WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Roche Products Inc. v. UrProxy Domains
Case No. D2008-0725
1. The Parties
The Complainant is Roche Products Inc. of Bermuda, Panama, represented by Lathrop & Gage L.C., United States of America.
The Respondent is UrProxy Domains, of Vista, California, United States of America.
2. The Domain Name and Registrar
The domain name in dispute is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 8, 2008. On May 9, 2008, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name in dispute. On May 9, 2008, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center dated May 14, 2008 that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on May 16, 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 the Respondent of the Complaint, and the proceedings commenced on May 21, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was June 10, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 11, 2008.
The Center appointed J. Nelson Landry as the sole panelist in this matter on June 20, 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.
The Panel issued the Procedural Order No. 1, on July 2, 2008, requesting the Complainant to clarify its title to the registered trademark VALIUM. On July 8, 2008, the Complainant filed a Supplemental Statement submitting evidence and particularizing the assignments whereby it became owner of the said trademark.
4. Factual Background
The Complainant, located in Bermuda, Panama, and other affiliated companies, such as Hoffmann-La Roche Inc. located in New Jersey, United States of America, are major manufacturers and distributors of pharmaceutical and diagnostic products in the world. Hoffmann-La Roche Inc. is the original registered owner of the Trademark VALIUM registered in United States Patent and Trademark Office pursuant to a first use on June 12, 1961 and ongoing and increasing use thereafter (herein the “Trademark” or the “VALIUM Trademark”). The Trademark was the object of numerous assignments within the affiliated companies of the Roche Group and on February 16, 1982, the Complainant became the current registered owner thereof and has been using it since then. The Complainant has since 1984 used a stylized V punched through the center of the tablet and has registered this design trademark in the United States Patent and Trademark Office.
The VALIUM Trademark has been, by its successive owners, extensively promoted in various types of advertising, promotion and medical journals as well as on television and direct mailings so that in the early stages the sales of VALIUM drugs exceeded hundreds of millions of dollars per year in the United States of America. These extensive use and promotion resulted in unsolicited media attention as put in evidence by the Complainant and the VALIUM Trademark is prominently featured therein in association with the name of the Complainant.
The parent company, F. Hoffmann-La Roche A.G. has registered the domain name .
The domain name in dispute was first registered on March 4, 2004. The Complainant or Hoffmann-La Roche Inc. have never authorized or licensed the Respondent to use the VALIUM Trademark nor to register the domain name in dispute. On November 9, 2007, through its counsel, the Complainant sent by e-mail and by certified mail a letter advising the Respondent that the registration of the domain name in dispute infringed the rights in the VALIUM Trademark and requested the transfer of the domain name in dispute to the Complainant. While the copy by e-mail was sent with success, the certified mail was returned with a notice “Attempted, Not Known”.
5. Parties’ Contentions
A. Complainant
The Complainant represents that the domain name in dispute does contain the entire VALIUM Trademark and that it creates a strong likelihood of confusion as to source, sponsorship, association or endorsement of the Respondent’s website associated with the domain name in dispute by the Complainant which position was outlined in Complainant’s counsel letter of November 9, 2007.
The Complainant further represents that the addition of the word “buy” and “info” to the Trademark does not alter the fact that the domain name in dispute is confusingly similar to the Trademark. See 3J Thomas Mc Carthty, McCarthy on Trademarks & Unfair Competition � 23:50 (4th ed. 1998); America Online, Inc. v. Anson Chan,WIPO Case No. D2001-0004; Sporty’s Farm L.L.C. v. Sportmans’s Market, Inc., 2092 F. 3d 489, 497-98 (2d. Cir. 2000).
On the bases of these authorities, the Complainant represents that the domain name in dispute of the Respondent is confusingly similar to the VALIUM Trademark within paragraph 4(a)(i) of the Policy.
The Complainant submits that the Respondent has no rights or legitimate interests in the domain name in dispute since the term “valium” is not a word and has no valid use other than as the Trademark of the Complainant who has not authorized the Respondent to use the said Trademark. This use by the Respondent is indicating a will to capitalize on the goodwill created by the Complainant and its predecessors and associated with the Trademark and on the reputation associated with the Trademark. According to the Complainant, Internet users visiting the website associated with the domain name in dispute are directed to various websites selling competitive diazepam products of other competitors, which website is not affiliated with nor sponsored by the Complainant.
Relying on an earlier UDRP panel decision in Justerini & Brooks Limited v. Juan Colmenar Rueda as Registrant “Colmenar”, aka “jokolm”/ “JCRco.”,WIPO Case No. D2000-1308, the Complainant contends that the same conclusion applies to the Respondent in this case where there is a clear attempt with the domain name in dispute to create and benefit from consumer confusion regarding the association between the business of the Complainant and the Respondent’s activities which are potentially health damaging since the Internet online drugs sales are clearly illegal, at least in the United States. According to the Complainant, the domain name in dispute is used to promote the products of competitors of the Complainant and the links for online pharmacies demonstrate the Respondent’s lack of legitimate non commercial interest in, or fair use of the domain name in dispute. See Hoffmann La Roche v. O, WIPO Case D2007-1806; Pfyzer Inc. v. jg a/k/a/ Josh GreenWIPO Case No. D2004-0784; The Bear Stearns Companies Inc. v. Darryl Pope,WIPO Case No. D2007-0593; COMSAT Corporation v. Ronald Isaacs,WIPO Case No. D2004-1082; Fat Face Holdings Ltd. v. Belize Domain WHOIS Service Ltd.,WIPO Case No. D2007-0626 and Sanofi-aventis v. Montanya Ltd.,WIPO Case No. D20006-1079.
The Complainant further contends that such incorporation and use of the famous Trademark in the domain name in dispute is evidence of the intent of the Respondent to trade on the reputation of the VALIUM Trademark. See Madona Ciccone, p/k/a Madonna v. Dan Parisi and “M”,WIPO Case No. D2000-0847. There is no bona fide offering of goods and services by the Respondent since its infringing activities under the domain name in dispute cannot confer rights or legitimate interests upon the Respondent. See America on-line, Inc. v. Xianfeng Fu, WIPO Case No. D2000-1374; Hoffmann-La RocheInc. V. Aneko Bohner,WIPO Case No. D2006-0629 and Hoffmann-La Roche Inc. v. Samuel Teodorek,WIPO Case No., D2007-1814.
From all these facts and arguments, the Complainant concludes that the Respondent has no rights or legitimate interests in the domain name in dispute and that the use of this said domain name to solicit pharmaceutical orders without a license or an authorization from the Complainant does not constitute any bona fide offering of goods and services under the Policy, paragraph 4(c)(i). Furthermore as it appears from the evidence, the Respondent is not making a legitimate non commercial or fair use of the domain name in dispute without intent for commercial gain, Policy, paragraph 4(c)(iii).
The Complainant submits on the basis of unchallenged evidence that the Respondent registered the domain name in dispute in bad faith and is using same in bad faith. The supporting facts are, according to the Complainant, that the registration of the domain name in dispute which incorporates the Trademark in its entirety is to capitalize on the reputation of the Trademark by diverting Internet users to websites of competitors. The term “buy-valium” is not a word while the term “valium” is invented and is a coined famous Trademark enjoying extremely strong worldwide reputation. Secondly there is no relationship between the Complainant and the Respondent, the latter not having obtained any authorization from the former. Thirdly the registration of the domain name in dispute by the Respondent can have been made only with the awareness of the Trademark and to seek to divert Internet users to other websites for commercial gain and thus, the Respondent has intentionally attempted to attract for financial gain Internet users to its website by creating the likelihood of confusion with the Trademark as to source, sponsorship, affiliation and endorsement of the website of the Respondent.
When such diversion is instigated by such use of a famous Trademark, it can only suggest opportunistic bad faith; see Veuve Cliquot Ponsardin, Maison Fond�e en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163. Furthermore the use of the domain name in dispute to promote competing and unrelated products also demonstrates use of the domain name in dispute in bad faith. See Hoffmann-La Roche Inc. v. Samuel Teodorek, WIPO Case No. D2007-1814.
B. Respondent
The Respondent did not reply to the Complainant’s contentions nor submit any comments to the Complainant’s Supplemental Statement pursuant to the Procedural Order No.1.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that a complainant prove each of the following three elements in order for a domain name to be cancelled or transferred:
(i) The domain name registered by the respondent 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 interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Comments on the evidence
Prior to engaging into the discussion, the Panel considers appropriate to comment on the efforts of the Complainant to notify and serve the Respondent with the Complaint. While the Respondent has adopted an address difficult to track down and serve the Complaint by messenger of the Complainant, the Panel observes that the Complaint and further notices were successfully notified upon the Respondent by e-mail and therefore finds that the Complainant and the Center have taken reasonable measures to notify the Respondent of the Complaint, the commencement of the proceedings, the notification of default, the appointment of Panel, the Panel Procedural Order No.1 and the Complainant’s Supplemental Statement.
A. Identical or Confusingly Similar
Initially the predecessor of the Complainant has commenced the use of the Trademark in 1962, registered the said Trademark with the US Patent and Trademark Office and thereafter, the Trademark was ultimately assigned to the Complainant in 1982 who continued the extensive use of its predecessors as shown in the Complaint and the Supplemental Statement of evidence filed by the Complainant. The Complainant and its predecessors have extensively used the Trademark as well as promoted and advertised the products associated therewith in various publications, medicinal journals and on television. As a result thereof and a significant unsolicited media attention, a substantial amount of goodwill has been associated with the Trademark. The Panel finds that the Complainant has rights in the VALIUM Trademark to which significant fame is associated.
It is clear to this Panel that the domain name in dispute incorporates the whole of this distinctive Trademark and as shown in the UDRP Panel decision America Online, Inc, v. Anson Chan,WIPO Case No.D2001-0004, cited by the Complainant, which decision the Panel adopts and follows, that the addition of the descriptive word “buy” and the top level domain name indicia “info” does not deter in any way the fact that the domain name in dispute is confusingly similar to the Trademark by the very presence of the distinctive and unique term “valium”.
This Panel finds that the domain name in dispute in confusingly similar with the VALIUM Trademark.
The first criterion has been met.
B. Rights or Legitimate Interests
Respondent has not filed any response in this proceeding. Therefore the Panel may accept all reasonable inferences and allegations included in the Complaint as true. The Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the domain name in dispute by stating that the Respondent has never been known by the name or the domain name in dispute, is not making any legitimate non-commercial or fair use of the domain name in dispute. Furthermore, Complainant has never given a license nor in any way authorized Respondent to make use of Complainant’s Trademark and to register the domain name in dispute. There is no evidence that the Respondent has ever engaged in any legitimate business under the Complainant’s Trademark.
According to the evidence, which remains unchallenged, the Respondent’s activities are potentially health damaging since the Internet online drug sales of this type of products are clearly illegal at least in the United States of America. In adopting the findings of the panel in Justerini & Brooks Limited v. Juan Colmenar Rueda as Registrant “Colmenar”, aka “jokolm”/ “JCRco.”,WIPO Case No. D2000-1308, the Panel agrees that in the light of the facts of this case, the adoption of the domain name in dispute was to create and benefit from consumer confusion regarding the association between the legitimate business of the Complainant and the Respondent’s activities. Such use of the domain name in dispute to promote the activities of the Respondent and the links for online pharmacies on its website to sell drugs in an illegal way does not demonstrate in this Panel’s view a legitimate non-commercial or fair use of the domain name in dispute. This finding is in concordance with and supported by the UDRP panel decisions cited hereinabove by the Complainant.
Furthermore, upon considering the non existence of the term “valium” other than as the distinctive, widely-known, if not famous, Trademark of the Complainant, this Panel sees in the registration of the domain name no motivation other than the intent to trade on the reputation of the VALIUM Trademark as held in the UDRP Madona Ciccone, p/k/a Madonna v. Dan Parisi and “M”,WIPO Case No. D2000-0847. When one considers that the registration of the domain name in dispute was done without the authorization or consent of the Complainant to incorporate its widely-known VALIUM Trademark and subsequently to use this domain name to solicit pharmaceutical orders in an illegal way in the United States of America, such activities do not constitute in this Panel’s opinion any bona fide offering of goods and services under the Policy, paragraph 4(c)(i).
Therefore, this Panel finds that the Respondent has no rights or legitimate interests in respect in the domain name in dispute.
The second criteria has been met.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
It should be noted that the circumstances of bad faith are not limited to the above.
The Complainant contends that the domain name was registered and used in bad faith.
When one considers the new and coined word VALIUM without any existence or meaning prior to its adoption and use as a Trademark by the predecessors of the Complainant in 1961 and the Complainant since 1982, this Panel does not see any other reason to choose this distinctive term VALIUM and incorporate it in the domain name in dispute without the Complainant’s consent or authorization, other than to capitalize on the reputation of the Trademark by diverting Internet users to websites of competitors for commercial gain.
This Panel finds that the registration of the domain name in dispute is a registration that was done in bad faith, no other justification comes to the mind of this Panel to use in this way the widely-known Trademark which enjoys a very strong worldwide reputation and the Respondent has not advanced any.
The Panel finds that the domain name was registered in bad faith.
As already commented upon hereinabove in these findings, the domain name is used to seek to divert Internet users to other websites for commercial gain which acts indicate to this Panel that the Respondent has intentionally attempted to attract for commercial gain and divert Internet users to other websites by creating the likelihood of confusion with the Trademark as to source sponsorship and endorsement of the website of the Respondent but furthermore to promote and assist the sale through online pharmacies of diazepam products in an illegal way at least in the United States of America.
Finally, as held by the panels in Veuve Cliquot Ponsardin, Maison Fond�e en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163 and Hoffmann-La Roche Inc. v Samuel Teodorek,WIPO Case No. D2007-1814, such activities of diversion and promotion of competing and unrelated products clearly demonstrates to this Panel that the domain name in dispute is used in bad faith.
The third criterion has been met.
7. Decision
The Panel concludes that:
(a) the domain name is confusingly similar to the Complainant’s Trademark;
(b) the Respondent has no rights or legitimate interests in the domain name in dispute;
(c) the domain name in dispute has been registered and is being used in bad faith.
Therefore, in accordance with paragraphs 4(a) and 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
J. Nelson Landry
Sole Panelist
Dated: July 16, 2008
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