WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. George McKennitt
Case No.�D2005-1300
1. The Parties
The Complainant is F. Hoffmann-La Roche AG, Basel, Switzerland, represented by F.�Hoffmann-La Roche AG, Switzerland.
The Respondent is George McKennitt, Laval, Canada.
2. The Domain Names and Registrar
The disputed domain names , and are registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the�“Center”) on December�15,�2005. On December�16,�2005, the Center transmitted by email to eNom a request for registrar verification in connection with the domain names at issue. On December 17, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The�Center verified that the Complaint together with the amendment to 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 December�20,�2005. In accordance with the Rules, paragraph�5(a), the due date for Response was January�9,�2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January�13,�2006.
The Center appointed Torsten�Bettinger as the Sole Panelist in this matter on January�24,�2006. 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 is one of the world’s leading healthcare groups in the fields of pharmaceuticals and diagnostics with global operations in more than 100�countries.
Complainant is the registered owner of the mark VALIUM in more than hundred countries worldwide.
Complainant submitted screen shots of Respondent’s website that show that the use of the disputed domain names redirect Internet users to a website that offer for sale a large variety of drugs but not VALIUM products.
5. Parties’ Contentions
A. Complainant
Complainant asserts that each of the elements specified in paragraph�4(a) of the Policy have been satisfied.
In reference to the element in paragraph�4(a)(i) of the Policy, Complainant argues that the words “buy” and “online” are descriptive and therefore does no eliminate the similarity between Complainant’s trademark VALIUM and the disputed domain names.
In reference to the element in paragraph�4(a)(ii) of the Policy, Complainant contends that none of the situations described in paragraph�4(c) of the Policy can be established in this case. Complainant states that Respondent has no permission or authorization to use the VALIUM mark in his domain names and the use of the domain names for a website selling a large variety of drugs other than VALIUM products is not a legitimate use.
In reference to the element in paragraph�4(a)(iii) of the Policy, Complainant asserts that there is no reason for Respondent to use Complainant’s mark in the disputed domain names other than to use it to attract the public to Respondent’s website for commercial gain. Respondent alleges that by using VALIUM, Respondent is creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website and the products offered on the website.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the domain name is used or other marketing and use factors, such as the “Sleekcraft�factors” – AMF Inc. v. Sleekcraft Boats, 599 F.2d 341,346 (9th�Cir.�1979), usually considered in trademark infringement (See Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No.�D2000-1698, Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No.�D2001-0110, Dixons Group Plc v. Mr. Abu Abdullaah, WIPO Case No.�D2001-0843, AT&T Corp. v. Amjad Kausar, WIPO Case No.�D2003-0327, BWT Brands, Inc. and British Am. Tobacco (Brands), Inc. v. NABR, WIPO Case No.�D2001-1480; Britannia Building Society v. Britannia Fraud Prevention WIPO Case No.�D2001-0505).
The disputed domain names wholly incorporate Complainant’s famous trademark VALIUM, used in connection with drugs. The fact that the words “buy-online”, or “online” are added to Complainant’s trademark do not eliminate the similarity between Complainant’s trademark and the disputed domain name, as “buy-online” and “online” are descriptive components of the disputed domain name. In numerous cases, it has been held that a domain name that wholly incorporated a complainant’s registered mark may be sufficient to establish confusing similarity for purposes of the Policy despite the addition of descriptive words to such marks.
It is also well established that the specific top level of a domain name such as “.com”, “.org” or “.net” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar. (See Magnum Piering, Inc. v. The Mudjackers and Garwood & Wilson, Sr., WIPO Case No.�D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No.�D2000-0429)
The Panel thus finds that the domain name , and are confusingly similar to the trademark in which Complainant has exclusive rights and that the Complainant has established the requirement of paragraph�4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph�4(c) of the Policy requires the Complainant to prove that the Respondent has no right or legitimate interest in the disputed domain name. However, it is consensus view among Panelists that if Complainant makes a prima facie case that the Respondent has no rights or legitimate interests, and Respondent fails to show one of the three circumstances under Paragraph�4(c) of the Policy, then the Respondent may lack a legitimate interest in the domain name.
Complainant asserted that the Respondent has neither a license nor any other permission to use the Complainant’s famous trademark VALIUM. The Respondent has not denied these assertions. The Panel thus finds that the Complainant has made a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain names which wholly incorporate the Complainant’s mark.
Respondent has not provided evidence of circumstances of the type specified in paragraph�4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the domain name.
The Respondent is not a reseller of Complainant’s VALIUM products, but is using Complainant’s trademark for a website devoted to sale of various drugs other than Complainant’s VALIUM Products. Respondent’s use of the domain name to divert Internet users to its website capitalizing on the Complainant’s mark is not a bona fide use pursuant to paragraph�4(c)(i) of the Policy.
Under these circumstances, the Panel takes the view that the Respondent has no rights or legitimate interests in the domain name and that the requirement of paragraph�4(a)(ii) is also satisfied.
C. Registered and Used in Bad Faith
The Panel is also convinced that Respondent registered and used the Domain Name in bad faith.
Complainant’s VALIUM products are world wide known pharmaceutical product. It is therefore inconceivable that Respondent registered the domain names unaware of Complainant’s rights in its VALIUM marks.
The use of the domain names , and for an online pharmacy site on which Respondent sells a large variety of drugs but not VALIUM products clearly indicates that Respondent’s primary intent in registering and using these domain names was to trade on the Complainants’ good will and reputation by creating a likelihood of confusion with the Complainant’s VALIUM mark and the Respondent’s online pharmacy.
Accordingly, the Panel finds from the circumstances that the Respondent registered and is using the disputed domain names in an attempt to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. Pursuant to Paragraph�4(b)(iv), this constitutes evidence of bad faith registration and use of a domain name for purposes of Paragraph�4(a)(iii).
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 names, , and be transferred to the Complainant.
Torsten Bettinger
Sole Panelist
Dated: February�6,�2006
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