WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION F. Hoffmann-La Roche AG v. Aiden Aibo Case No. D2010-0364 1. The Parties
The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally.
The Respondent is Aiden Aibo of Sydney, Australia. 2. The Domain Name and Registrar
The disputed domain name (“Disputed Domain Name”) is registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 10, 2010. On March 11, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On March 11, 2010, 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 March 16, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was April 5, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 6, 2010.
The Center appointed Michael A. Albert as the sole panelist in this matter on April 14, 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, together with its affiliated companies, is one of the world's leading researchers and developers of pharmaceutical and diagnostic products, having global operations in more than 100 countries.
The Complainant holds several international trademark registrations for the VALIUM mark (“the Mark”) for a sedative and anxiolytic drug belonging to the benzodiazepine family. For example, on December 20, 2001, the Complainant registered the Mark under the Madrid System for the International Registration of Marks as International Registration No. 250,784, which was designated in over 30 countries and had a priority date of October 20, 1961.
The WhoIs record indicates that the Respondent registered the Disputed Domain Name on February 23, 2010. The Disputed Domain Name, , incorporates the entire VALIUM mark of the Complainant. 5. Parties' Contentions A. Complainant
The Complainant contends that it holds registrations for the Mark in over 100 countries. The Complainant further contends that the drug produced under the VALIUM mark enabled the Complainant to build a world-wide reputation in psychotropic medications.
The Complainant further contends that the Disputed Domain Name is confusingly similar to the Mark because it incorporates the Mark in its entirety, and that the addition of “australia” is merely descriptive, and fails to distinguish the Disputed Domain Name from the Mark. The Complainant further contends that the Mark is well-known and notorious, and that its notoriety will increase the likelihood of confusion.
The Complainant further contends that the Disputed Domain Name clearly alludes to the Complainant, that the Complainant never granted the Respondent permission to use the Mark in the Disputed Domain Name, and that the Respondent has no right or interest in the Disputed Domain Name.
The Complainant further contends that the Respondent uses the Disputed Domain Name for commercial gain and with the purpose of capitalizing on the fame of the Complainant's Mark. The Complainant further contends that Internet users visiting the Disputed Domain Name are redirected to an online pharmacy.
The Complainant further contends that the Respondent surely had knowledge of the Mark at the time the Respondent registered the Disputed Domain Name in 2010 because the VALIUM mark is well-known, and therefore contends that the registration was performed in bad faith.
The Complainant further contends that the Respondent is also using the Disputed Domain Name in bad faith because the website to which the Disputed Domain Name resolves reflects an intentional attempt to attract users to the Respondent's website for a commercial purpose by creating a likelihood of confusion with the Mark. Specifically, the Complainant contends that the Respondent is intentionally misleading consumers and confusing them by making them believe that the websites associated with and linked to the Disputed Domain Name are associated with or recommended by the Complainant. The Complainant further contends that the Respondent's use of the Disputed Domain Name may generate unjustified revenues, and is therefore capitalizing on the Mark's fame. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “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.”
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a Domain Name should be cancelled or transferred:
(i) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
The Respondent provided no Response, and the deadline for so doing expired on April 5, 2010. Accordingly, the Respondent is in default. Given the Respondent's default, the Panel can infer that the Complainant's allegations are true where appropriate to do so. Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. Nonetheless, the Complainant retains the burden of proving the three requisite elements of paragraph 4(a). A. Identical or Confusingly Similar
The Complainant has provided sufficient evidence showing that it is the owner of the VALIUM mark. The Complainant does not have a trademark registration of the phrase . The Disputed Domain Name and the Complainant's trademark are not identical. Therefore, the issue is whether the Disputed Domain Name and the Complainant's trademark are confusingly similar.
The Disputed Domain Name combines three elements: (1) the Complainant's VALIUM mark; (2) the suffix “australia”; and (3) the suffix “.info.” The relevant comparison to be made is with the second-level portion of the domain name only (i.e., “valium-australia”), as it is well-established that the top-level domain name (i.e., “.info”) should be disregarded for this purpose. Playboy Enterprises International, Inc. v. John Taxiarchos,WIPO Case No. D2006-0561.
Prior WIPO panels have recognized that the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to the Complainant's registered mark. AT&T Corp. v. William Gormally,WIPO Case No. D2005-0758 (finding confusingly similar to ATT); Quixtar Investments, Inc. v. Dennis Hoffman,WIPO Case No. D2000-0253 (finding legally identical to QUIXTAR).
Moreover, the addition of the term “australia” as a suffix to the VALIUM mark does not mitigate the confusing similarity between the Disputed Domain Name and the Complainant's Mark. The suffix “australia” is geographically descriptive, especially since the Complainant, according to its affiliate's website, “”, distributes diazepam in Australia under the VALIUM mark. Consequently, the addition of this suffix does not negate the confusing similarity between the Mark and the Disputed Domain Name. Dell Computer Corporation .v. MTO C.A. and Diabetes Education Long Life,WIPO Case No. D2002-0363 (finding confusingly similar to DELL). Telstra Corporation Limited v. Ozurls,WIPO Case No. D2001-0046 (finding confusingly similar to TELSTRA).
For the all of the foregoing reasons, this Panel finds that the Disputed Domain Name is confusingly similar to the Complainant's VALIUM mark, in which the Complainant has established rights. Therefore, the Panel finds that the Complainant has proven the first element of the Policy. B. Rights or Legitimate Interests
Under the Policy, paragraph 4(c), rights to and legitimate interests in a domain name may be demonstrated by showing that:
(i) before any notice of this dispute, Respondent used, or demonstrably prepared to use, the domain names or a name corresponding to the domain names in connection with a bona fide offering of goods or services;
(ii) Respondent has been commonly known by the domain names, even if no trademark or service mark rights have been acquired; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue.
The Complainant contends that the Respondent has no right to use the VALIUM mark. The Complainant has provided evidence that the Respondent is using the Disputed Domain Name to redirect Internet users to an online pharmacy. Prior panels have found that such offerings are not a bona fide offering of goods or services within the meaning of paragraph 4(c)(i). Pfizer Inc. v. jg a/k/a Josh Green,WIPO Case No. D2004-0784 (finding no bona fide use where “” redirected to online pharmacy).
Moreover, the Complainant has alleged, and the Respondent has not denied, that the Respondent is not commonly known by the Disputed Domain Name and is misleading customers for commercial gain.
For all of the foregoing reasons, this Panel finds that the Complainant has proven that the Respondent lacks rights to, or legitimate interests in, the Disputed Domain Name. Therefore, the Panel is convinced that the Complainant has proven the second element of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances of the registration and use of a domain name in bad faith. One of the illustrations of bad faith, Policy paragraph 4(b)(iv), occurs when the Respondent attempts to attract, for commercial gain, Internet users to the Respondent's website or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or of a product or service on the Respondent's website.
The Panel finds compelling circumstantial evidence that the Respondent likely knew of the Complainant's Mark when it registered the Disputed Domain Name. The VALIUM mark appears to have been used in dozens of countries for several decades prior to the Respondent's registration of the Disputed Domain Name. Because the term “valium” is not descriptive of anything and has no valid use other than in connection with the Complainant's Mark, it is very unlikely that the Respondent would have registered a domain name incorporating the Mark without knowledge of the Mark. Based on the foregoing circumstantial evidence, the Panel finds that the Respondent registered the Disputed Domain Name in bad faith. See Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415 (“It defies common sense to believe that Respondent coincidentally selected these precise domain names without any knowledge of Complainant and its PROFORCE Trademarks.”).
The Panel also finds that the Respondent used the Disputed Domain Name in bad faith. It is well-established that using a domain name which incorporates a trademark to offer the products of competitors of the trademark owner is likely to cause confusion among consumers as to the source of products or to confusingly suggest sponsorship by the trademark owner. See e.g., Six Continent Hotels, Inc. v. The Omnicorp,WIPO Case No. D2005-1249; Exel Oyj v. KH Trading, Inc.,WIPO Case No. D2004-0433.
Here, the Respondent appears to have intended to use the Disputed Domain Name to promote both the Complainant's Valium products as well as competing products by redirecting would-be buyers to the online pharmacy, at “”, which offers these products for sale.
For all of the foregoing reasons, this Panel finds that the Complainant has proven that the Respondent registered and is using the Disputed Domain Name in bad faith. Therefore, the Panel is convinced that the Complainant has proven the third and final element of the Policy. 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.
Michael A. Albert
Sole Panelist
Dated: April 28, 2010
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