WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. Ric Deleon
Case No. D2006-0135
1. The Parties
The Complainant is F. Hoffmann-La Roche AG, Switzerland, represented by its own internal representative.
The Respondent is Ric Deleon, Manila, Philippines.
2. The Domain Name and Registrar
The disputed domain name is registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 1, 2006. On February 1, 2006, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On February 2, 2006, Go Daddy Software 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”).
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 February 8, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was February�28, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 3, 2006..
The Center appointed Adam Samuel as the sole panelist in this matter on March�14,�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
The Complaint is a well-known manufacturer of pharmaceutical products. It has trademark registrations for the name VALIUM, an equally well-known tranquilizer in a number of countries around the world. It has an international registration of this trademark going back to 1961.
The domain name was registered in 2003.
5. Parties’ Contentions
A. Complainant
The domain name incorporates the trademark VALIUM in its entirety. The addition of the names of third party’s trademarks to the domain name and the addition of descriptive words, such as “order” and “online” do not take away from the fact that the domain name is confusingly similar to the VALIUM trademark.
The Respondent has not been granted permission to use the VALIUM trademark in the domain name. It is using the domain name for commercial gain in order to capitalize on the fame of the Complainant’s trademark. The Respondent has no right or interest in the VALIUM trademark.
When the Respondent registered the domain name, it must have known of the Complainant’s trademark. The Respondent is attempting to attract Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s well-known mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. By directing Internet users to an on-line pharmacy which sells pharmaceuticals without requiring proof of a physical examination by a physician, the use of the domain is potentially harmful to the health of Internet users, who purchase VALIUM products under the mistaken impression that they are dealing with the Complainant.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under the Policy, the Complainant must prove that
(i) the domain name is identical or confusingly similar to a trademark or service mark in which it has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant owns a trademark registration for the name VALIUM. The domain name involves adding to the trademark name two generic words at either end “order” and “online” and, separated by hyphens, a number of other names of drugs.
In a long string of cases, WIPO URDP panels have concluded that the addition of generic words after trademark names is insufficient in itself to remove the confusing similarity between the mark and the domain name.
The domain name in this case is similar to the Complainant’s trademark because it uses the precise trademark name which has no general meaning and two generic words in common usage. Internet users probably have every right to expect that, when they select the disputed domain name, they will find themselves looking at a site of someone licensed by the Complainant to use its VALIUM trademark. This is not the case. For that reason, and in line with other WIPO UDRP cases, the Panel concludes that the domain name is confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
The Respondent is not called ‘Valium’ and does not appear to trade under that name. There is no evidence that the owner of the trademark in question, the Complainant, has authorized the Respondent to use the trademark. The Respondent has never asserted any rights or legitimate interests in the name. For these reasons, and on the basis of the case file, and in the absence of a Response, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the domain name.
C. Registered and Used in Bad Faith
The domain name leads the internet user to an online pharmacy selling Valium and other drugs manufactured by firms other than the Complainant. It does not indicate that the site has no connection with the Complainant. The website states that all “All trademarks and registered trademarks are of their respective companies.”
It is hard to believe that the Respondent could have selected the domain name without knowing of the Complainant’s product ‘Valium’ since the word has no independent meaning in any language and is a household name as a drug. The comment about trademark ownership on the website shows that the Respondent clearly knew that the Complainant had trademark rights over VALIUM. In spite of all this, the Respondent has used that name to attract visitors to its site knowing that the Complainant had not authorized it to do so. It has then used the site to sell products that compete with the Complainant’s medicines. This is all clear evidence of bad faith: Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784.
The Respondent’s motive in registering and using the sites seems to be to attempt to attract Internet users for potential gain. This constitutes evidence of registration and use in bad faith: paragraph�4(b)(iv) of the Policy.
For all these reasons, the Panel concludes that the domain name in dispute has been registered and is being used in bad faith.
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 name be transferred to the Complainant.
Adam Samuel
Sole Panelist
Dated: March 23, 2006
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