The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, internally represented.
The Respondent is Bo Chu of Jinan, People’s Republic of China. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 24, 2010. On August 24, 2010, the Center transmitted by email to GoD, Inc a request for registrar verification in connection with the disputed domain name. On August 25, 2010, the Registrar 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 September 3, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 23, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 29, 2010.
The Center appointed Lone Prehn as the sole panelist in this matter on October 7, 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. ZR250784, 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. Domain name was registered to the Respondent on May 4, 2010. 5. Parties’ Contentions A. Complainant
The Complainant states that the disputed domain name is confusingly similar to the Complainant's trademark VALIUM. The addition of the term “blog” 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 predates the Respondent's registration of the disputed domain name.
The Complainant further contends that it has exclusive rights to VALIUM and that no licence or permission or authorization respectively consent has been granted to the Respondent to use VALIUM in the disputed domain name. Furthermore, it is obvious that the Respondent uses the disputed 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 rights or legitimate interests in such a domain name.
In relation to bad faith, the Complainant states that the disputed domain name was registered in bad faith since at the time of the registration, i.e., on May 4, 2010, the Respondent had, no doubt, knowledge of the Complainant's well-known trademark VALIUM.
Moreover the disputed domain name is being used in bad faith because the Respondent intentionally attempts (for commercial purpose) to attract Internet users to the Respondent's website, by creating a likelihood of confusion with the Complainant's well-known mark as to the source, affiliation and endorsement of the Respondent's website or of the products or services posted on or linked to the Respondent's website.
The Complainant also argues that the 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 the Complainant. As a result, the Respondent may generate unjustified revenues and therefore is illegitimately capitalizing on the VALIUM trademark fame.
The Complainant concludes that the disputed domain name is confusingly similar to its trademark, that the Respondent has no rights or legitimate interests in respect to the domain name and that the 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 disputed domain name incorporates fully the Complainant's VALIUM trademark, succeeded by the word “blog”. The distinctive part of the domain name is “valium” which is identical to the Complainant's trademark. The addition of the generic word “blog” does not dispel the confusing similarity with the Complainant's trademark. Thus, this Panel is satisfied that the disputed domain name is confusingly similar to the Complainant's trademark. B. Rights or Legitimate Interests
Indeed, the Respondent has failed to provide any evidence or circumstances required to establish that it has rights or legitimate interests in the disputed domain name. The Complainant submits that the Respondent does not possess any licence, authority or consent from the Complainant permitting the use of the trademark VALIUM or in a domain name. The Complainant asserts that the Respondent is using the disputed domain name for illegitimate commercial or financial gain in so far as the Respondent's website is a search engine with sponsored links advertising links to websites promoting or offering products and services of third parties.
The Panel finds the Complainant's reference to the case of Sigikid H. Scharrer & Koch GmBH & Co KG, MyBear Marketing-und Vertriebs GmbH, Mr. Thomas Dufner v. BestinfoWIPO Case No. D2004-0990 relevant and to the point, in this regard, in so far, as that case describes the diversion of Internet traffic to other unrelated websites as tantamount to not using the domain name in connection with a bona fide offering of goods and services.
The Panel is satisfied that these are well founded assertions which the Respondent has failed to deny or refute. The Panel therefore concludes, after considering a screenshot of the Respondent's website as shown in Annex 5 of the Complaint, that the Respondent has failed to establish: (i) before notice of the dispute it was preparing the disputed domain name for use in connection with a bona fide offering of goods and services in consonance with paragraph 4(c)(i) of the policy; (ii) it had been commonly known by the disputed domain name in consonance with paragraph 4(c)(ii) of the Policy; and or (iii) it had made and continued to make a legitimate noncommercial or fair use of the disputed domain name in consonance with paragraph 4(c)(iii) of the Policy.
In the circumstances, the Panel finds that the Complainant has satisfied the requirement that the Respondent has no rights or legitimate interests in the disputed domain name in accordance with Paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel finds that the Respondent registered and is using the disputed domain name in bad faith. The Panel is satisfied that the Respondent must have known or ought to have known of the well established trademark, name and product VALIUM owned by the Complainant on May 4, 2010 when it obtained registration of the disputed domain name.
The Panel has further taken account of the screenshot of the Respondent's website clearly indicating that there are sponsored links advertising other websites and promoting or offering other products and services of third parties.
The Panel is satisfied that the Respondent registered the disputed domain name with the intention of generating unjustified revenues from each click-through online consumer, thereby illegitimately exploiting the reputation of the Complainant's trademark and name for commercial gain. The Panel places reliance on the fact that the Complainant's allegation in this regard remains unchallenged by the Respondent. The Complainant has correctly referred to the decision of L'Oreal Biotherm, Lancome Parfums et Beaute & Cie v. Unasi Inc.,WIPO Case No. D2005-0623, which confirms the contention that the diversion of Internet traffic by exploiting the reputation of a complainant's trademark for financial gain through click-through commissions is a common example of use in bad faith.
The Panel further refers to the decision in F. Hoffmann-La Roche AG v. PrivacyP. Domain Admin and Mark Sergijenko, WIPO Case No. D2007-1854 to hold that the Respondent must have had, not only the Complainant's trademark in mind, when the disputed domain name was registered, but also the confusion that would no doubt follow in the minds of Internet users and online consumers to divert them to its website for illegitimate financial gain. The Panel therefore finds that the Complainant has also established the finding of bad faith use and registration within the ambit of paragraph 4(b) (iv) 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.
Lone Prehn
Sole Panelist
Dated: October 14, 2010
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