WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION F. Hoffmann-La Roche AG v. PrivacyP, Neeraj Khanna / E2 Solution Case No. D2009-1496 1. The Parties
1.1 The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland (the “Complainant”) internally represented.
The Respondents are PrivacyP of Moergestel, Netherlands, and Neeraj Khanna / E2 Solution of New Delhi, India (collectively, the “Respondent”). 2. The Domain Name and Registrar
2.2 The disputed domain name (the “Domain Name”) is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR. (the “Registrar”). 3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 4, 2009. On November 5, 2009, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR, the Registrar, a request for registrar verification in connection with the disputed domain name. On November 6, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR transmitted by email to the Center its verification response disclosing the registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Registrar by the same email, confirmed that the disputed Domain Name would remain locked pending the receipt of explicit instructions and that the language of the Domain Registration Agreement and the Customer Master Agreement were both in English. The Center sent an email communication to the Complainant on November 9, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint.
3.2 The Complainant filed an amendment to the Complaint on November 10, 2009. 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”).
3.3 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 initial due date for Response was November 30, 2009.
3.4 On November 17, 2009 the Complainant requested that the proceedings be suspended in order to allow the exploration of settlement options by the parties. The Center suspended the proceedings accordingly on the same day. On November 23, 2009 the Complainant requested the re-institution of the proceedings. The Center informed the parties that the proceedings were re-instituted on the same day and advised the Respondent that the new due date for Response was December 7, 2009. Accordingly, the Response was filed with the Center by the Respondent on December 4, 2009 by Mr. Sanjay Suri.
3.5 The Center appointed Ike Ehiribe as the sole panelist in this matter on December 22, 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 paragraph 7 of the Rules. 4. Factual Background
4.1 The Complainant is a company duly organized under the laws of Switzerland, and together with its affiliated companies is one of the leading healthcare groups in the field of pharmaceuticals and diagnostics, having global operations in more than 100 countries. The Complainant is the owner of the international trademark VALIUM registered and protected in a large number of countries, first registered in Geneva, on October 20, 1961 as evidenced by International Registration Certificate No. 250784.
4.2 The well known trademark VALIUM designates a sedative and anxiolytic drug which belongs to the benzodiazepine family which has enabled the Complainant to build up a worldwide reputation in psychotropic medications.
4.3 The Respondent Neeraj Khanna / E2 Solution registered the Domain Name on October 22, 2009, through a privacy service provided by PrivacyP. At about the same time, the Complainant discovered that the disputed Domain Name seemed to be advertising links to websites promoting and/or offering products and services of third parties. The Respondent Neeraj Khanna / E2 Solution notified the center by email dated November 10, 2009 that they were acting on behalf of a client. On December 4, 2009, Mr. Sanjay Suri filed a Response to the Complaint on behalf of the Respondent. 5. Parties' Contentions A. Complainant
5.1 The Complainant contends that its trademark VALIUM is well-known and notorious, and that they hold registrations in well over one hundred countries on a worldwide basis.
5.2 The Complainant contends further that the Domain Name registered by the Respondent is confusingly similar to the Complainant's trademark in so far as the disputed Domain Name incorporates the Complainant's trademark in its entirety and adds the international non-proprietary name (INN) of the drug, namely “diazepam”. The Complainant asserts that the mere addition of the well-known international non-proprietary name to the trademark does not sufficiently distinguish the resulting name from its trademark.
5.3 The Complainant submits that since its trademark is so well-known and notorious worldwide, the notoriety will increase the likelihood of confusion, therefore the Domain Name is confusingly similar to its trademark.
5.4 The Complainant contends further that its use and registration of the trademark, VALIUM, predates the Respondent's registration of the disputed Domain Name.
5.5 The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed Domain Name, as the Respondent has not been granted any licence, permission, authorization or consent to use its trademark, or to register it as a domain name. In further support of this contention, the Complainant submits that the Respondent is using the disputed Domain Name for commercial gain with the purpose of capitalizing on the worldwide fame of the Complainant's trademark, more so, since the Respondent's website is a search engine with sponsored links. Accordingly, the Complainant refers to the decision in Sigikid H. Scharrer & Koch GmbH & Co. KG, Mybear Marketing –und Vertriebs GmbH, Mr. Thomas Dufner v. Bestinfo,WIPO Case No. D2004-0990, to argue that there is no reason why the Respondent should have any right or interest in the disputed Domain Name.
5.6 With reference to registration and use in bad faith, the Complainant submits that the Respondent with full knowledge of the Complainant's well-known product and trademark, registered the disputed Domain Name in bad faith on October 22, 2009. The Complainant further contends that the Respondent has intentionally and for commercial purposes attempted to attract Internet users to the Respondent's websites by creating a likelihood of confusion with the Complainant's well-known trademark as to the source, affiliation and endorsement of the Respondent's website or of the products or services posted on or linked to the Respondent's website.
5.7 The Complainant relies on the decision in L'Oreal, Biotherm, Lancome Parfums ET Beaute & Cie v. Unasi Inc.,WIPO Case No. D2005-0623 to argue that the Respondent's attempts to exploit the Complainant's well-known worldwide trademark by diverting Internet users to its website to obtain unjustified revenues, through click-through commissions is a common example of use in bad faith.
5.8 The Complainant requests a decision that the disputed Domain Name be transferred to the Complainant. B. Respondent
5.9 The Respondent states that the Complainant's trademark, VALIUM, was obtained in 1961 to 1962, and at that time, the Internet did not exist as we know it, therefore the Complainant's trademark does not automatically include the Respondent's domain name on the Internet.
5.10 The Respondent further contends that their Domain Name resolving to the website, “www.” is very different from the Complainant's trademark VALIUM as the trademark has only six alphabets while their Domain Name consists of twenty alphabets. The Respondent therefore argues that since “Coca-Cola” and “Campa-Cola” whose similarity in name is greater than the similarity between the Respondent's Domain Name and the trademark of the Complainants, they fail to see how their Domain Name will interfere with the working of the Complainant's trademark and name. 6. Discussion and Findings
6.1 Under paragraph 4(a) of the Policy, to succeed in this administrative proceeding the Complainant must prove: (i) that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith.
6.2 As expressly stated in the Policy, the Complainant must establish the existence of each of the three elements in the proceedings.
A. Identical or Confusingly Similar
6.3 The Panel finds on the facts, as submitted by the Complainant that the disputed Domain Name is no doubt, confusingly similar to the well-known international trademark and name, VALIUM, owned exclusively by the Complainant. This Panel is satisfied, just as the Complainant contends, that the mere addition of the international non-proprietary name of the drug, that is “diazepam”, to the disputed Domain Name does not in any way distinguish it from the Complainant's trademark and name. The Panel has taken into account the worldwide reputation of the trademark, product and name, VALIUM, as evidenced by the International Registration Certificate dated October 20, 1961 and fairly recent international newspaper reports contained in the New York Times, the New Yorker and other international publications to conclude further (as discussed in detail further below), that the Respondent knew or ought to have known of the existence of the Complainant's product and trademark. The Respondent ought to have ensured that the registration of the disputed Domain Name did not infringe upon the Complainant's valid trademark registration.
6.4 The Panel finds no merit in the argument of the Respondent to the effect that the Internet was not in existence as at 1961 or 1962. Similarly, the Panel finds no substance in the Respondent's alternative argument to the effect that their domain name consists of twenty alphabets while the Complainant's trademark consists of six alphabets. The Panel also finds that the suggested comparison with the similarity between “Campa-Cola” and “Coca-Cola” to be wholly misconceived in this instance.
6.5 In the circumstances, the Panel finds that the Complainant has established that the disputed Domain Name is confusingly similar to the Complainant's trademark in which it has exclusive rights in accordance with paragraph 4(a)(i) of the UDRP Policy. B. Rights or Legitimate Interests
6.6 The Panel finds as a fact that the Respondent has failed to provide any evidence or circumstances required to establish that it has rights or legitimate interests in the disputed Domain Name within the ambit of paragraph 4(c) of the Policy. The Complainant submits that the Respondent does not possess any licence, authority or consent from the Complainant permitting the use of the trademark VALIUM or in a domain name. The Complainant asserts that the Respondent is using the disputed Domain Name for illegitimate commercial or financial gain in so far as the Respondent's website is a search engine with sponsored links advertising links to websites promoting or offering products and services of third parties. The Panel finds the Complainant's reference to the case of Sigid H. Scharrer & Koch GmBH & Co KG, MyBear Marketing-und Vertriebs GmbH, Mr. Thomas Dufner v. BestinfoWIPO Case No. D2004-0990 quite relevant and to the point, in this regard, in so far, as that case describes the diversion of Internet traffic to other unrelated websites as tantamount to not using the Domain Name in connection with a bona fide offering of goods and services.
6.7 The Panel is satisfied that these are well founded assertions which the Respondents have failed to deny or refute. The Panel therefore concludes, after considering a screenshot of the Respondent's website as shown in Annex 5 of the Complaint, that the Respondent has failed to establish: (i) before notice of the dispute it was preparing the disputed Domain Name for use in connection with a bona fide offering of goods and services in consonance with paragraph 4(c)(i) of the policy; (ii) it had been commonly known by the disputed Domain Name in consonance with paragraph 4(c)(ii) of the Policy; and or (iii) it had made and continued to make a legitimate noncommercial or fair use of the disputed Domain Name in consonance with paragraph 4(c)(iii) of the Policy. In the circumstances, the Panel finds that the Complainant has satisfied the requirement that the Respondent has no rights or legitimate interests in the Domain Name in accordance with Paragraph 4(a)(ii) of the Policy. See in this regard Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455, referred to in the WIPO Overview of Panel Views on selected UDRP questions. See also, F. Hoffman -La Roche AG v. PrivacyP Domain Admin and Mark Sergijenko,WIPO Case No. 2007-1854. C. Registered and Used in Bad Faith
6.8 The Panel again finds that the Respondent registered and is using the disputed Domain Name in bad faith. The Panel is satisfied that the Respondent, no matter in which jurisdiction based in, must have known or ought to have known of the well established trademark, name and product, in the pharmaceutical industry owned by the Complainant in October 22, 2009 when it obtained registration of the disputed Domain Name. The Panel has further taken account of the following factors: (i) the screenshot of the Respondent's website clearly indicating that there are sponsored links advertising other websites and promoting or offering other products and services of third parties; and (ii) the refusal of the Respondent to transfer the disputed Domain Name to the Complainant after it offered to do so.
6.9 The Panel is satisfied that the Respondent registered the disputed Domain Name with the intention of generating unjustified revenues from each click-through online consumer, thereby illegitimately exploiting the reputation of the Complainant's trademark and name for commercial gain. The Panel places reliance on the fact that the Complainant's allegation in this regard remains unchallenged by the Respondent. The Complainant has correctly referred to the decision of L'Oreal Biotherm, Lancome Parfums et Beaute & Cie v. Unasi Inc.,WIPO Case No. D2005-0623, which confirms the contention that the diversion of Internet traffic by exploiting the reputation of a complainant's trademark for financial gain through click-through commissions is a common example of use in bad faith.
6.10 The Panel further refers to the decision in F. Hoffmann-La Roche AG v. PrivacyP. Domain Admin and Mark Sergijenko, WIPO Case No. D2007-1854 to hold that the Respondent must have had, not only the Complainant's trademark in mind, when the disputed Domain Name was registered, but also the confusion that would no doubt follow in the minds of Internet users and online consumers to divert them to its website for illegitimate financial gain. The Panel therefore finds that the Complainant has also established the finding of bad faith use and registration within the ambit of paragraph 4(b) (iv) of the Policy. 7. Decision
7.1 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.
Ike Ehiribe
Sole Panelist
Dated: January 05, 2010
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