WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION F. Hoffmann-La Roche AG v. Sergii Case No. D2010-0728 1. The Parties
The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally.
The Respondent is Sergii of Podvirne, Ukraine. 2. The Domain Name and Registrar
The disputed domain names and are registered with Dynadot, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 6, 2010. On May 6, 2010, the Center transmitted by email to Dynadot, LLC a request for registrar verification in connection with the disputed domain name(s). On May 6, 2010, Dynadot, LLC 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 May 10, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 30, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 31, 2010.
The Center appointed Ashwinie Kumar Bansal as the sole panelist in this matter on June 3, 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 and its affiliated companies are a health group involved in the field of pharmaceuticals and diagnostics in many countries around the world. The Complainant has the trademark VALIUM, registered vide Madrid System international registration no. 250784, dated December 20, 1961. The priority date for the trademark VALIUM is October 20, 1961. The Complainant has trademark registrations in many countries for this mark. VALIUM designates a sedative and anxiolytic drug belonging to the benzodiazepine family. The Complainant also holds the trademark ROCHE, registered vide Madrid System international registration no. 346223, dated June 19, 1968.
The Respondent has registered the disputed domain names and on April 1, 2010 as per WhoIs records and confirmed by the Registrar. 5. Parties' Contentions A. Complainant
The Complainant has trademark rights for VALIUM and ROCHE, and no licence/permission/authorization or consent was granted to use VALIUM and ROCHE in the disputed domain names.
The Complainant submits that the disputed domain names of the Respondent and are confusingly similar to the Complainant's marks VALIUM and ROCHE. The disputed domain name contains the entire VALIUM trademark of the Complainant. The other disputed domain name contains two marks, VALIUM and ROCHE, of the Complainant. The addition of the descriptive terms “buy”, “online”, “without a prescription” and “cheap” does not sufficiently distinguish the disputed domain names from the trademarks. Addition of trademarks causes confusion and Internet users are misled that the webpage involved originates from the Complainant. The Complainant's use and registration of the marks predate the Respondent's registration of the disputed domain names.
The Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent uses the disputed domain names for commercial gain and with the purpose of capitalizing on the fame of the Complainant's trademarks VALIUM and ROCHE. 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 marks as to the source, affiliation and endorsement of the Respondent's websites or of the products linked to the Respondent's website.
Finally, the Complainant submits that the disputed domain names were registered and are being used in bad faith by the Respondent. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Paragraph 15(a) of the Rules instructs the Panel as to the principles to use in rendering its decision: “A Panel shall 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 sets out the three elements which must be present for the proceeding to be brought against the Respondent, and which the Complainant must prove to obtain a remedy. It provides as follows:
You [the respondent] are required to submit to a mandatory administrative proceeding in the event that a third party (a “complainant”) asserts to the applicable Provider, in compliance with the Rules of Procedure, that
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.
In the administrative proceeding, the complainant must prove that each of these three elements are present.
The Complainant has established that it has registered trademark rights to VALIUM and ROCHE. The disputed domain names are not identical to the trademarks owned by the Complainant. The question is therefore whether there is confusing similarity between the trademarks and the disputed domain names.
The disputed domain name wholly incorporates the Complainant's registered trademark VALIUM which establishes confusing similarity for the purpose of the Policy despite the addition of the words “buy”, “online” and “without a prescription” to the mark. The other disputed domain name wholly incorporates two trademarks, VALIUM and ROCHE, of the Complainant which establishes confusing similarity for the purpose of the Policy despite the addition of the words “buy” and “cheap” to the mark. An addition of generic terms to the marks does not eliminate the likelihood of confusion between the disputed domain names and the trademarks. The mark VALIUM is a prominent portion in the two disputed domain names and mark ROCHE in one disputed domain name.
Many panels have decided in similar circumstances that the domain name is confusingly similar to the trademark1.
By simply affixing the generic terms to the Complainant's trademarks and registering such combination of words, the Respondent did create a confusing similarity between the disputed domain names and the trademarks of the Complainant. This view is consistent with the opinion expressed in a number of domain name decisions2
The Panel concludes that the disputed domain names and are confusingly similar to the Complainant's trademarks. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent's rights or legitimate interests to the disputed domain names for the purposes of paragraph 4(a) (ii). Paragraph 4(c) reads:
When you receive a complaint, you should refer to Paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.
It is generally difficult for the complainant to prove that the respondent does not have any rights or legitimate interests in the disputed domain name, and on the other hand, it would be fairly simple for the respondent to demonstrate that it has any such rights or legitimate interests pursuant to paragraph 4(c) of the Policy. The Respondent has not filed his Response and failed to demonstrate his rights to and legitimate interests in the disputed domain names as per paragraph 4(c) of the Policy. It is sufficient for the Complainant to make a prima facie showing of its assertion in the event of the Respondent's default.
The Complainant has owned the trademarks VALIUM and ROCHE and it has used the marks for a very long time. The Complainant has not authorized or permitted the Respondent to use the trademarks.
In order to be bona fide, the offering of goods or services must meet minimum requirements including: (i) the site must accurately disclose the registrant's relationship with the trademark owner, and (ii) the respondent must use the site to sell only the trademarked goods3.
The print outs from the website of the Respondent indicate that it has used trademarks and it also offers Valium for sale on its websites. The websites also give information on description, common uses, precautions, side effects, etc. of Valium.
The websites of the Respondent do not disclose that these have no relationship with the Complainant, the owner of the trademarks VALIUM and ROCHE.
The Respondent's use of the disputed domain names cannot be considered to be in connection with a bona fide offering of goods or services.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names and . C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by the Administrative Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) is reproduced below:
For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
Each of the four circumstances in paragraph 4(b) of the Policy, if found, is an instance of “registration and use of a domain name in bad faith”. In this Panel's view, circumstances (i), (ii), and (iii) are concerned with the intention or purpose of the registration of the domain name, and circumstance (iv) is concerned with an act of use of the domain name.
The Complainant is required to prove both that the disputed domain names were registered in bad faith and that these are being used in bad faith because in paragraph 4(a)(iii) of the Policy, the provision contains the conjunction “and” rather than “or” and it refers to both the past tense (“has been registered”) and the present tense (“is being used”) hence circumstances at the time of registration and thereafter have to be considered by the Panel. The Complainant is required to prove that the registration was undertaken in bad faith and that the circumstances of the case are such that the Respondent is continuing to act in bad faith.
The Panel has considered the Complainant's assertions and evidence with regard to the Respondent's registration and use of the disputed domain names in bad faith. By not submitting the Response, the Respondent has failed to invoke any circumstances that could demonstrate that the Respondent did not register and use the disputed domain names in bad faith.
The Respondent's true purpose in registering the disputed domain names and which incorporate the Complainant's marks appears to have been to capitalize on the reputation of the well-known trademarks of the Complainant by diverting Internet users seeking the Complainant's websites to the Respondent's own website.
The Respondent, by using disputed domain names, is misleading consumers and confusing them by making them believe that the websites behind those links are associated or recommended by the Complainant.
The Respondent's websites have no legitimate business connection with the Complainant or its trademarks. The Complainant has not granted the Respondent permission or a license of any kind to use its trademarks. Such unauthorized use of the Complainant's marks by the Respondent suggests opportunistic bad faith.
The case is squarely covered by paragraph 4(b)(iv) of the Policy.
The Panel finds that the disputed domain names and have been registered and are being used by the Respondent 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 disputed domain names, and be transferred to the Complainant.
Ashwinie Kumar Bansal
Sole Panelist
Dated: June 7, 2010
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