WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION F. Hoffmann-La Roche AG v. Jan Adair Case No. D2009-1491 1. The Parties
The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, internally represented.
The Respondent is Jan Adair of Amsterdam, Netherlands. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 3, 2009. On November 4, 2009, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On November 4, 2009, eNom 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 November 10, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 30, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 3, 2009.
The Center appointed Dan Hunter as the sole panelist in this matter on December 4, 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. It subsequently became necessary for the Panel to extend the due date for rendering of the decision, including due to the intervention of the Christmas and New Year periods. 4. Factual Background A. Complainant and its Mark
The Complainant is a Swiss corporation that is a leading research-focused healthcare organization, a developer of pharmaceuticals and diagnostics, and is the producer of the sedative and anxiolytic drug marketed under the name “Valium.”
It has registrations for VALIUM in over a hundred countries, including an International Registration No. R250784, with a priority date of October 20, 1961. B. Respondent
The Respondent appears to be a Dutch citizen, with the address as provided above. He did not provide a response and so no other information is known about him.
The Respondent registered the domain name in issue with eNom on October 6, 2009, and maintains a website at that address providing pharmaceuticals to the public. 5. Parties' Contentions A. Complainant
The Complainant asserts that the Respondent's domain name is identical or confusingly similar to the Complainant's mark. Specifically, the Complainant asserts:
(1) The Respondent's domain name is confusingly similar to the Complainant's mark seeing that they incorporate the mark in its entirety, and descriptive term “noprescription” will not assist to prevent confusion.
(2) The mark VALIUM is well-known and notorious. The notoriety will increase the likelihood of confusion.
The Complainant asserts that the Respondent has no legitimate interest or rights in the domain name. Specifically, the Complainant asserts (in pertinent part):
(1) The Complainant has exclusive rights for the VALIUM mark, and no license was granted to the Respondent to use the mark.
(2) The Respondent uses the domain for commercial gain and with the purpose of capitalizing on the fame of the Complainant's mark VALIUM.
The Complainant asserts that the Respondent registered the domain name and is using it in bad faith. Specifically, the Complainant asserts (in pertinent part):
(1) At the time of the registration i.e. on October 6, 2009, the defendant had, no doubt, knowledge of the Complainant's well-known product/mark VALIUM.
(2) Respondent has intentionally attempted (for commercial purpose) to attract Internet users to the Respondent's websites, by creating a likelihood of confusion with the Complainant's well-known mark as to the source, affiliation and endorsement of Respondent's websites or of the products or services posted on or linked to Respondent's website.
(3) According toWIPO Case No. D2004-0784, bad faith is established when “Respondent is using the domain names as a forwarding address to a for-profit on-line pharmacy”.
Accordingly, the Complainant submits that the Panel should order that the domain names be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
The Policy, adopted by the Internet Corporation for Assigned Names and Numbers on August 26, 1999, applies to domain name registrations made in the “.biz” namespace. Paragraph 4(a) of the Policy requires a complainant to make out three elements to succeed in an administrative proceeding initiated under the Policy:
1. The Complainant has rights in a trade or service mark, with which the Respondent's domain names are identical or confusingly similar (Paragraph 4(a)(i)); and
2. The Respondent has no rights or legitimate interests in respect of the domain names (Paragraph 4(a)(ii)); and
3. The Respondent registered and is using the domain names in bad faith (Paragraph 4(a)(iii)). A. Identical or Confusingly Similar
There are two requirements that a complainant must establish under this paragraph; that it has rights in a trade or service mark, and that the domain names are identical or confusingly similar to the marks.
The Complainant has provided the registration documents for its VALIUM mark registered internationally. The Panel concludes that the Complainant, as registered owner of the VALIUM mark pursuant to its international registration document, has established rights in a trademark, sufficient for the purposes of paragraph 4(a)(i) of the Policy.
The second requirement is that the domain name be identical or confusingly similar to the mark. The Respondent's domain name comprises the registered mark, together with the expression “no prescription” (without spaces). As this Panel sees it, since the suffixed expression is a description of a way of procuring the drug that is the subject of the mark, the suffix doesn't change the meaning of the use of the mark within the domain name. It simply indicates that the domain name involves the trademarked drug and a way of getting it. In this Panel's view, there is an argument that could be made that the “noprescription” expression changes the meaning of the mark, so that no consumer could be confused as to the provenance of the domain name. That is, that although the domain name is similar it is not confusingly similar. However the Respondent has not replied to the Complaint and so has not presented any argument on this point. And it is possible, although not likely, that a pharmaceutical company such as Hoffman-La Roche could provide alternate, non-prescription channels to provide its product. As a result this Panel concludes that the Complainant has met its burden of proof in relation to this component of the analysis.
The domain name also includes the “.biz” top level domain signifier. By now it is well established that the TLD signifier does not change the meaning of the name. Hence the Panel concludes that the domain name is, for the purposes of the Policy, confusingly similar to the Complainant's mark.
The Complainant has therefore shown that it has the appropriate rights in a trademark, and that the domain name is identical or confusingly similar to this mark. The Panel finds therefore that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant asserts that the Respondent has no rights or legitimate interest in the domain name, as required under paragraph 4(a)(ii) of the Policy. It makes general assertions that the Respondent has no permission to use the mark. The Respondent has provided no Response, and there is no evidence of any of the canonical examples of legitimate interest that are provided in paragraph 4(c) of the Policy. Notably, although the Respondent is making a use of the domain name in conjunction with the sale of a product, the peculiar and illegal nature of Internet pharmacies means that this Panel cannot conclude that the Respondent is engaged in a bona fide offering of goods, as provided in paragraph 4(c)(i).
The Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, which the Respondent has failed to rebut. The Panel concludes therefore that the Complainant has satisfied the requirement of paragraph 4.a (ii) of the UDRP. C. Registered and Used in Bad Faith
The Complainant asserts that the Respondent has registered and is using the domain name in bad faith, as required under paragraph 4(a)(iii) of the Policy. It makes the specific assertions that the Respondent must have known of the Complainant's registration, and that the Respondent has intentionally attempted (for commercial purpose) to attract Internet users to the Respondent's websites, by creating a likelihood of confusion with the Complainant's well-known mark as to the source, affiliation and endorsement of Respondent's websites or of the products or services posted on or linked to Respondent's website.
However, in this Panel's assessment there is insufficient evidence in this particular case that the Respondent seeks to attract Internet users to its site by creating a likelihood of confusion with the Complainant's mark, as provided in paragraph 4(b)(iv). Unlike the citedWIPO Case No. D2004-0784, which involved the name of a pharmaceutical company, here the domain name involves a drug name and a means of procuring it (i.e. without prescription). In this Panel's view, Internet users are not going to be confused about the purpose of the website, nor are they likely to think that the site is operated by the Complainant. Rather, they will go to the website associated with the domain name thinking that they will be able to obtain drugs without a prescription, in the nature of all Internet pharmacies. As this Panel sees it, there is simply insufficient evidence to support a conclusion of actual or intent to cause confusion here. Thus the Complainant has failed to make out its claim based on paragraph 4(b)(iv) of the Policy. No other subsection of paragraph 4(b) has been pleaded, and in any event none of them are applicable here.
Of course paragraph 4(b) only provides examples of bad faith registration and use, and it is open to this Panel to interpret bad faith registration and use more broadly. However, this Panel declines to do so in this case. As much as unlicensed Internet pharmacies might be appalling and dangerous and desperately in-need of regulation, the Policy is not intended, nor is it well-adapted, to stop this type of Internet commerce. In this Panel's opinion, Paragraph 4(a)(iii) was always intended to track the standard international understandings of what amounted to an abusive misappropriations of a trademark, misappropriations of which demand either consumer confusion or some kind of unfair competition / passing off. Proof of this can be seen both in the examples articulated in paragraph 4(b)—all of which fit into one or other of these categories—and in the discussion in WIPO's Final Report to ICANN of April 30, 1999 which led to the development of the UDRP.
This Panel has read the decisions of other panelists in relation to domain names that are similar to the one in issue here, and which have usually been transferred. The facts and circumstances of these cases are each sufficiently different from this case that there is no reason to feel bound by these decisions. This Panel therefore declines to find that operating an Internet pharmacy in this case is, of itself, bad faith registration and use as per paragraph 4(a)(iii). Absent confusion, passing off, or some other specific evidence of bad faith, this Panel does not believe that the Policy can be used to stop this type of activity.
There being no evidence of bad faith registration and use on this Panel's assessment in this case, the Complainant has therefore not satisfied the requirements of paragraph 4(a)(iii) of the Policy. Consequently the Complainant has failed to make out all the elements of its case. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Dan Hunter
Sole Panelist
Dated: January 18, 2010
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