WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION F. Hoffmann-La Roche AG v. George Stiegman Case No. D2008-1572 1. The Parties
The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally.
The Respondent is George Stiegman, of California, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 16, 2008. On October 17, 2008, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR a request for registrar verification in connection with the disputed domain name. On October 20, 2008, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 28, 2008 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on October 28, 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” or “UDRP”), 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 October 29, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was November 18, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 19, 2008.
The Center appointed Mihaela Maravela as the sole panelist in this matter on December 5, 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 following facts have been alleged by the Complainant and not refuted by the Respondent.
The Complainant is together with its affiliated companies one of the world's leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics and having global operations in more than 100 countries. The Complainant's mark VALIUM is protected as trademark in a multitude of countries worldwide. As an example reference is made to the International Registration No. R250784. Priority date for the mark VALIUM is October 20, 1961.
The mark VALIUM designates a sedative and anxiolytic drug belonging to the benzodiazepine family, which enabled the Complainant to build a world-wide reputation in psychotropic medications. For the mark VALIUM the Complainant holds registrations in over hundred countries on a world-wide basis.
The domain name was registered on September 23, 2008. 5. Parties' Contentions A. Complainant
The Complainant contends that the domain name of the Respondent is confusingly similar to the Complainant's mark seeing that it incorporates this mark in its entirety and that the mark VALIUM is well-known and notorious which will increase the likelihood of confusion. The Complainant also contends that its use and registration of the mark VALIUM do predate the Respondent's registration of the domain name.
The Complainant also contends that it has exclusive rights for VALIUM and no license/permission/authorization respectively consent was granted to use VALIUM in the domain name. Furthermore it is obvious that the Respondent uses the domain for commercial gain and with the purpose of capitalizing on the fame of the Complainant's mark VALIUM. The Respondent's website is a pharmacy on-line offering VALIUM. There is no reason why the Respondent should have any right or legitimate interest in such domain name.
Also, the Complainant contends that the domain name was registered in bad faith since at the time of the registration i.e. on September 23, 2008, the Respondent had, no doubt, knowledge of the Complainant's well-known product/mark VALIUM. Also, it contends that the domain is also used in bad faith and that this is obvious since when viewing the Internet-website from the Respondent one realizes that 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. Bad faith is established when “Respondent is using the domain names as a forwarding address to a for-profit on-line pharmacy”. Furthermore, by directing Internet users to a pharmacy on-line selling VALIUM without requiring proof of a physical examination by a physician, the use of the domain is potentially harmful to the health of Internet users, who purchase VALIUM products under the mistaken impression that they are dealing with the Complainant. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Respondent Identity
Initial WhoIs domain name search enquiries, submitted in evidence, yielded an apparent registrant name of Domain Admin, PrivacyP. During the course of the verification process, the Center received an “automated reply” email from Domain Admin, PrivacyP saying it provides a privacy service for domain name owners and that it is not the registrant of the domain name. The concerned registrar, in response to the Center's verification request, subsequently provided the registrant name of “George Stiegman”, with the contact details as set out above.
This suggests that a privacy service is in use, to shield the identity of the domain name registrant from the general public. There may be legitimate reasons for a person wishing to protect privacy by means of a proxy service. As has been noted by previous panels, the use of privacy services is becoming an increasingly common occurrence, and is a trend which is likely to continue. Under such arrangements the name of the “true” underlying or beneficial registrant is typically not displayed in the registrar's publicly accessible WhoIs database, and is instead disclosed (if at all) only after the Complaint has been filed. At that point, some registrars, presumably in consultation with the privacy service, also apparently disclose the information directly in the WhoIs database.
Further, where information is available to the Center through either a change in the registration information or through a communication from the Registrar to the provider, the Center generally requests that the Complainant amend its Complaint, mentioning that such amendment is commonly made by the simple addition of the newly identified registrant to the Complaint. Consequently, the Complainant amended its Complaint and named both Domain Admin, PrivacyP and George Stiegman as Respondents.
Paragraph 1 of the Rules defines “Respondent” as the holder of a domain-name registration against which a complaint is initiated.
The Panel must therefore identify the appropriate Respondent or Respondents in this case. This leads to the question, addressed by previous panels as well, whether a privacy service provider should be considered as the Respondent or one of the Respondents in the administrative procedure, should the identity of the real registrant be disclosed before the procedure starts. In such previous cases panels either (1) treated both the initially listed registrant (privacy service provider) and the subsequently disclosed registrant as the Respondent (Ohio Savings Bank v. 1&1 Internet, Inc. and David Rosenbaum,WIPO Case No. D2006-0881; Microsoft Corporation v. Whois Privacy Protection Service / Lee Xongwei,WIPO Case No. D2005-0642; TDS Telecommunications Corporation v. Registrant [20758] Nevis Domains and Registrant [117460] Moniker Privacy Services,WIPO Case No. D2006-1620) or (2) elected to disregard the privacy service provider entirely and to analyze only the acts of the underlying registrant (Costco Wholesale Corporation and Costco Wholesale Membership Inc. v. Yezican Industries and Domains By Proxy, Inc.,WIPO Case No. D2007-0638; The iFranchise Group v. Jay Bean / MDNH, Inc. / Moniker Privacy Services [23658],WIPO Case No. D2007-1438; Xtraplus Corporation v. Flawless Computers,WIPO Case No. D2007-0070).
As the Registrar provided the information regarding the disputed domain name registrant before the proceedings were formally notified (see alsoWIPO Case No. D2007-1438 above, Hoffmann-La Roche Inc. v. Aditya Roshni, Web Services Pty,WIPO Case No. D2008-1086), George Stiegman is the domain name holder currently listed with the WhoIs database and the private protection service was disabled immediately after receiving the request for registrar verification, the Panel elects to treat George Stiegman as the Respondent in this case.
Based on the methods employed to provide the Respondent with notice of the Complaint, the Respondent's obligation under the registration agreement to maintain accurate and current contact information, the Panel is satisfied that the Center took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and initiation of these proceedings, and that the failure of the Respondent to furnish a reply is not due to any omission by the Center. See also Hoffmann-La Roche Inc. v. Samuel Teodorek,WIPO Case No. D2007-1814. The Panel is satisfied that the Complaint was properly notified to the Respondent, that George Stiegman is the registrant of the disputed domain name and therefore the Respondent.
In this respect it should also be emphasized that the Center must attempt reasonably to contact the Respondent, but can do no better than to send communications to the email and physical address on official record or provided in the Complaint. In the present case the Complaint and associated communications were sent to the physical and emails addresses available in the WhoIs data base and provided by the Registrant. The Panel is satisfied that the Center has exercised the utmost care and has fulfilled its obligations under paragraph 2 of the Rules. See also Sanofi-aventis v. Protected Domain Services and Jan Hus, Husiten,WIPO Case No. D2008-0463.
Because the Respondent has defaulted in providing a response to the allegations of Complainant, the Panel is directed to decide this administrative proceeding on the basis of the complaint (Rules, paragraph 14(a)), and certain factual conclusions may be drawn by the Panel on the basis of Complainant's undisputed representations (id., paragraph 15(a)). “A Panel shall 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.”
Applied to this case, paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that 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) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith. B. Identical or Confusingly Similar
The Panel must find that: (a) the Complainant has rights in a trade mark or service mark; and (b) that the disputed domain name is identical or confusingly similar to that trade mark or service mark.
Here, the Complainant has demonstrated ownership of the registered trademark VALIUM by submitting the registration certificate No. R250784 dated October 20, 1961, which is valid in several countries.
The question of identity or confusing similarity for the purpose of the Policy requires a comparison of the disputed domain name to the trademark rights which have been proved.
Here, the domain name has three differences from the trademark of the Complainant VALIUM: the addition of the “.com” suffix, the addition of “plus” to the trademark and the inclusion of a hyphen between the trademark VALIUM and the word “plus”.
The addition of the generic top-level domain (gTLD) “.com” is without legal significance from the standpoint of comparing the disputed domain name to VALIUM since use of a gTLD is required of domain name registrants, “.com” is one of only several such gTLDs, and “.com” does not serve to identify a specific enterprise as a source of goods or services. See also Ticketmaster Corporation v. DiscoverNet, Inc.,WIPO Case No. D2001-0252; Williams-Sonoma, Inc. d/b/a Pottery Barn v. John Zuccarini d/b/a Country Walk,WIPO Case No. D2002-0582 concerning the inclusion of a gTLD.
Many panels have established that the addition of words or letters to a mark used in a domain name does not generally alter the fact that the domain name is confusingly similar to the mark. The addition of a generic word to a trademark will not avoid a determination that the disputed domain name is confusingly similar to that mark. See Hoffmann-La Roche Inc. v. Lindy Shaw,WIPO Case No. D2008-0985. The fact that a domain name wholly incorporates a Complainant's trademark is sufficient to establish identity or confusing similarity for the purpose of the Policy, despite the addition of other words to such marks. See Oki Data Americas Inc. v. ASD Inc.,WIPO Case No. D2001-0903. The addition of a generic term does not serve to distinguish the domain name from the trademark, but may reinforce the association of the Complainant's trademark with a domain name. See Viacom International Inc. v. Frank F. Jackson and Nancy Miller,WIPO Case No. D2003-0755; Caterpillar Inc. v. Roam the Planet Ltd,WIPO Case No. D2000-0275; Société Air France v. RBlue,WIPO Case No. D2005-0290.
In this case, apart from the generic top level domain, the disputed 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. This was also held by the panels in F. Hoffmann-la Roche AG v. Popo,WIPO Case No. D2008-0423 (for ) and F. Hoffmann-La Roche AG v. TMNET, Anton Gorodov,WIPO Case No. D2008-0995 (for ).
It should also be stressed that when a disputed domain name incorporates, as here, the entirety of Complainant's trademark – and a notorious and famous trademark – it is difficult, if not impossible, regardless of added terms to distinguish adequately the mark from the disputed domain names. The additional term in our case, “plus”, is common term of no significance value in distinguishing the famous mark VALIUM from the disputed domain name. See also F. Hoffmann-La Roche AG v. Ashima Kapoor,WIPO Case No. D2005-1351.
As regards the inclusion of the hyphen, the Panel is of the view that the mere addition of such hyphen does not make sufficient difference between the domain name and the trademark. See also NeuStar, Inc. v. Kris Sweldo,WIPO Case No. D2006-1210; Shopatron, Inc. v. Reshare Corporation,WIPO Case No. D2007-1377; Fort Knox National Company v. Ekaterina Phillipova,WIPO Case No. D2004-0281 for similar views in the sense that the punctuation marks such as hyphens do not, on their own, avoid a finding of confusing similarity.
This Panel concludes that the domain name is confusingly similar to the Complainant's trademarks. See also Reuters Limited v Global Net 2000, Inc,WIPO Case No. D2000-0441.
The Panel therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied. C. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate a respondent's rights or legitimate interests in a disputed domain name:
(i) before any notice to it of the dispute, the respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The consensus view of WIPO panelists concerning the burden of establishing no rights or legitimate interests in respect of the domain name is as follows:
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Section 2.1.)
In the present case the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the domain name and Respondent has failed to assert any such rights. (See, e.g. Barbara Brennan Inc. v. Texas International Property Associates,WIPO Case No. D2008-0351; Sanford Winery Company v. Matt Geiser,WIPO Case No. D2008-0210).
By not submitting a Response, the Respondent has failed to invoke any circumstances, which could demonstrate any right or legitimate interest in the domain name. The only evidence in this connection is that provided in the Complaint, and that which is self-evident from the website to which the disputed domain name refers.
It is clear from the evidence that the “www.” website is used by the Respondent to run an on-line pharmacy selling the pharmaceutical product Valium. This finding of the Panel is confirmed by the following introductory text on the website: “We guarantee that you won't find a better portal to buy Valium online elsewhere. We have the best resources on genuine Valium and offer you the best deals on authentic and cheap Valium. Buy-valium-online is a complete platform with detailed information on Valium Effects, Valium Benefits, Valium Prescriptions et al. Valium information site has a wealth of information on Valium and Anxiety Disorders. Step in and surf for Valium Medication before you order Valium online”.
The “www.” website also contains some background information about VALIUM, information about the medicine itself and its use (e.g. ‘How should be used', ‘Other uses for this medicine?', ‘If I forget a dose?', ‘What other information', etc.).
The Complainant has exclusive rights to the trademark VALIUM and has not licensed or otherwise permitted the Respondent to use its trademark.
There is no indication that the Respondent has registered or used the name “valium” as a trademark, or has ever been known by this name.
Moreover, by not filing a Response, the Respondent has failed to invoke any circumstance which could indicate the existence of any right or legitimate interest he would have in the domain name; or otherwise rebut the Complainant's prima facie case that no such rights or legitimate interests exist.
The Panel is of the view, also taking into account the use of the disputed domain name as defined below, that the Respondent has no rights or legitimate interests in respect of the domain name. See also F. Hoffmann-La Roche AG v. TMNET, Anton Gorodov,WIPO Case No. D2008-0995. D. Registered and Used in Bad Faith
To fulfill the third requirement, the Complainant must prove that the domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out a number of circumstances that shall, in particular but without limitation, be evidence of registration and use of a domain name in bad faith; e.g.,
(i) Circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the Complainant who is the owner of the trademark, or to a competitor of the Complainant, for a valuable consideration in excess of the Respondents documented out-of-pocket costs directly related to the domain name; or
(ii) Circumstances indicating that the Respondent has registered the domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) Circumstances indicating that the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his 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 the said website location or of a product or service on that website location.
The trademark VALIUM is quite well known in the field of pharmaceutical products. In this respect see F. Hoffmann-la Roche AG v. Popo,WIPO Case No. D2008-0423; F. Hoffmann-La Roche AG v. TMNET, Anton Gorodov,WIPO Case No. D2008-0995; F. Hoffmann-La Roche AG v. DNS Administrator/Turvill Consultants Ltd-RD,WIPO Case No. D2006-0047. Therefore, the Respondent is most likely to have known of Complainant, its products and trademarks prior to registering the disputed domain name. Also the Respondent registered the disputed domain name almost half a century after Complainant registered its trademarks. In view of the fame of the Complainant's trademark, there is no doubt that Respondent was aware of the trademark VALIUM prior to registering the domain name. This finding of the Panel is also evidenced by the fact that the Respondent's homepage contains links titled ‘Valium Info', ‘Valium Benefits', ‘Valium FAQ', Valium Price', ‘Valium Effects' and ‘Valium Background' which consist of information concerning the product Valium itself and its use. Indeed, there could be no other reason for the Respondent's registration of the domain name than to use it to direct Internet traffic to Respondent's on-line pharmacy. See also F. Hoffmann-La Roche AG v. TMNET, Anton Gorodov,WIPO Case No. D2008-0995 (supra).
In line with the opinions of previous panels (See also F. Hoffmann-La Roche AG v. TMNET, Anton Gorodov,WIPO Case No. D2008-0995), it seems indeed that the Respondent has, by using the Complainant's trademarks in its domain name, divert Internet users to an on-line pharmacy, and intentionally created a likelihood of confusion with the Complainant's marks as to the source, sponsorship, affiliation, or endorsement of the Respondent's affiliated on-line pharmacy website.
The deliberate diversion of Internet users constitutes bad faith, by creating confusion that takes advantage of the Complainant's goodwill. It is well-established in UDRP decisions that such confusion and the resultant misdirection of Internet traffic is independently sufficient to establish bad faith. See e.g., Sony Ericsson Mobile Communications International AB, Telefonaktiebolaget LM Ericsson, Sony Corporation v. Party Night Inc.,WIPO Case No. D2002-1128.
Therefore, in this case, the following circumstances were considered when assessing the existence of bad-faith:
- The Complainant's trademark VALIUM is internationally well-known mark in the field of pharmaceuticals (see F. Hoffmann-la Roche AG v. Popo,WIPO Case No. D2008-0423; F. Hoffmann-La Roche AG v. TMNET, Anton Gorodov,WIPO Case No. D2008-0995; F. Hoffmann-La Roche AG v. DNS Administrator/Turvill Consultants Ltd-RD,WIPO Case No. D2006-0047);
- The Respondent was using the domain name as a forwarding address to a for-profit on-line pharmacy;
- At this on-line pharmacy orders could be placed by the public to buy VALIUM. This is clearly an activity commercially competing with Complainant's own established sales channels for its product Valium – a classic example of bad faith use of a domain name to lure web visitors using the goodwill built up in Complainant's mark for Respondent's commercial gain. See F. Hoffmann-La Roche AG v. PrivacyP / Contact Id 7065280, Shutikhin Sergey,WIPO Case No. D2008-0765;
- The Respondent appears to be trading on the Complainant's goodwill and reputation, which the Complainant has built up over many years. This, without any explanations by the Respondent to the contrary, of which none have been forthcoming, constitutes bad faith. See e.g., the case of eBay Inc. v. Sunho Hong,WIPO Case No. D2000-1633.
For all the reasons, the Panel concludes that the Respondent must have been aware of Complainant's trademarks at the time it registered the disputed domain name.
Accordingly, and because Respondent has also used the disputed domain name in bad faith to attract Internet users to an on-line pharmacy, the Panel finds that Complainant has satisfied its burden of proving that Respondent registered and used the disputed domain names 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.
Mihaela Maravela
Sole Panelist
Dated: December 19, 2008
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