WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. Lythion Services Ltd
Case No. D2006-0035
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 Lythion Services Ltd, Nicosia, Cyprus.
2. The Domain Names and Registrar
2.1 The disputed domain name is registered with eNom.
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January�11,�2006. On January�11,�2006, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On January�12,�2006, 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 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�16,�2006. In accordance with the Rules, paragraph 5(a), the due date for Response was February�5,�2006. The Response was filed with the Center on January�26,�2006.
3.3 The Center appointed Jay Simon as the sole Panelist in this matter on February�2,�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.
3.4 Because of illness, the Panel requested an extension of the decision date, and the Center granted the request.
4. Factual Background
4.1 Complainant is one of the world’s leading healthcare companies, engaged in research and manufacture of pharmaceuticals, as well as diagnostics. Together with its affiliated companies (not parties to this proceeding), Complainant operates in more than 100 countries throughout the world.
4.2 Complainant’s activities led it to develop and market a particular drug belonging to the benzodiazepine family – valium – which enabled Complainant to build a global reputation in psychotropic medications.
4.3 Complainant holds an international trademark registration No. R250784 with a priority date of December�20,�1961, for VALIUM, and the mark is registered in over 100 countries.
4.4 For purposes of this proceeding, this Panel believes that the trademark VALIUM is a famous mark.
4.5 Respondent registered the disputed domain name on March�19,�2005.
4.6 The disputed domain name resolves to an on-line pharmacy offering VALIUM, other competing and non-competing drugs.
4.7 Respondent filed a Response in which it alleged that it had nothing to do with the filing of the disputed domain name and that another party had used Respondent’s name to file the disputed domain name.
5. The Parties Contentions
A. Complainant
5.1 Complainant contends that the disputed domain name is confusingly similar to Complainant’s mark in that the domain name incorporates the mark in its entirety, adding “4-” at the beginning and “.com” at the end of the mark, neither of which sufficiently distinguishes the disputed domain name from Complainant’s trademark.
5.2 Complainant contends that Respondent has no rights or legitimate interests respecting the disputed domain name and has not licensed, permitted, authorized, or granted any right to use Complainant’s mark in the disputed domain name. Complainant further contends that Respondent is using the disputed domain name for commercial gain and for the purpose of capitalizing on the fame of Complainant’s mark.
5.3 Complainant contends that the disputed domain name was registered and is being used in bad faith and that Respondent had knowledge of Complainant’s mark when Respondent registered the disputed domain name.
5.4 Complainant further contends that Respondent’s use of the disputed domain name is to intentionally attract internet users to Respondent’s on-line pharmacy website by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement by Complainant of Respondent’s website and products sold thereon. Complainant contends that Respondent’s sale of competing products on its website is evidence of bad faith use of the disputed domain name by Respondent. Complainant further contends that Respondent’s use of the disputed domain name is potentially harmful to the health of internet users who purchase VALIUM under the mistaken impression that they are dealing with Complainant.
5.5 Complainant requests that the disputed domain name be transferred to Complainant.
B. Respondent
5.6 Respondent responded with a letter, purportedly from Respondent’s representative, to the effect that someone other than Respondent used Respondent’s name to register the disputed domain name and that Respondent has no knowledge whatsoever of the domain name nor has it ever requested the domain name.
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 filed no evidence in these proceedings and has not contested the assertions or evidence filed by Complainant. Respondent alleges that it has no knowledge of the filing of the disputed domain name and that some other party has used Respondent’s name and address without Respondent’s permission.
A. Identical or Confusingly Similar (Paragraph 4(a)(i) of the Policy)
6.4 Complainant’s VALIUM mark is a strong, famous, distinctive mark, internationally known. It would be difficult and likely impossible to dress up or use modifiers in connection with this mark to dilute the effect of having VALIUM in a domain name. The VALIUM mark will predominate whatever else is added to it, and such is the case here. The additions to the mark by Respondent in the disputed domain name are simply extraneous and do not distinguish the disputed domain name from Complainant’s trademark.
6.5 That VALIUM is a known mark and accepted as such in proceedings before the Center can be seen from F. Hoffmann-LaRoche AG v. NetMarketing cc, WIPO Case No. D2005-1216. That the addition of “-4” is of no significance in distinguishing a domain name as can be seen from Credit Suisse Group v. Kingdomdatanet Network, Inc, WIPO Case No. D2004-0846. Thus, the “4-” is merely saying “for”. There is no question, in this Panel’s mind, that the disputed domain name is confusingly similar to Complainant’s trademark.
B. Lack of Rights or Legitimate Interests (Paragraph 4(a)(ii) of the Policy)
6.6 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.
6.7 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.
6.8 There is no evidence that Respondent has been known by the disputed domain name. Further, Complainant has asserted, the assertion being uncontested, that it has not authorized Respondent, in any way, to use Complainant’s mark. And the evidence presented by Complainant shows that Respondent’s use of the mark in the disputed domain name is neither fair use nor non commercial use. The only issue is whether Respondent’s use of the disputed domain name is a bona fide use.
6.9 The disputed domain name resolves to the website of an on-line pharmacy. An on-line pharmacy is not much different from the pharmacy (or chemist) down the street or at the corner. Instead of walking to the pharmacy on the corner, one gets to an on-line pharmacy via the internet. But the on-line pharmacy is not reached by an internet user by typing in the domain name of the on-line pharmacy. Rather, it is reached by entering a domain name confusingly similar to Complainant’s well-known mark. Thus, it is clear that Respondent’s use of the disputed domain is for commercial purposes and for no reason other than to use Complainant’s mark and the goodwill associated with that mark, to attract internet users looking for Complainant’s goods to a site operated by or for Respondent. Using a name confusingly similar to another’s famous name to attract customers to a site or place not authorized by that other, for commercial gain, cannot be considered bona fide use.
6.10 The best that can be said for Respondent is that it is a re-seller of Complainant’s goods – as well as the goods of others including others that sell goods in competition with Complainant’s goods. The issue of whether a re-seller – the re-seller being an on-line pharmacy – can obtain rights in a domain name was ably handled in Hoffmann-LaRoche Inc. v. #1 Viagra Propecia Xenical & More Online Pharmacy, WIPO Case No. D2003-0793, where the panel wrote:
“First, the majority of UDRP arbitration decisions have held that a reseller does not have the right to incorporate the trademark of the resold goods into the domain name of the reseller, Nikon, Inc. v. Technilab, WIPO Case No. D2000-1774. Respondent has not denied Complainant’s allegation that it is not a licensee or otherwise contractually authorized to use XENICAL as part of a domain name. In AVENTIS Pharma S.A. and Merrell Pharmaceuticals In. v. Rx USA, WIPO Case No. D2002-0290, another case involving the sale of prescription medication via an online pharmacy, the Panelist found: ‘While the selling of goods which originate from the Complainant might entitle the Respondent to use a mark associated with the goods in connection with their sale, this does not give it the right to register and use the mark as a domain name without the consent of the holders of the trademarks. Thus, it is prevented from having prior rights to or legitimate interests in the Domain Name as against the Complainant.’ ” (emphasis added original).
Those sentiments are no less applicable here, 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)
6.11 Paragraph 4(b) of the Policy sets out four, non-exclusive indicia of bad faith registration and use of a disputed domain name. Given the uncontested allegations and evidence presented by Complainant, this Panel concludes that Respondent registered and is using the disputed domain name in bad faith.
6.12 This Panel is not alone in considering Complainant’s mark as famous and internationally well known. As such, Respondent must have had knowledge of the mark when it registered the disputed domain name. Further, the disputed domain name is confusingly similar to Complainant’s famous mark and is used for the purpose of diverting internet users to an on-line pharmacy. Respondent is thereby trading on the goodwill of Complainant’s mark for Respondent’s benefit.
6.13 Paragraph 4(b)(iv) of the Policy is applicable in these proceedings. Thus, Respondent registered a domain name confusingly similar to Complainant’s mark for the purpose of intentionally attracting for commercial gain internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of that website and the products being sold thereon. This is particularly so when the website offers products competing with the product identified by Complainant’s mark.
6.14 When reaching Respondent’s website, an internet user may well realize that the site has nothing to do with Complainant. Nevertheless, the damage will have been done, i.e., the goodwill associated with Complainant’s mark will have been used for the benefit of Respondent, someone not authorized by Complainant to use its mark. This initial interest confusion and the misdirection of Internet traffic is another indication of bad faith. See Sony Ericsson Mobile Communications International AB, Telefonaktiebolaget LM Ericsson, Sony Corporation v. Party Night Inc., WIPO Case No. D2002-1128.
6.15 The letter from Respondent’s representative to the effect that Respondent is unaware of the registration of the disputed domain name and that someone else registered the disputed domain name without Respondent’s knowledge is belied by the facts of the registration. Even so, Respondent should not object if the disputed domain name is transferred.
7. Decision
7.1 For all the foregoing reasons, in accordance with paragraph 4(i) 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: February�24,�2006
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