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January 3, 2011 / Nate Harris

ACCUTANE Owner Successfully Clears Up UDRP Proceeding

Summary of Roche Products Limited v. Domains by Proxy, Inc. / Christian Hunter

(WIPO Case No. D2010-1892)

Filed: November 5, 2010; Decided: December 17, 2010 (Panelist: Beatrice Onica Jarka)

Disputed domain names: <accutaneawards.com>, <accutanedanger.com>, <accutanedangers.com>, <accutanelegal.com>, <accutaneproblem.com>,<accutaneproblems.com>, <accutanetrial.com>, and <helpforaccutane.com>

 

accutaneawards.com

 

The Parties

Complainant Roche Products Limited (“Roche”) is a U.K.-based company that markets Accutane, a Vitamin A analog used in the treatment of acne and other conditions. Accutane has been on the market since 1972, and Roche has heavily promoted and advertised it. Roche owns trademark registrations dating to 1972 for ACCUTANE and ROACCUTANE.

Respondent Domains by Proxy, Inc. / Christian Hunter (collectively, “Respondent”) registered the disputed domain names on April 4, 2010. Each of the disputed domains points to a pay-per-click website containing links to sites that variously refer to competitor’s products and lawsuits relating to the use of Accutane.

Respondent’s only response to the complaint was an email to WIPO, claiming that it “does not know about what the UDRP procedure means.” (quoting the decision).

Identical or Confusingly Similar

The Panel is satisfied that Roche holds rights in the ACCUTANE mark. The disputed domain names incorporate Roche’s mark, plus various descriptive words that do nothing to distinguish the disputed domain names from the mark. Rather, the disputed domains may cause Internet users to think that they are authorized by Roche.

Rights or Legitimate Interests

There is no evidence that Roche has authorized Respondent’s use of the ACCUTANE mark, or that Respondent is commonly known by any of the disputed domain names. Though the links to drug-related lawsuits could be a basis for a fair use defense, the links to competitors’ websites rule out such a defense as they are “an obvious indication of Respondent’s intent to capitalize on the reputation associated with the Complainant’s trademarks.”

Bad Faith

In the Panel’s view, Respondent was likely aware of the ACCUTANE mark at the time the disputed domains were registered, and seeks to divert Internet users to its website for its own commercial gain. Therefore, the requirements of bad faith registration and use are satisfied.

Decision

The Panel orders that the disputed domains are to be transferred to Roche.

Commentary

According to the decision, Roche contended as follows:

Two of the disputed domains [presumably accutaneawards.com and accutanetrial.com] are names which could have been registered by the Complainant for the purpose of providing clinical information on trial or awards of the ACCUTANE drug[.]

I think most consumers would more readily assume that <accutanetrials.com> refers to legal (i.e., courtroom) trials involving people injured by Accutane, not, as Roche argues, drug trials involving Accutane. (I think <accutaneawards.com> is kind of a toss-up.) For that reason, there’s always the chance that a panel would say that such a domain is not confusingly similar, because consumers would understand that Roche would probably not register such a website.

Therefore, Roche’s argument that <accutanetrials.com> could refer to drug trials and “could have been registered” by itself is pretty clever, in that it blurs the fair use argument that the Respondent was providing information on Accutane-related lawsuits.

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