WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. Web Marketing Limited
Case No. D2006-0005
1. The Parties
1.1 The Complainant is F. Hoffmann-La Roche AG, Basel, Switzerland, represented by F. Hoffmann-LaRoche AG, Switzerland.
1.2 The Respondent is Web Marketing Limited, Nassau, Bahamas.
2. The Domain Names and Registrar
2.1 The disputed domain name is registered with CSL Computer Service Langenbach GmbH dba J.
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 4, 2006. On January 4, 2006, the Center transmitted by email to CSL Computer Service Langenbach GmbH dba J a request for registrar verification in connection with the domain name at issue. On January 5, 2006, CSL Computer Service Langenbach GmbH dba J 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 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”).
3.2 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 January�6,�2006. In accordance with the Rules, Paragraph 5(a), the due date for Response was January 29, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 30, 2006.
3.3 The Center appointed Jay Simon as the sole Panelist in this matter on February�13,�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
4.1 Complainant is one of the world’s leading healthcare companies, and with its affiliates (not parties to these proceedings) operates in over 100 countries. Complainant is a leader in diagnostics as well as research, development and marketing of pharmaceutical drugs.
4.2 Complainant owns International Trademark Registration Certificate No. R250784 for its product VALIUM and has registered trademark protection for this product in over 100 countries.
4.3 The mark VALIUM designates a sedative and anxiolytic drug belonging to the benzodiazepine family and the drug has been marketed for many years. The priority use for the trademark is December 20, 1961.
4.4 The disputed domain name was registered by Respondent on March 2, 2005.
4.5 The disputed domain name resolves to a website offering diazepam (described as generic valium) for sale and contains a link to Complainant’s website.
4.6 Respondent is in default in these proceedings and was notified of its default by the Center on January 30, 2006.
5. Parties’ Contentions
A. Complainant
5.1 Complainant contends that the disputed domain name is confusingly similar to Complainant’s mark in that it incorporates the mark in its entirety. Complainant further contends that its mark is well known and notorious and that this notoriety increases the likelihood of confusion.
5.2 Complainant contends that Respondent has no rights or legitimate interests in respect of the disputed domain name and that Complainant has not licensed, permitted, authorized, or consented to Respondent’s use of Complainant’s mark in the disputed domain name.
5.3 Complainant further contends that a reseller cannot have bona fide rights in a domain name unless it sells only the trademarked product and that Respondent is offering a competing product, i.e., the generic product diazepam, rather than VALIUM.
5.4 Complainant further contends that Respondent’s website’s link to Complainant’s website for VALIUM is evidence of a lack of good faith and is not a bona fide offering of goods or services.
5.5 Complainant contends that the disputed domain name was registered and is being used in bad faith in that the disputed domain name along with the link to Complainant’s website shows actual knowledge of Complainant’s rights.
5.6 Complainant further contends that Respondent’s offering of “generic VALIUM”, a product that competes directly with Complainant’s trademarked product, is a commercial use and that Respondent is attempting to attract internet users to its website by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of Respondent’s website and the products offered thereon.
5.7 Complainant requests that the disputed domain name be transferred to Complainant.
B. Respondent
5.8 Respondent has failed to respond to the Complaint and has not otherwise actively participated in these proceedings.
6. Discussion and Findings
6.1 The Policy as affected by the Rules and the Supplemental Rules provides specified remedies to trademark owners against registrants of domain names where the owner of the mark (Complainant) proves each of the following elements:
(a) the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(b) the registrant (Respondent) has no rights or legitimate interests in respect of the domain name; and
(c) the domain name has been registered and is being used in bad faith.
6.2 Complainant has the burden of proof, by a preponderance of the evidence, respecting each element noted above in Paragraph 6.1.
6.3 Respondent having failed to respond in these proceedings, is in default, and in accordance with Paragraph 14(b) of the Rules, “the panel shall draw such inferences…as it considers appropriate”.
A. Identical or Confusingly Similar (Paragraph 4(a)(i) of the Policy)
6.4 This Panel believes that Complainant’s mark VALIUM is a famous mark, known throughout the world and worthy of the highest degree of protection. With this position in mind, the Panel notes that the only differences between the disputed domain name are the addition “-NET.COM”. Otherwise the disputed domain name incorporates the entirety of Complainant’s mark. Given the notoriety of Complainant’s mark, this Panel finds that it is difficult, if not impossible, to add anything to Complainant’s mark that would distinguish the disputed domain name from Complainant’s mark. And the material added by Respondent is of such a minor nature as to have no effect on the distinctiveness of the mark. Further, it is well established that incorporating the entirety of a mark into a domain name is sufficient to establish that a domain name is confusingly similar to the registered mark, see E Auto, L.L.C. v. Triple S Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047. Thus, this Panel finds the disputed domain confusingly similar to Complainant’s registered trademark.
B. Lack of Rights or Legitimate Interests (Paragraph 4(a)(ii) of the Policy)
6.5 Paragraph 4(c) of the Policy lists three, non-exclusive methods for determining whether a respondent has rights or legitimate interests in a disputed domain.
6.6 In respect of demonstrating a respondent’s lack of rights or legitimate interests in a disputed domain name, the burden of proof rests with complainant. However, where the complainant having made the necessary assertions and providing evidence, it is incumbent upon the respondent to come forward with evidence of its rights or legitimate interests in the disputed domain name, the respondent being uniquely possessed of this evidence, if such evidence exists. Respondent has failed to present any evidence of its rights or legitimate interests in the disputed domain name, and such failure is tantamount to admitting the truth of Complainant’s assertions; See Do the Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624.
6.7 Respondent having defaulted in these proceedings, there is no evidence that Respondent has been commonly known by the disputed domain (if that was at all possible given the notoriety of Complainant’s mark) or that Respondent is making any non-commercial or fair use of the mark. Indeed, it is clear that Respondent’s use of the disputed domain name is for commercial purposes and without the consent of Complainant. Respondent is using a confusingly similar domain name to offer a product that competes with Complainant’s product. This Panel cannot find Respondent’s use to be a bona fide use under these circumstances.
6.8 Respondent’s website offers for sale a “…generic VALIUM.” This Panel notes that there is no such thing as generic VALIUM. There is either VALIUM, a diazepam product, manufactured only by Complainant, or diazepam, a product that can be manufactured by anyone. Thus, while VALIUM is a diazepam product, diazepam is not VALIUM unless it is manufactured by Complainant. It is clear to this Panel that Respondent is using Complainant’s famous trademark to sell diazepam – not VALIUM; and this Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
C. Registration and Use in Bad Faith (Paragraph 4(a)(iii) of the Policy)
6.9 Paragraph 4(b) of the Policy indicates several non-exclusive methods for showing bad faith registration and use of a disputed domain name.
6.10 With the widespread fame of the VALIUM trademark it is virtually inconceivable that Respondent was unaware of Complainant’s mark. To the contrary, Respondent must have been aware of the mark when Respondent’s website offered “generic VALIUM” and contained a link to the Complainant’s website.
6.11 Further, there is no doubt in the mind of this Panel that Respondent was and is using a domain name confusingly similar to Complainant’s mark for the sole purpose of attracting internet users to Respondent’s website in order to sell a product, diazepam, that competes with Complainant’s VALIUM product. Thus, this Panel finds that Paragraph 4(b)(iv) of the Policy is satisfied and Respondent registered and is using the disputed domain name in bad faith.
7. Decision
7.1 For all the foregoing reasons, in accordance with Paragraph 4(a) of the Policy and Paragraph 15 of the Rules, this Panel orders that the domain name be transferred to Complainant.
Jay Simon
Sole Panelist
Dated: March 14, 2006
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