Complainants Roche Products Inc. of Hamilton, Bermuda, Overseas Territory of Great Britain and Northern Ireland and Genentech, Inc., of San Francisco, California, United States of America, are represented by Lathrop & Gage LLP, United States of America.
Respondents are Vincent Holman of Minnesota, United States of America and Whois Privacy Services Pty. of Fortitude Valley, Australia. 2. The Domain Name and Registrar
The disputed domain name is registered with F. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 16, 2010. On November 17, 2010, the Center transmitted by email to F a request for registrar verification in connection with the disputed domain name. On November 19, 2010, F transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint.1 The Center sent an email communication to Complainants on November 19, 2010, providing the registrant and contact information disclosed by F, and inviting Complainants to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 23, 2010.
The Center verified that the Complaint, together with the amended 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 Respondents of the Complaint, and the proceedings commenced on November 25, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 15, 2010. Respondents did not submit any response. Accordingly, the Center notified Respondents’ default on December 16, 2010.
The Center appointed Jeffrey M. Samuels as the sole panelist in this matter on January 11, 2011. 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
Complainants (“Roche”) are worldwide leaders in research and development of pharmaceutical and diagnostic products. Complainant Roche Products owns via assignment a United States of America trademark registration for the mark VALIUM, which has been used since 1961 in connection with a drug indicated for the treatment and prevention of anxiety. See Complaint, Exhibit 3. Sales of VALIUM have exceeded hundreds of millions of dollars in the United States of America and the Valium products has been widely advertised and promoted in the United States of America. See Complaint, Exhibit 5. Complainants’ parent company, F. Hoffman-La Roche AG, owns the domain name . See Complaint, Exhibit 6.
The disputed domain name was registered on July 28, 2009. The domain name is used in connection with a website that offers Valium products, a generic form of Valium products, namely, diazepam, and/or other anti-anxiety and other drug products of Complainants’ competitors through links to other websites. The disputed site also uses the domain name in issue in connection with the site’s copyright notice. See Complaint, Exhibit 9.
Upon learning of the registration of the disputed domain name, Roche’s counsel, on November 3, 2010, sent an email and fax to Whois Privacy Services requesting transfer of the domain name. See Complaint, Exhibit 8. 5. Parties’ Contentions A. Complainant
Complainants contend that the disputed domain name is confusingly similar to a trademark in which Complainants have rights. Complainants assert that the addition of the descriptive terms “buy” and “pills” does not prevent the likelihood of confusion.
Complainants further argue that Respondents have no rights or legitimate interests in the disputed domain name. Complainants maintain that “valium” is a coined term and has no valid use other than in connection with the VALIUM trademark. Complainants also assert that they have not authorized Respondents to use the VALIUM mark or to incorporate the mark into any domain name or as part of a copyright notice. It is also clear, Complainants contend, that neither Respondents nor their site have been commonly known by the disputed domain name.
Complainants argue that Respondents are not making either a bona fide or a noncommercial or fair use of the disputed domain name, contending that “[t]he unauthorized appropriation of another’s trademark in domain names and the commercial use of the corresponding website cannot confer rights or legitimate interests.”
Complainants emphasize that Valium is a controlled substance and, as such, under United States of America law, may not be sold online without a prescription resulting from a visit to a doctor’s office. See Complaint, Exhibit 10.
Finally, Complainants contend that the disputed domain name was registered and is being used in bad faith. In support of such assertion, Complainants note and argue in part that: (1) “valium” is not a word; (2) the VALIUM mark is a coined famous mark that has an extremely strong worldwide reputation; (3) the only reasonable conclusion is that Respondents were aware of the VALIUM trademark and seek to divert Internet users to a website for their own commercial gain, all to the confusion of the public and detriment of Complainants, and (4) the activity conducted at the disputed site is illegal as to the controlled substance Valium or generic diazepam. B. Respondents
Respondents did not reply to the Complainants’ contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel concludes that the disputed domain name is confusingly similar to the VALIUM mark. The domain name incorporates the mark in its entirety adding only the generic or descriptive terms “buy” and “pills.”
The evidence also indicates that Complainant Roche Products has rights in the VALIUM mark. Such rights arise both from its United States of America trademark registration and its longstanding and extensive use of the mark. B. Rights or Legitimate Interests
The Panel holds that Complainants have established that Respondents do not have rights or legitimate interests in the disputed domain name. As noted above, the disputed domain name is confusingly similar to the VALIUM mark and is being used in connection with a site that facilitates the purchase by the general public of Valium and/or its generic equivalent from Complainants’ competitors. Absent a valid doctor’s prescription, such purchase is illegal under United States of America law. Under such circumstances, it may not be held that Respondents are making a bona fide use of the domain name in connection with the sale of goods or services or a noncommercial or fair use of the domain name. See, e.g., American Online, Inc. v. Xianfeng Fu,WIPO Case No. D2000-1374. C. Registered and Used in Bad Faith
The Panel finds that the disputed domain name was registered and is being used in bad faith. By operating the disputed website, Respondents have intentionally attempted to attract, for financial gain, Internet users to the disputed site by creating a likelihood of confusion with the VALIUM mark as to the source, sponsorship, affiliation or endorsement of such site or the goods found at such site, within the meaning of paragraph 4(b)(iv) of the Policy. The fact that the disputed website makes possible the online sale of Valium and/or its generic equivalent, which is illegal absent a doctor’s prescription, which generally requires a physical examination, renders Respondents’ actions, in the words of Complainants, “purely disreputable.” Finally, given the widespread and extensive use of the VALIUM trademark, Respondents’ registration and use of the disputed domain name suggests opportunistic bad faith. See Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163. 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 Complainants.
Jeffrey M. Samuels
Sole Panelist
Dated: January 25, 2011
1 The Registrar indicated that the owner of the domain name registration is Vincent Holman.
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