WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. Brian Robinson
Case No. D2007-0659
1. The Parties
Complainant is F. Hoffmann-La Roche AG of Switzerland, representing itself.
Respondent is Brian Robinson of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name is registered with Direct Information Pvt Ltd d/b/a PublicDomainR.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 3, 2007. On May 4, 2007, the Center transmitted by email to Direct Information Pvt Ltd d/b/a PublicDomainR a request for registrar verification in connection with the domain name at issue. On May 7, 2007, Direct Information Pvt Ltd d/b/a PublicDomainR transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. 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 Respondent of the Complaint, and the proceedings commenced on May 15, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was June 4, 2007. The Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 7, 2007.
The Center appointed Gary J. Nelson as the sole panelist in this matter on June 22, 2007. 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 has been the owner of an International Registration for the trademark VALIUM since 1961.
Respondent appears to have registered the domain name subsequent to the registration of VALIUM by Complainant as a trademark.
5. Parties’ Contentions
A. Complainant
The Complainant has made the following allegations:
The Complainant, together with its affiliated companies, is one of the world's leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics, with global operations in more than 100 countries.
Complainant is the owner of the VALIUM trademark, which is protected in a multitude of countries worldwide. The VALIUM trademark has been registered since 1961. VALIUM is a trademark for a sedative and anxiolytic drug belonging to the benzodiazepine family. The VALIUM trademark has enabled Complainant to build a world-wide reputation in psychotropic medications.
The domain name is confusingly similar to Complainant's VALIUM trademark because it incorporates the VALIUM mark in its entirety and merely adds on descriptive words. The addition of these descriptive words is not sufficient to distinguish the contested domain name from Complainant's VALIUM trademark.
The VALIUM trademark is well-known and notorious. The use and registration of VALIUM by Complainant predates the registration of the domain name by Respondent.
Respondent has not received a license, permission or authorization to use the VALIUM trademark in the contested domain name.
Respondent has no rights or legitimate interests in the domain name. Respondent's website linked to the domain name is composed of links redirecting Internet users to a search engine composed of sponsored links. Other links redirect the Internet users to articles about the VALIUM branded product. Respondent's only reason for registering the contested domain name is to benefit from the reputation of the trademark VALIUM by illegitimately trading on its fame for commercial gain and profit.
Respondent has registered and is using the domain name in bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
In view of Respondent’s failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and shall draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) The domain name in issue is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in the contested domain name; and
(iii) The domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant is the owner of an International Trademark Registration granting trademark rights in VALIUM in a multitude of countries worldwide. Therefore, Complainant has established rights in this trademark pursuant to paragraph 4(a)(i) of the Policy. See Janus Int’l Holding Co. v. Rademacher, WIPO Case No. D2002-0201 (finding that the registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption).
Respondent’s domain name is confusingly similar to Complainant’s VALIUM trademark because it incorporates the entirety of Complainant’s trademark and merely adds the generic terms “buy” and “resources”, along with two hyphens and the generic top level “.info” domain name. Neither the addition of a generic term to another’s trademark nor a set of hyphens nor the addition of a generic top level domain name is sufficient to create a distinct domain name capable of overcoming a proper claim of confusing similarity. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, WIPO Case No. D2001-0026 (finding confusing similarity where the domain name in dispute contains the identical mark of the Complainant combined with a generic word or term); see also Sony Kabushiki Kaisha v. Inja, Kil, WIPO Case No. D2000-1409 (finding that “[n]either the addition of an ordinary descriptive word...nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy, paragraph 4(a)(i) is satisfied).
Confusing similarity is especially acute in this case where the generic term “buy” has been tagged onto Complainant’s VALIUM trademark and where that term simply relates to the availability of VALIUM-branded products on the Internet. Specifically, the term “buy” describes Respondent’s corresponding website as a resource from which an Internet user can buy VALIUM-branded products or pharmaceuticals similar to VALIUM-branded products. See Accor v. Tigertail Partners, WIPO Case No. D2002-0625 (“confusion is only heightened when the generic word added by respondent is descriptive of the complainant’s goods or services marketed in relation to the trademark”). In this case, the Panel concludes the consuming public will understand that the addition of the words “buy” and “resources” to the VALIUM trademark is merely the addition of descriptive/generic terms describing the availability of Complainant's product for purchase on the Internet.
Complainant has proven the requirement of Policy, paragraph 4(a)(i) in regard to the domain name.
B. Rights or Legitimate Interests
The Panel finds that Respondent has no rights or legitimate interests in the contested domain name.
Respondent has failed to file a Response, which can suggest, in appropriate circumstances, that the Respondent lacks rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd. and Glenn Greenhouse, WIPO Case No. D2000-1221 (finding that respondent’s failure to respond in a UDRP proceeding can be construed, in appropriate circumstances, as an admission that it has no legitimate interest in the contested domain names).
By not filing a Response, Respondent has not provided any evidence that it is commonly known by the domain name, or that it is commonly known by any name consisting of, or incorporating the name, “Valium”, or “Buy Valium”, or “Valium Resource(s)”, or “Buy-Valium-Resources”. In Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403, the panel held that a lack of rights or legitimate interest could be found where (1) Respondent is not a licensee of Complainant; (2) Complainant’s rights in its related trademarks precede Respondent’s registration of the contested domain name; and (3) Respondent is not commonly known by the domain name in question. The Panel notes that by not submitting a response, the Respondent also failed to provide any evidence that it is a licensee of Complainant or that its registration of the domain name predates Complainant’s rights in the VALIUM trademark.
In regard to the domain name, Respondent is currently operating a website linked to a search engine composed of sponsored links. Using another's well-known trademark to mislead users into accessing one’s website, which in turn provides diverting click-through opportunities to a search engine composed of sponsored links is not a bona fide offering of goods/services. See Fox News Network, LLC v. Warren Reid, WIPO Case No. D2002-1085 (“...using the Domain Name to mislead users by diverting them to a search engine...does not appear to be use in connection with a bona fide offering of goods or services and therefore legitimate”).
Furthermore, it is likely Respondent is receiving click-through fees each time an Internet User accesses the website at , and clicks on any of the available links. The use of another’s well-known trademark for the purpose of deriving this type of commercial benefit is evidence that Respondent has no legitimate right or interest in the domain name.
The Respondent is also operating a website featuring click-through opportunities for other pharmaceutical products. Because Complainant also promotes and distributes pharmaceutical products, the Panel concludes that Respondent is using the contested domain name in association with a website that competes with Complainant's business interests. The use of another's well-known trademark for the purpose of deriving this type of commercial benefit is additional evidence that Respondent has no legitimate right or interest in the domain name. Accordingly, the Panel concludes Respondent is not using the domain name in association with a bona fide offering of goods and service pursuant to Policy, paragraph 4(c)(iii). See Am. Online, Inc. v. Fu, WIPO Case No. D2000-1374 (“[I]t would be unconscionable to find […] a bona fide offering of services in a respondent's operation of [a] web-site using a domain name which is confusingly similar to the complainant's mark and for the same business”).
Complainant has proven the requirement of Policy, paragraph (a)(ii).
C. Registered and Used in Bad Faith
The Panel finds that Respondent registered and is using the contested domain name in bad faith.
Respondent is using Complainant's VALIUM trademark to attract Internet Users to a website associated with the domain name. This website features click-through opportunities leading to a search engine where Respondent is likely generating revenue. Use of another’s trademark for this type of commercial gain by Respondent is sufficient evidence of bad faith registration and use. See Fox News Network, LLC v. Warren Reid, WIPO Case No. D2002-1085 (“...the Respondent's commercial use of the Domain Name to increase Internet traffic directed at a search engine...is evidence of bad faith under Policy, para. 4(b)(iv)”); see also Axel Springer AG v. AUTOBILD.COM, WIPO Case No. D2005-0554 (the deliberate redirection of Internet Users to a commercial directory is a form of use that may allow Respondent to generate income through an inappropriate use of another's trademark and is evidence of bad faith).
Respondent is also using Complainant's VALIUM trademark to attract Internet users to a website associated with the domain name. In addition to other click-through opportunities, this website features click-through opportunities to products that compete with the products sold by Complainant under its VALIUM trademark. This is sufficient evidence of bad faith registration and use. See Lilly ICOS LLC v. Tudor Burdern d/b/a BM Marketing/Burden Marketing, WIPO Case No. D2005-0313.
Further, the Panel finds that Respondent likely registered the domain name with full knowledge of Complainant's rights in the VALIUM trademark. Respondent’s awareness of Complainant's VALIUM trademark may be inferred because the mark became famous prior to Respondent’s registration of the contested domain name. See Kraft Foods (Norway) v. Wide, WIPO Case No. D2000-0911 (“the fact that Respondent [chose] to register a well known mark to which he has no connections or rights indicates that he was in bad faith when registering the domain name at issue”).
Complainant has proven the requirement of Policy, 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 name be transferred to the Complainant.
Gary J. Nelson
Sole Panelist
Dated: June 27, 2007
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