The Complainant is Roche Products Inc. of Panama represented by Lathrop & Gage LLP of United States of America.
The Respondent is Dion Rodriguez of New York, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Center of Ukrainian Internet Names (UKRNAMES). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 13, 2010. On July 13, 2010, the Center transmitted by email to Center of Ukrainian Internet Names (UKRNAMES) a request for registrar verification in connection with the disputed domain name. On July 16, 2010, Center of Ukrainian Internet Names (UKRNAMES) 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”).
On July 19, 2010, the Center notified the parties, in Russian and English, that according to the information provided by UKRNAMES, the language of the registration agreement for the disputed domain name is Russian. Pursuant to the Rules, Paragraph 11, the Center instructed the Complainant to either submit the Complaint translated into Russian, or submit a request for English to be the language of the administrative proceedings. The Center also instructed the Respondent to reply to the Complainant’s submission concerning the language of the proceedings, including – in the event that the Complainant requests English - any objection to that request. The Center further advised the Respondent that if he does not submit any response concerning the language by July 24, 2010, the Center will proceed on the basis that he has no objection to the Complainant’s request that English be the language of the proceedings.
The Complainant responded timely by filing an amendment to its Complaint in which it requested that the proceedings go forward in English. In support of this request, the Complainant argued that the Respondent had demonstrated its ability to do business in English, as evidenced by the fact that prior to being taken down, the website at the disputed domain name, as well as other sites to which it linked, appeared to use English as the default setting, did not offer Russian as an option, and listed prices in USD. In addition, the Complainant pointed to the fact that the Respondent’s address is in the United States, and suggested that the Center could appoint a panel able to communicate in both English and Russian.
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint in both Russian and English, and the proceedings commenced on July 26, 2010. In the same notification, the Center communicated its decision to accept the Complaint in English, the Response in either Russian or English, and to appoint a panel familiar with both of those languages, which would then have the authority under paragraph 11 of the Rules to make the final determination of the language of proceedings. In accordance with the Rules, paragraph 5(a), the due date for Response was August 15, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 16, 2010.
The Center appointed Natasha Lisman, who is familiar with both English and Russian, as the sole panelist in this matter on August 25, 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. Language of the Proceedings
Although, in accordance with paragraph 11(a) of the Rules, Russian, as the language of the registration agreement at issue, is presumptively the language of the proceedings, the Panel has decided to exercise its authority to determine otherwise. In view of the Complainant’s persuasive arguments in support of English, combined with the fact that the use of Russian would only benefit the Respondent, who has opted not to participate in these proceedings, the Panel has determined that English is the appropriate language for the decision. 5. Factual Background
The Complainant, together with its affiliated companies, is one of the leading manufacturers of pharmaceutical and diagnostic products in the world. Its VALIUM mark is protected as a trademark for a pharmaceutical psychotherapeutic agent in the United States, as well as a multitude of other countries. VALIUM is indicated for the treatment and prevention of anxiety and is a controlled substance in the United States. The Complainant’s extensive advertising and promotion of VALIUM have brought this product and mark fame and celebrity and resulted in hundreds of millions of dollars in sales in the United States since 1961.
The Respondent registered the disputed domain name on April 26, 2010. When visited by the Complainant, the website to which the disputed domain name resolved offered for sale a variety of medications, including VALIUM and the Complainant’s competitors’ anti-anxiety and other products. Visitors to the site were assured that they “do not need a prescription to order medicines from our online drugstore. We offer only medicines that can be prescribed from online consultations.” The site also indicated that none of the medicines offered were narcotics or addictive. In fact, in the United States, VALIUM is a controlled substance and selling it on the basis of so-called “cyber doctor” prescriptions is illegal.
In May, 2010, the Complainant sent to the Respondent by e-mail and certified mail, return receipt requested, a cease and desist letter protesting the registration of the disputed domain name as an infringement of the Complainant’s trademark rights and requesting that the Respondent transfer the disputed domain name to the Complainant. The certified mail letter was returned due to non-existent address and the e-mail was returned due to the recipient server rejecting it. 6. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to its mark VALIUM because it incorporates the entire mark and the addition of the terms “buy” and “uk” does not prevent the likelihood of confusion because they are descriptive. The Complainant further argues that the Respondent has no rights or legitimate interests in the disputed domain name because it has never been authorized or licensed to use the VALIUM mark; neither the Respondent nor its website has been commonly known by the disputed domain name; and the Respondent’s use of the disputed domain name is “purely disreputable” because it is infringing and likely to confuse purchasers, seeks to capitalize on the reputation of the Complainant’s famous trademark, and, by engaging in illegal sales practices, threatens to damage the Complainant’s reputation and cause harm to the consumers. Based on the same grounds, the Complainant asserts that the Respondent has not used the disputed domain name for a bona fide offering of goods and services, nor for any legitimate noncommercial or fair purpose unmotivated by commercial gain, but, rather, registered and is using the domain name in bad faith. As further evidence of the Respondent’s bad faith, the Complainant cites the fact that the contact information the Respondent provided with his registration proved to be false. B. Respondent
The Respondent neither replied to the Complainant’s contentions nor submitted his own. 7. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, to justify the transfer of the domain name, the Complainant must prove each of the following elements:
(i) That the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) That Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) That Respondent has registered and is using the domain name in bad faith.
Under paragraph 15(a) of the Rules, the Panel must “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.” A. Identical or Confusingly Similar
The Panel finds that the Complainant indisputably has rights in the trademark VALIUM and that the disputed domain name is confusingly similar to that trademark. There are no circumstances in this case to warrant an exception to the long established general principle that “likelihood of confusion is not avoided . . . merely by adding or deleting . . . matter that is descriptive or suggestive of the named goods or services.” Institut Straumann AG v. Core-Vent Corporation, WIPO Case No. D2000-0404. Here, the addition of the prefix “buy” and the suffix “uk” to the Complainant’s mark “do[es] nothing to detract from and indeed [is] likely to reinforce the strong association” with the Complainant and its VALIUM mark. America Online, Inc. v. Anson Chan,WIPO Case No. D2001-0004. Indeed, this case is virtually indistinguishable from Hoffmann-La Roche Inc. v. Aneko Bohner,WIPO Case No. D2006-0629, where the domain name was found confusingly similar to the mark Accutane.
Accordingly, the Panel finds that paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
As in any case in which a respondent fails to submit any response to a complaint, the determination of the existence of the respondent’s rights or legitimate interests in respect of the disputed domain name is rendered difficult. However, the Complainant is only required to make out a prima facie case that the Respondent lacks rights or legitimate interests.
Because it is the Respondent who has exclusive possession of concrete evidence of its rights or interests in its domain name, the absence of such evidence in the record is due to the Respondent’s election to remain silent in the face of the Complainant’s allegations both in its cease and desist letter and the Complaint in the present proceeding. By operation of a common sense evidentiary principle, the Panel finds that the Respondent’s failure to counter the allegations of the cease and desist letter amounts to adoptive admission of the allegations. Furthermore, paragraph 4(c) of the Policy and paragraph 5 of the Rules emphasize to respondents the importance of demonstrating their rights and interests in a disputed domain name and provide helpful guidance as to several alternative ways in which the requisite demonstration can be made. Under these circumstances, it is only fair to shift the evidentiary burden to the Respondent, and/or draw a negative inference from its failure affirmatively to contest the Complainant’s allegations. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110; Sony Kabushiki Kaisha v. ,WIPO Case No. D2000-1074; The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064; Berlitz Investment Corp. v. Stefan Tinculescu,WIPO Case No. D2003-0465.
On these grounds, the Panel concludes that the Respondent lacks any rights or legitimate interests in the disputed domain name and deems paragraph 4(a)(ii) to have been satisfied. C. Registered and Used in Bad Faith
The Panel finds that the evidence provided by the Complainant as to the contents of the website to which the disputed domain name resolved fully supports its contentions that the Respondent registered and used the domain name for the bad faith purposes of capitalizing on the Complainant’s well-known mark for commercial gain and engaging in deceptive commercial activity unfair to competitors and dangerous to consumers. The Panel also agrees that providing false contact information in registering the domain name evidences bad faith.
Accordingly, the Panel finds that Policy paragraph 4(a)(iii) is satisfied. 8. 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.
Natasha Lisman
Sole Panelist
Dated: September 17, 2010
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