WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION F. Hoffmann-La Roche AG v. Nexton Limited, Ryabov Sergey Case No. D2010-0101 1. The Parties
The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally.
The Respondent is Nexton Limited, Ryabov Sergey of Saint-Petersburg, Russian Federation. 2. The Domain Names and Registrar
The disputed domain names , , , and are registered with eNom, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on January 22, 2010. On January 22, 2010, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the disputed domain names. On January 22, 2010, 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 January 26, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was February 15, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 16, 2010.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on February 23, 2010. 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 an internationally recognized pharmaceutical company. The Complainant's mark VALIUM is protected as a trademark for a pharmaceutical psychotherapeutic agent in a multitude of countries worldwide. The Respondent has registered several domain names bearing the trademark VALIUM. The disputed domain names resolve to websites providing links purportedly offering for sale a wide range of pharmaceutical products. The VALIUM mark was registered with the Bureaux Internationaux Réunis pour la Protection de la Proprieté Intellectuelle (the predecessor of the World Intellectual Property Organization (WIPO)) on December 20, 1961, with a priority date of October 20, 1961.
The mark VALIUM designates a psychotherapeutic agent, namely, a pharmaceutical product indicated for the treatment and prevention of anxiety. The Complainant's mark VALIUM has been extensively promoted, without limitation, in print advertisement in medical journals, promotional materials, packaging, medical informational materials, television advertising, and direct mailings. 5. Parties' Contentions A. Complainant
The Complainant contends that its trademark VALIUM is well-known and notorious, and that it holds registrations in well over one hundred countries on a worldwide basis.
The Complainant contends further that the disputed domain names registered by the Respondent are confusingly similar to the Complainant's trademark in so far as the disputed domain names incorporates the Complainant's trademark in its entirety and adds several generic terms, figures and hyphens. The Complainant asserts that the mere addition of these generic terms does not sufficiently distinguish the resulting name from its trademark.
The Complainant submits that since its trademark is so well-known and notorious worldwide, the notoriety will increase the likelihood of confusion, therefore the disputed domain names are confusingly similar to its trademark.
The Complainant contends further that its use and registration of the trademark, VALIUM, predates the Respondent's registration of the disputed domain names.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain names, as the Respondent has not been granted any license, permission, authorization or consent to use its trademark, or to register them as domain names. In further support of this contention, the Complainant submits that the Respondent is using the disputed domain names for commercial gain with the purpose of capitalizing on the worldwide fame of the Complainant's trademark, more so, since the Respondent's websites direct Internet users to webpages offering and selling Complainant's products. Accordingly, the Complainant refers to the decision in Hoffmann-La Roche Inc. v. #1 Viagra Propecia Xenical & More Online Pharmacy,WIPO Case No. D2003-0793, to argue that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names under Policy paragraph 4(c)(iii). In the Complainant's view, the Respondent's use is manifestly commercial: it sells pharmaceuticals on the website associated with the disputed domain names.
The Complainant argues that the Respondent's only reason in registering and using the disputed domain names is to benefit from the reputation of the trademark VALIUM and illegitimately trade on its fame for commercial gain and profit.
Complainant contends that the Respondent registered and is using the disputed domain names in bad faith in violation of the Policy paragraph 4(a)(iii). Complainant refers to the decision in Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784, to argue that bad faith is established when the Respondent is using the disputed domain names as a forwarding address to a for-profit online pharmacy. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
According to paragraph 15(a) of the Rules the Panel shall decide a complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
1) that the disputed domain names registered by the Respondent are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,
2) that the Respondent has no legitimate interests in respects of the disputed domain names; and
3) the disputed domain names have been registered and used in bad faith. 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 clearly established prior rights in the mark VALIUM by appending evidence of its International Registration. The trademark VALIUM is registered for products in international classes 1, 3 and 5 (namely “medicines, chemical products for medical and sanitary use”) and is used for a sedative and anxiolytic drug.
The second requirement is that the domain names are identical or confusingly similar to the mark.
The disputed domain names are all confusingly similar to the Complainant's trademarks and consumers are reasonably likely to be misled into believing that these disputed domain names are associated with the Complainant's names, products, services and ultimately, achievements.
The disputed domain names make little effort to conceal or mask the incorporation of the well-known VALIUM mark. The Respondent's registration consists of nothing more than the Complainant's trademarks with the adjunction of generic words such as “buy”, “acheter” (meaning “to buy” in French), “online” and the gTLDs “.info”. The disputed domain names also contain geographic references like “france”, “australia”, “uk” and “italia”.
The use of such descriptive terms does not affect the likelihood of confusion (see e.g. F.Hoffman-La Roche AG v. Alexandr Ulyanov, Private Person, WIPO Case No. D2009-1590; F.Hoffman-La Roche AG v. Whois Protected,WIPO Case No. D2009-1569; F.Hoffman-La Roche AG v. PrivacyP, Domain Admin and Mark Sergijenko,WIPO Case No. D2007-1854; Aventis, Aventis Pharma SA. v. VASHA Dukes,WIPO Case No. D2004-0276 (holding that a domain name is confusingly similar to a mark where a common descriptive term has been added to the mark as part of the domain name). Descriptive words, such as in this case “buy” do not detract from the confusing similarity between the Complainant's trademark and the disputed domain names (See Sanofi-aventis v. Mircea Taralunga, WIPO Case No. D2008-0460 - and ).
The Panel notes additionally that in this Panel's view the consequences of confusing similarity should be considered with even greater care since the products designated by the Complainant's mark are pharmaceuticals. Therefore, as is relevant to the below issue of bad faith, the likelihood of confusion could eventually lead to the sale of harmful or inappropriate products (See F. Hoffmann-La Roche AG v. PrivacyP/Catch4 Technologies,WIPO Case No. D2009-1721). B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists the ways that a respondent may demonstrate rights or a legitimate interest in a domain name:
(i) before any notice of the dispute, respondent's use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) respondent (as an individual, business or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) 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 Policy places the burden on a complainant to establish the absence of a respondent's rights or legitimate interest in the disputed domain name. Because of the inherent difficulties in proving a negative, the consensus view is that the complainant need only put forward a prima facie case that the respondent lacks rights or legitimate interests. The evidential burden then shifts to the respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc v. Ringside Collectibles,WIPO Case No. D2000-1306; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.1).
In the present case the Complainant as explained above has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain names and the Respondent has failed to assert any such rights. (See 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 disputed domain names. The only evidence in this connection is that provided in the Complaint, and that which is self-evident from the websites to which the disputed domain names refer.
It is apparent from the evidence that all the websites are used by the Respondent to run an online pharmacy selling the pharmaceutical product Valium. This finding of the Panel is confirmed by the following introductory text on each of the disputed domain names:
“www.”
“en ligne pharmacie sans prescription. valium à vendre” (meaning “online pharmacy without prescription. Sale of valium” in French)
“www.”
“WITHOUT PRESCRIPTION VALIUM FOR SALE IN AUSTRALIA. PURCHASE ORDER NOW!”.
“www.”
“Buy Valium Online in United Kingdom (UK)”
“www.”
“COMPRA VALIUM ITALIA SENZA RICETTA. Comp[r]are Valium. Acquista Generico Valium.” (meaning “Buy Italin Valium without prescription. Buy Valium. Acquire a generic of Valium” in Italian)
“www.”
“WITHOUT PRESCRIPTION. VALIUM ORDER, PURCHASE VALIUM ONLINE FROM CANADIAN PHARMACY.”
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 commonly 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 it would have in the disputed domain names; 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 names as defined below, that the Respondent has no rights or legitimate interests in respect of the disputed domain names (See F. Hoffmann-La Roche AG v. TMNET, Anton Gorodov,WIPO Case No. D2008-0995).
For all these reasons, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of a domain name in “bad faith”:
(i) circumstances indicating that respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) that respondent has 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 respondent has engaged in a pattern of such conduct; or
(iii) that respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent's website or other on-line location, by creating a likelihood of confusion with complainant's mark as to the source, sponsorship, affiliation, or endorsement of respondent's website or location or of a product or service on respondent's website or location.
The trademark VALIUM is quite well-known in the field of pharmaceutical products (See F. Hoffmann-la Roche AG v. Popo,WIPO Case No. D2008-0423; F. Hoffmann-La Roche AG v. TMNET, Anton Gorodov, supra; F. Hoffmann-La Roche AG v. DNS Administrator/Turvill Consultants Ltd-RD,WIPO Case No. D2006-0047; F. Hoffmann-La Roche AG v. George Stiegman,WIPO Case No. D2008-1572).
Therefore, the Respondent is most likely to have known of the Complainant, its products and trademarks prior to registering the disputed domain names. Also the Respondent registered the disputed domain names almost half a century after Complainant registered its trademarks. In view of the fame of the Complainant's trademark, there is little doubt in this Panel's mind that the Respondent was aware of the trademark VALIUM prior to registering the disputed domain names. This finding of the Panel is also evidenced by the fact that there could be no other reason for the Respondent's registration of the disputed domain names than to use them to direct Internet traffic to the Respondent's online pharmacy (See F. Hoffmann-La Roche AG v. TMNET, Anton Gorodov, supra).
In line with the opinions of previous panels (See also F. Hoffmann-La Roche AG v. TMNET, Anton Gorodov, supra), it seems indeed that the Respondent has, by using the Complainant's trademarks in the disputed domain names, diverted Internet users to an online 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 online 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 resulting misdirection of Internet traffic is independently sufficient to establish bad faith (See 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 an internationally well-known mark in the field of pharmaceuticals (See F. Hoffmann-la Roche AG v. Popo, supra; F. Hoffmann-La Roche AG v. TMNET, Anton Gorodov, supra; F. Hoffmann-La Roche AG v. DNS Administrator/Turvill Consultants Ltd-RD, supra);
- The Respondent is using the disputed domain names as a forwarding address to a for-profit online pharmacy;
- At this online pharmacy orders can be placed by the public to buy VALIUM. This is clearly an activity commercially competing with the Complainant's own established sales channels for its product Valium – a classic example of bad faith use of domain names to lure web visitors using the goodwill built up in the Complainant's mark for the 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 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 the Complainant's trademarks at the time it registered the disputed domain names.
Accordingly, and because the Respondent has also used the disputed domain names in bad faith to attract Internet users to an online pharmacy, the Panel finds that the Complainant has satisfied its burden of proving that the 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 names , , , and be transferred to the Complainant.
Pablo A. Palazzi
Sole Panelist
Dated: March 9, 2010.
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