WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. Domain Administration Limited
Case No. D2008-0626
1. The Parties
The Complainant is F. Hoffmann-La Roche AG, Basel, Switzerland.
The Respondent is Domain Administration Limited, Auckland, New Zealand.
2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with F.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 22, 2008. On April 23, 2008, the Center transmitted by email to F a request for registrar verification in connection with the domain name at issue. On April 24, 2008, F 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 5, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was May 25, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 26, 2008.
The Center appointed Ian Lowe as the sole panelist in this matter on May 28, 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 and its affiliate companies comprise a world leading healthcare group in the pharmaceutical and diagnostic fields with global operations in more than 100 countries. The Complainant is the proprietor of the registered trademark VALIUM (the “Mark”) in over 100 countries.
The Domain Name was registered on March 18, 2008.
5. Parties’ Contentions
A. Complainant
A summary of the contentions made by the Complainant is as follows:
(a) The Complainant’s trademark registrations in respect of VALIUM extend to over 100 countries including International Registration No. R250784 with a priority date of October 20, 1961, and designated in countries including Austria, Benelux, China, Russia, Spain and France. The mark VALIUM is well-known and notorious.
(b) The Domain Name is confusingly similar to the Complainant’s mark and incorporates the entirety of the mark.
(c) The Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant has exclusive rights for VALIUM and has not granted any licence or permission for it to be used in the Domain Name.
(d) The website to which the Domain Name resolves comprises sponsored links generated by a search engine. As found in Sigikid H. Scharrer and others v. Bestinfo,WIPO Case No. D2004-0990, the diversion of Internet traffic to other unrelated websites does not represent use of a domain name in connection with a bona fide offering of goods and services. Rather it serves the purpose of generating revenues from advertised pay-per-click products.
(e) The Respondent’s only reason for registering and using the Domain Name is to benefit from the reputation of the trademark VALIUM and illegitimately trade on its fame for commercial gain and profit.
(f) The Domain Name was registered in bad faith because there is no doubt that the Respondent must have been aware of the Complainant’s product/trademark VALIUM at the time the Domain Name was registered on March 18, 2008.
(g) The Domain Name is being used in bad faith because the Respondent is intentionally attempting to attract Internet users to the Respondent’s website for commercial purposes by creating a likelihood of confusion with the Complainant’s well-known mark. The Respondent is intentionally misleading consumers and confusing them so as to attract them to other websites believing that they are associated with or recommended by the Complainant. The Respondent is illegitimately capitalizing on the fame of the VALIUM trademark by seeking to generate unjustified revenues for each click-through by online consumers from the sponsored links appearing on the website to which the Domain Name resolves.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interest in respect of the Domain Name; and
(iii) the Domain Name has been registered in bad faith and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has adduced uncontroverted evidence of numerous trademark registrations in respect of VALIUM and of the widespread global use of the trademark over many years. The Domain Name comprises the entirety of the mark VALIUM together with the non-distinctive element “deals”. Accordingly, the Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Respondent has not replied to the Complainant’s contentions and has not therefore displaced the assertion on the part of the Complainant that the Respondent does not and cannot have any rights or legitimate interests in the Domain Name. The Domain Name was registered over 40 years after the Mark had been registered and become world-famous in the pharmaceuticals field. The Complainant has exclusive rights for VALIUM and no licence, permission, authorization or consent was granted to use VALIUM in the Domain Name. The Panel finds that the Respondent has no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
In view of the notoriety of the Mark, it is inconceivable that the Respondent was unaware of the Complainant’s rights in the Mark at the time the Domain Name was registered. The unchallenged evidence of the Complainant is that the Domain name is being used to take advantage of the notoriety of the VALIUM mark to attract Internet users to the website operated by or on behalf of the Respondent for commercial gain.
As stated in L’Or�al, Biotherm, Lanc�me Parfums et Beaut� & Cie v. Unasi, Inc,WIPO Case No. D2005-0623 “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…”.
In the circumstances the Panel finds that the Domain Name was 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.
Ian Lowe
Sole Panelist
Dated: June 11, 2008
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