WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. Bobik Marley
Case No. D2007-0694
1. The Parties
The Complainant is F. Hoffmann-La Roche AG, Basel, Switzerland, represented by an internal representative.
The Respondent is Bobik Marley, c/o Levitra online shop inc, Chicago, China.
2. The Domain Names and Registrar
The disputed domain names , , are registered with Public Domain Registry.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 7, 2007. On May 10, 2007, the Center transmitted by email to Public Domain Registry a request for registrar verification in connection with the domain names at issue. On May 22, 2007, Public Domain Registry transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on May 23, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was June 12, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 15, 2007.
The Center appointed Nicoletta Colombo as the sole panelist in this matter on June 25, 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
The following uncontested facts are found by the Panel and established as true.
The Complainant is world renowned in the fields of pharmaceuticals and diagnostics and owns an International registration No. R250784 VALIUM in several countries with priority date October 20, 1961.
The trademark VALIUM has been used to designate a sedative and anxiolytic drug which is widely-known throughout the world.
The disputed domain names are , , registered in the name of the Respondent.
5. Parties’ Contentions
A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied for to the domain names that are the subject of this dispute.
In relation to element (i) of paragraph 4(a) of the Policy, the Complainant contends that the domain names in dispute are confusingly similar to its VALIUM trademark because they incorporate this mark in its entirety. It is irrelevant that the Respondent has added descriptive words like “buy” and “cheap”, because these generic words are not sufficient to distinguish the domain names from the Complaint’s mark.
The Complainant’s mark is well-known and notorious and its use and registration precede the Respondent’s registration of the domain names.
In relation to element (ii) of paragraph 4(a) of the Policy, the Complainant contends that the Respondent has no rights or legitimate interests in respect to the domain names. The Complainant has never assigned, licensed or granted permission to the Respondent to use the trade mark in the domain names.
The Respondent is not making legitimate non-commercial or fair use of the contested domain names. In fact the Respondent used the domain names in dispute to link to sponsored links. The only reason for registering and using the contested domain names is to benefit from the reputation of the trademark VALIUM and illegitimately trade on its fame for commercial gain and profit.
In relation to element (iii) of paragraph 4(a) of the Policy, the Complainant contends that evidence of bad faith registration and use is established by the following circumstances.
The Respondent at the time of the registration of the contested domain names was surely aware of the trademark and product of the Complainant.
The proof of the bad faith of the Respondent is provided by the fact that the Respondent is using the domain names to redirect to websites promoting and/or offering products and services of third parties.
In this way the Respondent is intentionally misleading consumers by letting them believe that the websites behind those links are associated or recommended by the Complainant.
Based on the above, the Complainant requests the Panel to transfer the disputed domain names to it.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The only difference between the disputed domain names and the trademark of the Complainant is the addition of the words “buy” and “cheap”. The addition of the mentioned words which are generic terms does not add a distinctive element to the disputed domain names, but compounds the likelihood of confusion between the domain names and the Complainant’s trademark.
There are several UDRP decisions stating that confusing similarity, for the purposes of the Policy, is established when a domain name wholly incorporates a complainant’s mark and only adds a generic word along with, in this case, the letter “a” or the number “1” (see i.e., Soci�t� del Hotels M�ridien v. Mr. Cuneyt Ozarici, WIPO Case No. D2005-0201; Accor, Society Anonyme a Directoire et Conseil de Surveillance v. SEOCHO, WIPO Case No. D2002-0517; Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046).
Moreover, the panel does not consider, when analyzing the identity or similarity, the suffix like in this case “.info” because it is a necessary component of the domain name and does not give any distinctiveness (see i.e., Cr�dit Industrile et Commercial SA v. Name Privacy, WIPO Case No. D2005-0457).
There is no doubt that the contested domain names are confusingly similar to the trademark of the Complainant. Therefore, the Panel finds that Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
The Complainant has several trademarks registrations for VALIUM all over the world. Therefore it has been proved that the Complainant has right in the VALIUM trademark.
The Respondent has not filed any response in this case. There is prima facie indication in the evidence before the Panel that there are no rights or legitimate interests on the part of the Respondent in the domain names, see paragraph 4(c) of the Policy.
Moreover, the Complainant has not licensed or otherwise permitted or authorized the Respondent to use its trademark, or to apply for or to use the domain names incorporating said mark.
Under these circumstances, the Panel finds that the Complainant has satisfied the second element of the Policy.
C. Registered and Used in Bad Faith
Based on the evidence presented by the Complainant, the Panel considers that the Respondent registered and used the disputed domain names in bad faith.
As sufficient evidence of registration in bad faith, the Panel finds that the Respondent registered the contested domain names (which correspond to a well-known trademark consisting of an invented word) with knowledge of the Complainant’s rights. Only someone who was familiar with the Complainant’s mark would have registered a domain names inclusive of such mark.
Furthermore, the domain names are used intentionally by the Respondent to attract Internet users and divert them to websites where advertising spaces are being sold.
The Panel is of the opinion that the Respondent has registered the disputed domain names with the intent to profit from the reputation of the famous trademark of the Complainant. Taken together with the fact that the Respondent has not filed any Response in this proceeding, the Panel believes that the Complainant has demonstrated that the contested registrations have been made 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 names, , and be transferred to the Complainant.
Nicoletta Colombo
Sole Panelist
Dated: July, 9, 2007
Full & Egal Universal Law Academy