WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION F. Hoffmann-La Roche AG v. Sukin Sin Case No. D2010-0558 1. The Parties
The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally.
The Respondent is Sukin Sin of Vladivostok, Russian Federation. 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 April 14, 2010. On April 14, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On April 14, 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 April 19, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 9, 2010. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on May 10, 2010.
The Center appointed Ladislav Jakl as the sole panelist in this matter on May 31, 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 together with its affiliated companies one of the world's leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics and having global operations in more than 100 countries.
The Complainant's mark VALIUM is protected as trademark in a multitude of countries worldwide. As an example reference is made to the International Registration No. R250784, certificate of which is submitted in copy as Annex 3 of the Complaint. For the mark VALIUM the Complainant holds registrations in over hundred countries on a world-wide basis. Priority date for the mark VALIUM is October 20, 1961.
The mark VALIUM designates a sedative and anxiolytic drug belonging to the benzodiazepine family, which enabled the Complainant to build a world-wide reputation in psychotropic medications.
The Respondent registered domain name on February 12, 2010. 5. Parties' Contentions A. Complainant
The Complainant states that disputed domain name of the Respondent is confusingly similar to the Complainant's trademark VALIUM seeing that it incorporates this trademark in its entirety. The addition of the terms “no prescription needed” does not sufficiently distinguish the disputed domain name from the trademark VALIUM.
Furthermore, the Complainant states that the trademark VALIUM is well-known and notorious and that this notoriety will increase the likelihood of confusion. The Complainant's use and registration of the trademark VALIUM do predate the Respondent's registration of the disputed domain name. Therefore the Complainant contends that the disputed domain name is confusingly similar to the trademark of the Complainant.
As to legitimate interests, in respect of the disputed domain name, the Complainant contends that he has exclusive rights for VALIUM and no licence /permission/ authorization respectively consent was granted to use VALIUM in the disputed domain name of the Respondent. Furthermore, it is obvious that the Respondent uses this domain name for commercial gain and with the purpose of capitalizing on the fame of the Complainant's trademark VALIUM. The disputed domain name clearly alludes to the Complainant. The Complainant argues that there is no reason why the Respondent should have any right or interest in such a domain name.
As to bad faith, the Complainant says that the disputed domain name was registered in bad faith since at the time of the registration, i.e., on February 12, 2010, the Respondent had, no doubt, knowledge of the Complainant's well-known product/mark VALIUM.
Moreover the domain is being used in bad faith. This is obvious since when viewing the website from the Respondent one realizes that he 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.
The Complainant also argues that Respondent, by using the disputed domain name, is intentionally misleading the consumers and confusing them by making them believe that the websites behind those links are associated or recommended by Complainant. As a result, Respondent may generate unjustified revenues and therefore is illegitimately capitalizing on the VALIUM trademark fame.
The Complainant concludes that the disputed domain name is identical or confusingly similar to its trademark, that the Respondent has no rights or legitimate interests in respect to the domain name and that this domain name was registered and is being used in bad faith.
In accordance with paragraph 4(b)(i) of the Policy, the Complainant requests the Panel appointed in these administrative proceedings to issue a decision that the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all three elements are present lies with the Complainant. A. Identical or Confusingly Similar
The Complainant states that disputed domain name of the Respondent is confusingly similar to the Complainant's trademark VALIUM seeing that it incorporates this trademark in its entirety and that the addition of the terms “no prescription needed” does not sufficiently distinguish the disputed domain name from the trademark VALIUM. Therefore the Complainant contends that the disputed domain name is confusingly similar to the trademark of the Complainant.
The Panel goes out from the principle that the test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone: Wal-Mart Stores, Inc. v. Traffic Yoon, WIPO Case No. D2006-0812.
There is no doubt that the disputed domain name incorporates the trademark VALIUM as a part of it.
Non-distinctive additions to a trademark as well as the inclusion of the gTLD suffix “.com” do not avoid confusing similarity of domain names and trademarks (AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758; Accor v. Lee Dong Youn, WIPO Case No. D2008-0705; and Sanofi-aventis v. Brad Hedlund,WIPO Case No. D2007-1310).
The other words „noprescriptionneeded“ are common, generic terms that does not give any distinctiveness to the diputed domain name. Mere addition of a descriptive term by way of prefix to a complainant's mark does not adequately distinguish the disputed domain name from the mark pursuant to the Policy, paragraph 4(a)(i). See Wal-Mart Stores, Inc. v. Gerry Senker,WIPO Case No. D2006-0211; HSBCHoldings Plc v. David H. Gold,WIPO Case No. D2001-0343; F.Hoffmann-La Roche AG v. Whois Defender, Inc.,WIPO Case No. D2006-0717.
Accordingly, by registering the disputed domain name, the Respondent created a likelihood of confusion with the Complainant's trademarks. Moreover, it is likely that this domain name could mislead Internet users in thinking this is in some way associated with the Complainant.
For all the above cited reasons, the Panel concludes that disputed domain name is identical or confusingly similar to the Complainant's trademarks in which the Complainant has rights, and therefore the condition of paragraph 4(a)(i) of the Policy is fulfilled. B. Rights or Legitimate Interests
The Complainant contends that he has exclusive rights for VALIUM and no licence /permission/ authorization respectively consent was granted to use VALIUM in the disputed domain name of the Respondent. Furthermore, it is obvious that the Respondent uses this domain name for commercial gain and with the purpose of capitalizing on the fame of the Complainant's trademark VALIUM. The domain name in question clearly alludes to the Complainant. The Complainant argues that there is no reason why the Respondent should have any right or interest in such a domain name.
Based on the Complaint, the Panel finds that the Respondent is not affiliated with the Complainant in any way, nor has the Respondent been authorized by the Complainant to register and use the Complainant's trademarks or to seek registration of any domain name incorporating said trademarks. The Respondent never used the words “valium” in any way before the Complainant started its business.
The Respondent is not a licensee of the Complainant and did not obtain any authorization to use the trademarks of the Complainant. The Panel notes that the submitted use of the disputed domain name is to display a parking-site on which click-through-advertisements appear. There is a consensus view by previous UDRP panels that such use cannot be considered a bona fide offering of goods or services, or a noncommercial or fair use in circumstances as the ones that are present in this case (Bridgestone Corporation v. Horoshiy, Inc., WIPO Case No. D2004-0795; Deutsche Telekom AG v. Dong Wang,WIPO Case No. D2005-0819).
For the above cited reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that the requirements of paragraph 4(a)(ii) of the Policy are therefore fulfilled. C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) sets out certain circumstances which, in particular but without limitation, are to be construed as evidence of both. These include, inter alia, paragraphs 4(b)(ii), (iii) and (iv):
(ii) the Respondent has registered the disputed 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 the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to source, sponsorship, affiliation, or endorsement of his website or of a product or service on that website or location.
The Complainant has submitted evidence, unchallenged by the Respondent, that it is obvious that the Respondent knew or must have known of the Complainant's trademarks VALIUM at the time he registered the disputed domain name. Due to the fact that the disputed domain name directs Internet users to a web page relating to the Complainant's business and history, the Respondent cannot have ignored the Complainant's business reputation at the time of registration of the domain name.
The disputed domain name used by the Respondent suggests that he is aware of the Complainant and that the Respondent's use of the disputed domain name will cause consumers to believe that the domain name is affiliated with or owned by the Complainant.
The Panel further finds that by using the Complainant's trademark to draw Internet users to a site offering what appears to be competing or at least related goods, the Respondent is attempting to divert customers from the Complainant and thus to disrupt the Complainant's business. Such conduct has been found to signal bad faith in other cases such as Six Continents Hotels, Inc. v. Ramada Inn,WIPO Case No. D2003-0658.
For the above cited reasons the Panel finds that the disputed domain name was registered and used in bad faith.
Considering all the facts and evidence, the Panel therefore finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case. 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.
Ladislav Jakl
Sole Panelist
Dated: June 10, 2010
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