WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION F. Hoffmann-La Roche AG v. bobr bobr Case No. D2009-0905 1. The Parties
The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, internally represented.
The Respondent is bobr bobr of Afghanistan. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 7, 2009. On July 7, 2009, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the disputed domain name. On that same day, eNom, Inc. 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” 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 Julys 16, 2009. On Julys 28, 2009, at the request of the Complainant, the proceedings were suspended in order to allow the parties to attempt to reach an agreement regarding the transfer of the disputed domain name. On August 4, 2009, the Complainant requested that the proceedings be re-instituted as no settlement could be reached between the parties during the suspension period.
In accordance with the Rules, paragraph 5(a), the due date for Response was August 12, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on Augusts 17, 2009.
The Center appointed Andrew Frederick Christie as the sole panelist in this matter on Augusts 25, 2009. 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 one of the world's major research-focused healthcare groups in the field of pharmaceuticals and diagnostics, operating globally. It is the owner in numerous countries of registrations for the trademark VALIUM, the earliest priority date for which is October 20, 1961. This trademark is used in respect of a sedative and anxiolytic drug belonging to the benzodiazepine family.
The disputed domain name was registered on April 29, 2009. At least as of July 6, 2009, the disputed domain name was used in the URL for a website linking to numerous web pages offering for sale pharmaceutical products under the name “Valium”. 5. Parties' Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to its VALIUM trademark. The disputed domain name incorporates the VALIUM trademark in its entirety, and is succeeded by a hyphen and the descriptive term “apotheke”. The VALIUM trademark is well known and notorious. This notoriety increases the likelihood of confusion of the disputed domain name with the Complainant's trademark.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not licensed the Respondent to use its VALIUM trademark. The Respondent is using the disputed domain name for commercial gain with the purpose of capitalizing on the fame of the Complainant's VALIUM trademark. There is no reason why the Respondent should have any right or interest in the domain name.
The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. At the time of registration the Respondent had knowledge of the Complainant's VALIUM product and trademark. By using the disputed domain name in the URL of a website selling medication products, the 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 trademark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or of the products or services posted on or linked to Respondent's website. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The disputed domain name incorporates fully the Complainant's VALIUM trademark, succeeded by a hyphen and the word “apotheke”. The distinctive part of the domain name is “valium”, the Complainant's trademark. The addition of the word “apotheke” does not dispel the confusing similarity with the Complainant's trademark. The word “apotheke” is a Roman alphabet transliteration of the Greek word for “storehouse”, used especially to describe a place at which medicines are kept. The inclusion of this word in the disputed domain name does not lessen the inevitable association of the domain name with the Complainant's VALIUM trademark that results from the domain name's incorporation of the trademark. Thus, this Panel is satisfied that the disputed domain name is confusingly similar to the Complainant's trademark. B. Rights or Legitimate Interests
The Respondent is not associated with the Complainant, and has not been licensed by the Complainant to use the VALIUM trademark. The Respondent is using the disputed domain name to promote online sales of a medication product described as “Valium”. There is no evidence as to whether or not the product sold from this website is the product manufactured by the Complainant under the VALIUM trademark. However, even if the product sold at the Respondent's website is genuine VALIUM, this does not by itself mean that the Respondent has a right or legitimate interest in the disputed domain name. As the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“Overview”) paragraph 2.3 makes clear, the majority view is that an online reseller of goods has a legitimate interest in a domain name containing the trademark used on those goods only if the Respondent: (i) does actually sell the trademarked goods, (ii) is using the website to sell only the trademarked goods, (iii) discloses its relationship with the Complainant, and (iv) is not trying to corner the market in all relevant domain names, thus depriving the Complainant of the opportunity of reflecting its trademark in a domain name. In this case it is not necessary to decide whether the first, second and fourth requirements are satisfied, because it is clear that the third requirement is not satisfied. The website to which the disputed domain name resolves does not disclose the Respondent's (lack of a) relationship with the Complainant. Thus, this Panel is satisfied that the Respondent does not have any rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
This Panel has no doubt that the Respondent was aware of the Complainant's VALIUM trademark at the time it registered the disputed domain name. The Respondent's use of the disputed domain name in the URL of a website selling medication products is an intentional attempt to attract, for commercial gain, Internet users to that website by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation or endorsement of that website or a product on that website. Pursuant to the paragraph 4(b)(iv) of the Policy, this is evidence of the registration and use in bad faith of the disputed domain name. Thus, this Panel is satisfied that the Respondent registered and is using the disputed domain name 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.
Andrew Frederick Christie
Sole Panelist
Dated: September 9, 2009
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