WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. ActiveI, Jason Peterson
Case No. D2007-1567
1. The Parties
Complainant is F. Hoffmann-La Roche AG, Basel, Switzerland, represented internally.
Respondent is ActiveI, Jason Peterson, Quaker Hill, Connecticut, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with Interlink Co., Ltd. (“Interlink”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 24, 2007. On October 23, 2007, the Center transmitted by email to Interlink a request for registrar verification in connection with the domain name at issue. Following extensive correspondence between Interlink, the Center, and other registration service providers, on January 7, 2008, Interlink transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on January 10, 2008. The Center verified that the Complaint together with the amendment to 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 January 11, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was January 31, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 1, 2008.
The Center appointed Jeffrey D. Steinhardt as the sole panelist in this matter on February 13, 2008. 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, together with its affiliated companies, is one of the world’s leading manufacturers of pharmaceutical products. Complainant has registrations for its sedative and anxiety relieving drug Valium in many countries, and the product has been widely known and distributed for many years. Complainant’s International Registration No. R250784 for the mark VALIUM has a priority date of October 20, 1961.
The disputed domain name was registered on March 17, 2006. Unless renewed by one of the parties to this proceeding, that registration expires on March 17, 2008.
5. Parties’ Contentions
A. Complainant
Complainant seeks transfer of the contested domain name on the grounds described below.
Complainant alleges that Respondent’s disputed domain name is confusingly similar to Complainant’s VALIUM mark because it incorporates the entire mark. Complainant further alleges that Respondent has no right or legitimate interest in the domain name, since: (1) Respondent has no license, permission or authorization to use the VALIUM mark; (2) Respondent uses the domain name for commercial gain with the purpose of capitalizing on the fame of the mark; and (3) Respondent’s search engine website includes sponsored, revenue generating links that advertise for third parties both within and outside of the pharmaceutical field, therefore, Respondent’s use of the domain name is not bona fide.
Complainant contends that Respondent registered the disputed domain name in bad faith because Respondent undoubtedly knew of Complainant’s well-known product and mark when it registered . Finally, Complainant contends that Respondent’s use of the domain name is in bad faith since Respondent is “intentionally attempting (for commercial purpose) 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, affiliation and endorsement of Respondent’s website or of the products or services posted on or linked to Respondent’s website.” From this activity, Complainant avers, Respondent derives unjustified revenues.
B. Respondent
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Notification of Proceedings to Respondent
The Policy is intended to resolve disputes concerning allegations of abusive domain name registration in an efficient manner. Fundamental due process requirements must nonetheless be met. The requirement that a respondent have notice of proceedings that may substantially affect its rights is such a fundamental requirement. The Policy and the Rules establish procedures to assure that respondents receive adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a) of the Rules).
The Interlink Whois contact information lists Respondent’s address in a confusing manner, with erroneous phone numbers and postal codes. Due to these errors, it may be that some postal mail and fax transmissions were not able to reach Respondent.
The Panel notes that the addition of a leading “0” to the U.S. postal code, however, yields a valid, complete address based on the Whois-listed street address for Respondent. (See .) Whois records for other domain name registrations by Respondent’s company ActiveIdeas also show the same address and individual registrant, including the postal code with the leading “0.” “”
The Center sent notification of the Complaint to Respondent via courier, email and fax to the addresses in the United States of America that were listed in the Whois record. According to courier tracking records, Respondent refused delivery of the notification around 10:25 a.m. on January 16, 2008. The emails returned failed delivery or fatal error notices and the fax transmissions failed because the Whois phone and fax numbers were invalid.
Based on the methods employed to provide Respondent with notice of the Complaint and Respondent’s obligations to maintain accurate and current contact information under its registration agreement, the Panel is satisfied that the Center took all steps reasonably necessary to notify Respondent of the filing of the Complaint and initiation of these proceedings. The Panel finds that the Center has exercised care and has fulfilled its responsibility under paragraph 2 of the Rules and that the failure of Respondent to furnish a response to the Complaint is not due to any omission by the Center.
B. Substance of the Complaint and Applicable Standards
The Rules require the Panel to decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, paragraph 15(a). A complainant must establish each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Complainant must establish these elements even if the respondent does not reply. The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064. In the absence of a response, the Panel may also accept as true the factual allegations in the Complaint. E.g., ThyssenKrupp USA, Inc. v. Richard Giardini,WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009).
C. Identical or Confusingly Similar
The Panel agrees with Complainant that Respondent’s domain name is confusingly similar to Complainant’s trademarks.
Panels disregard the “.com” suffix in evaluating confusing similarity. E.g., VAT Holding AG v. VAT.com,WIPO Case No. D2000-0607; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc.,WIPO Case No. D2006-13l5.
The Panel concludes that the addition of the descriptive term “stability” does not negate the confusing similarity created by Respondent’s complete inclusion of the VALIUM trademark in the disputed domain name. E.g., Giata Gesellschaft f�r die Entwicklung und Vermarktung interaktiver Tourismusanwendungen mbH v. Keyword Marketing, Inc.,WIPO Case No. D2006-1137; Hoffmann-La Roche Inc. v. Aneko Bohner,WIPO Case No. D2006-0629.
The Panel finds that the disputed domain name is confusingly similar to the registered VALIUM trademarks of Complainant and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
D. Rights or Legitimate Interests
The Panel also concludes that Respondent has no rights or legitimate interests in the domain name.
The Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes: (1) using the domain name in connection with a bona fide offering of goods and services; (2) being commonly known by the domain name; or (3) making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers. Policy, paragraphs 4(c)(i) – (iii).
A complainant must show a prima facie case that a respondent lacks rights or legitimate interests in a disputed domain name, after which the burden of rebuttal passes to the Respondent. E.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. The absence of rights or legitimate interests is established if a complainant makes out a prima facie case and the respondent enters no response. Id., (citing De Agostini S.p.A. v. Marco Cialone,WIPO Case No. DTV2002-0005).
In the absence of a response, the Panel accepts as true Complainant’s allegations that Respondent has no authorization to use the VALIUM mark in its domain name and that Respondent is seeking to attract Internet users through the widely known VALIUM mark for Respondent’s own commercial purposes.
The Panel infers that Respondent receives revenues when it diverts traffic through link advertisements on Respondent’s website. E.g., The Bear Stearns Companies Inc. v. Darryl Pope, WIPO Case No. D2007-0593 (“[t]he Panel is free to infer that Respondent is likely receiving some pecuniary benefit . . . in consideration of directing traffic to that site” (citing COMSAT Corporation v. Ronald Isaacs, WIPO Case No. D2004-1082)). See Fat Face Holdings Ltd v. Belize Domain WHOIS Service Lt, WIPO Case No. D2007-0626; Sanofi-aventis v. Montanya Ltd, WIPO Case No. D2006-1079.
Screens from Respondent’s website online show that Respondent uses the disputed domain name to promote products of Complainant’s competitors, as well as links to other businesses unrelated to the Valium product. The Panel therefore finds that Respondent’s use of the disputed domain name demonstrates Respondent’s lack of a legitimate non-commercial interest in, or fair use of, the domain name. E.g., Pfizer Inc. v. jg a/k/a Josh Green,WIPO Case No. D2004-0784.
There is no indication on the record that Respondent is commonly known by the disputed domain name. The Panel also finds there is no bona fide offering of goods or services by Respondent.
Filing no response, Respondent has not invoked any of the circumstances of paragraph 4(c) of the Policy to support the existence of its “rights or legitimate interests” in use of the domain name.
Accordingly, the Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied.
E. Registered and Used in Bad Faith
The Panel finds that the third element of paragraph 4(a) of the Policy, bad faith registration and bad faith use, is also established.
Using a domain name to intentionally attract Internet users, for commercial gain, by creating a likelihood of confusion, may be evidence of bad faith registration and use. Policy, paragraph 4(b)(iv). See, e.g., L�Or�al, Biotherm, Lanc�me Parfums et Beaut� & Cie v. Unasi, Inc,WIPO Case No.D2005-0623. Panels may draw inferences about bad faith registration or use in light of the circumstances, including a respondent’s concealment of identity or failure to reply to a complaint. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
The Panel infers that Respondent was aware of Complainant’s trademark and product name, which has been registered and used widely since the 1960s. The Panel further infers that Respondent registered the disputed domain name intending to trade on the fame of Complainant’s trademark. The Panel finds that Respondent deliberately attempted to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with Complainant’s mark. The Panel concludes, therefore, that Respondent registered the domain name in bad faith.
The Panel also concludes that the circumstances demonstrate bad faith use of the domain name by Respondent.
Previously and currently available online screens from Respondent’s website show that Respondent uses the domain name to promote sales by online pharmacies of Complainant’s Valium product, the products of other pharmaceutical companies, and unrelated products. Respondent has not only declined to submit a response to these proceedings, but he refused even to receive the courier delivery of the notification of the complaint.
The Panel therefore concludes that the disputed domain name was registered and is being used by Respondent in bad faith under paragraph 4(b)(iv) of the Policy. Pfizer Inc. v. jg a/k/a Josh Green,WIPO Case No. D2004-0784 (citing Google, Inc v. and Jimmy Siavesh Behain,WIPO Case No. D2000-1240; Casio Keisanki Kabushiki Kaisha (Casio Computer Co., Ltd.) v. Jongchan Kim,WIPO Case No. D2003-0400; Downstream Technologies, LLC v. Bartels System GmbH,WIPO Case No. D2003-0088).
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 Complainant.
Jeffrey D. Steinhardt
Sole Panelist
Date: February 26, 2008
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