products that directly compete with Complainant’s offerings under its ACCUTANE mark. The Panel finds that Respondent’s use of the disputed domain name to market and sell directly competing products in neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) The Panel finds that it is likely that Internet users seeking Complainant’s product would accidentally find Respondent’s website instead of Complainant’s. Once at the Respondent’s website, users are confronted with products not affiliated with Complainant. This presumably benefits the Respondent. This use of a confusingly similar domain name supports Complainants allegations that Respondent has no bona fide offering of goods at the site and thus cannot acquire rights or legitimate interests in that manner. See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Complainant also alleges that Respondent is attempting to pass itself off as Complainant through its use of the disputed domain name. The Respondent’s domain name resolves to another site that purports to be selling ACCUTANE. The site uses the ACCUTANE mark as well as the ACCUTANE packaging. The site actually sells the generic version of ACCUTANE. The Panel finds that this is an impermissible passing off as the product of another and supports findings that Respondent lacks rights and legitimate interests. See Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .”); See also Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
The Panel finds that the disputed domain name attracts Internet users and diverts consumers away from Complainant, disrupting its business. Once users arrive at the resolving website they are given the opportunity to buy the generic version of ACCUTANE from Complainant’s competitors. The Panel finds that this use supports findings of bad faith under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)).
The Panel finds that Respondent is using a domain name that is confusingly similar to Complainant’s mark to attract Internet users to the Respondent’s own website for financial gain. Internet users seeking to purchase ACCUTANE would inevitably find Respondent’s website through Respondent’s use of a confusingly similar domain name. The Panel presumes that, after the Internet users mistakenly arrive at Respondent’s website, Respondent benefits in some way. This may be through sponsored advertisements or click through fees. The Panel finds that this attraction for financial gain, aside from further evidence of disruption, indicates bad faith under Policy ¶4(b)(iv) . See State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the respondent registered the domain name <bigtex.net> to infringe on the complainant’s goodwill and attract Internet users to the respondent’s website); DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”).
Also, as noted above, Complainant alleges that Respondent is using the disputed domain name to pass itself off as being affiliated with the Complainant. While this is evidence of a lack of rights and legitimate interests, the Panel finds that it is also an indication of bad faith. See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith); see also Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <buy-accutane-online.us> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: November 29, 2010
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