WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. Softech ltd.
Case No. D2007-1531
1. The Parties
Complainant is F. Hoffmann-La Roche AG, Switzerland, represented internally.
Respondent is Softech ltd, Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name is registered with N LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 17, 2007. On October 18, 2007, the Center transmitted by email to N LLC a request for registrar verification in connection with the domain name at issue. On October 22, 2007, N LLC 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 November 1, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was November 21, 2007. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 22, 2007.
The Center appointed Sandra J. Franklin as the sole panelist in this matter on November 29, 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 is a well-known pharmaceutical company, which has used the mark VALIUM for a widely-used psychotropic drug since 1961. Complainant has over 100 trademark registrations world-wide, including International Registration No. R250784.
Respondent registered the domain name on January 24, 2007.
5. Parties’ Contentions
A. Complainant makes the following assertions:
1. Respondent’s domain name is confusingly similar to Complainant’s VALIUM mark.
2. Respondent does not have any rights or legitimate interests in the domain name.
3. Respondent registered and used the domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this 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 draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Management, Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant has established rights in the VALIUM mark by submitting proof of international registration of the mark, which satisfies Policy paragraph 4(a)(i). See Lockheed Martin Corporation v. Jeff Hoffman, FA 874152 (Nat. Arb. Forum January 31, 2007) (finding that the complainant had sufficiently established rights in the SKUNK WORKS mark through its registration with the USPTO); see also Trip Network Inc. dba Cheap Tickets, Inc. v. Sigfredo Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy paragraph 4(a)(i)).
Respondent’s domain name is confusingly similar to Complainant’s mark. Respondent’s domain name contains Complainant’s entire VALIUM mark and adds the word “net”, along with the generic top-level domain (“gTLD”) “.com”. The Panel finds these additions fail to distinguish Respondent’s domain name from Complainant’s mark in any meaningful way for purposes of Policy paragraph 4(a)(i). See Trip Network Inc. dba Cheap Tickets, Inc. v. Sigfredo Alviera, FA 914943 (Nat. Arb. Forum March 27, 2007) (concluding that the addition of a gTLD, whether it be “.com”, “.net”, “.biz”, or “.org”, is irrelevant to a Policy paragraph 4(a)(i) analysis).
The Panel finds that Policy paragraph 4(a)(i) has been satisfied.
B. Rights or Legitimate Interests
Complainant claims that Respondent has neither rights nor legitimate interests in the domain name. Complainant has the initial burden of showing that Respondent lacks rights and legitimate interests in the disputed domain name. Once Complainant makes a prima facie case supporting its assertion that Respondent does not have rights or legitimate interests, the burden shifts to Respondent to show that it does have rights or legitimate interests in the disputed domain name. The Panel finds that Complainant has demonstrated that Respondent lacks rights and legitimate interests, and thus has made a prima facie case pursuant to Policy paragraph 4(a)(ii). See Compagnie Generale des Matieres Nucleaires v. Greenpeace International,WIPO Case No. D2001-0376 (May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also Clerical Medical Investment Group Limited v. C (Clerical & Medical Services Agency), WIPO Case No. D2000-1228 (November 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Because Respondent failed to answer the Complaint, the Panel presumes that Respondent lacks rights and legitimate interests in the disputed domain name. See America Online, Inc. v. AOL International,WIPO Case No. D2000-0654 (August 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond); see also Pavillion Agency, Inc. Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse,WIPO Case No. D2000-1221 (December 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names). Despite Respondent’s failure to respond, the Panel will examine all evidence in the record to determine if Respondent has any rights or legitimate interests in the disputed domain name under Policy paragraph 4(c).
Complainant asserts that Respondent has never been authorized to use the VALIUM mark. Further, the WHOIS does not indicate that Respondent has ever been or is commonly known by the domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy paragraph 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum February 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy paragraph 4(c)(ii) does not apply); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
In addition, Respondent is using the disputed domain name to redirect traffic to a search engine with sponsored links. The Panel finds that this is not a bona fide offering of goods and services under Policy paragraph 4(c)(i) or a legitimate noncommercial or fair use under Policy paragraph 4(c)(iii). See Golden Bear International, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent’s use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant’s business does not represent a bona fide offering of goods or services under Policy � 4(c)(i) or a legitimate noncommercial or fair use under Policy � 4(c)(iii).”); see also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because the respondent’s sole purpose in selecting the domain names was to cause confusion with the complainant’s website and marks, its use of the names was not in connection with the offering of goods or services or any other fair use).
The Panel finds that Policy paragraph 4(a)(ii) has been satisfied.
C. Registered and Used in Bad Faith
The Panel presumes that Respondent benefits commercially when Internet users click on the links featured on the website that resolves from the domain name. Respondent is therefore taking advantage of the likelihood that users will confuse the disputed domain name as being affiliated with Complainant and its VALIUM mark. This is evidence that Respondent registered and is using the domain name in bad faith pursuant to Policy paragraph 4(b)(iv). See American University v. Richard Cook, FA 208629 (Nat. Arb. Forum December 22, 2003) (“Registration and use of a domain name that incorporates another’s mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy paragraph 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website).
The Panel thus finds that Policy paragraph 4(a)(iii) has been satisfied.
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.
Sandra J. Franklin
Sole Panelist
Dated: December 13, 2007
Full & Egal Universal Law Academy