WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-la Roche AG v. Popo
Case No. D2008-0423
1. The Parties
The Complainant is F. Hoffmann-la Roche AG, Basel, Switzerland.
The Respondent is Popo, Cairo, Egypt.
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 March 18, 2008. On March 20, 2008, the Center transmitted by email to N LLC a request for registrar verification in connection with the Domain Name at issue. On March 20, 2008, N LLC 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 April 1, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was April 21, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 22, 2008. On April 22, 2008, the Center received an unidentified email communication from Respondent’s contact email address in reply to the Center’s Notification of Respondent Default stating as follows: “sorry my english is bad i can speak arabic i don’t understand anything. Thanks.”
On April 25, 2008, the Center acknowledged receipt of the Respondent’s email communication and advised that the language of the administrative proceedings is the language of the registration agreement, in this case being English, as confirmed by the Registrar, subject to any contrary determination that may be made by the appointed Panel pursuant to paragraph 11 of the Rules.
The Center appointed Chunghwan Choi as the sole panelist in this matter on May 8, 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
The Complainant is a research-focused healthcare group in the fields of pharmaceuticals and diagnostics and having global operations in more than 100 countries. The Complainant’s well-known mark VALIUM is protected as trademark in a multitude of countries worldwide. The mark VALIUM designates a sedative and anxiolytic drug belonging to the benzodiazepine family.
The Respondent used the Domain Name for a web page containing various sponsored links.
5. Parties’ Contentions
A. Complainant
The Complainant contends that the Domain Name is confusingly similar to its registered trademarks VALIUM; that the Respondent has no rights or legitimate interests in respect of the Domain Name; and that it was registered by the Respondent and is being used in bad faith, to attract Internet users to the Respondent’s website containing sponsored links to websites promoting and/or offering products and services of third parties, thereby generating unjustified revenues for each “click-through” by on-line consumers of the sponsored links.
The Complainant requests that the Domain Name be transferred to the Complainant.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
As a preliminary matter, the Panel notes that the Registrar has confirmed the specific language of the registration agreement as English. In the circumstances the Panel is satisfied that English is appropriate as the default language of the proceedings in accordance with paragraph 11 of the Rules.
In accordance with the Policy, paragraph 4(a), to succeed in this proceeding, the Complainant must prove (a) that the Domain Name is identical or confusingly similar to marks in which the Complainant has rights, (b) that the Respondent has no rights or legitimate interests in respect of the Domain Name, and (c) that the Domain Name was registered and are being used in bad faith. These requirements will be considered in turn.
A. Identical or Confusingly Similar to Marks in which the Complainant has Rights
The Panel is satisfied on the evidence that the Complainant has registered rights in the marks VALIUM in a considerable number of countries.
The Panel further finds that the Domain Name is confusingly similar to the mark VALIUM. Apart from the generic top level domain, the Domain Name at issue consists of the Complainant’s trademark VALIUM and the suffix “plus”. The suffix “plus” is of a descriptive nature only and the distinctive element of the Domain Name is obviously the term “valium”. In these circumstances, Internet users finding are likely to be misled into believing that the Complainant is the registrant or is otherwise affiliated or associated with the Domain Name.
B. No Rights or Legitimate Interests
The Complainant has exclusive rights for VALIUM and no license, permission, authorization or consent was granted to use VALIUM in the Domain Name. Based on the case file, the Panel is of the view that the Respondent has no rights or legitimate interests in respect of the Domain Name. As further discussed below, such use as the Respondent has made of the Domain Name has not been bona fide, legitimate or fair so as to give rise to rights or legitimate interests in relation to it.
C. Registered and Used in Bad Faith
The trademark VALIUM is well-known in the field of pharmaceuticals and diagnostics as psychotropic medications. Therefore, the Respondent is most likely to have known of the trademarks prior to registering the Domain Name. This finding of the Panel is also evidenced by the fact that the Respondent’s homepage contains links and information to health care and pharmaceutical products.
The Panel is satisfied by the Complainant’s unchallenged evidence that the Domain Name is being used to attract Internet users to the Respondent’s web page by creating a likelihood of confusion with the Complainant’s mark for the purpose of commercial gain in the form of “click-through” commissions on the sponsored links.
Such exploitation of the reputation of trademarks to obtain click-through commissions from the diversion of internet users is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous decisions: see e.g. L’Or�al, Biotherm, Lanc�me Parfums et Beaut� & Cie v. Unasi, Inc, WIPO Case No. D2005-0623; Future Brands LLC v. Mario Dolzer, WIPO Case No. D2004-0718; ACCOR v. Mr. Young Gyoon Nah, WIPO Case No. D2004-0681 and Deloitte Touche Tohmatsu v. Henry Chan,WIPO Case No. D2003-0584.
The Panel concludes that the Domain Name is 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.
Chunghwan Choi
Sole Panelist
Dated: May 20, 2008
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