The Complainant is F. Hoffmann-La Roche AG, Basel, Switzerland, represented internally.
The Respondent is C, Toronto, Canada / Mike Kazaros, Florida, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. (“Tucows”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 17, 2010. On December 17, 2010, the Center transmitted by email to Tucows a request for registrar verification in connection with the disputed domain name. On the same day Tucows 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. The Center sent an email communication to the Complainant on December 29, 2010 providing details of the new registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complain on December 29, 2010.
The Center verified that the Complaint together with the amendment to 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 January 5, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 25, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 31, 2011.
The Center appointed David H. Tatham as the sole panelist in this matter on January 31, 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
The disputed domain name was first registered on December 8, 2010.
The Complainant, together with its various affiliated companies, forms one of the world’s leading research-focused healthcare Groups. It specialises in pharmaceuticals and diagnostics, and the Group trades throughout the world, and in more than 100 countries.
The Complainant has registrations of the trademark VALIUM in a multitude of countries, and annexed to the Complaint was a copy of the Complainant’s International Registration of this mark No. R250784, covering goods in Classes 1, 3 and 5, and showing that it is protected in at least 36 countries. This is the renewal of a registration dated October 20, 1961.
The name Valium is used for a sedative and anxiolytic drug which has a worldwide reputation as a psychotropic medication, and annexed to the Complaint were copies of several newspaper articles referring to the product. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to its trademark VALIUM, which was registered long before the domain name, because the addition to the word “valium” of the generic term “value” does not sufficiently distinguish the disputed domain name from the Complainant’s trademark VALIUM.
The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name because it resolves to an on-line pharmacy and it has been held in several cases that this is not legitimate. Furthermore, the Complainant contends that it is obvious the Respondent is using the disputed domain name for commercial gain and in order to capitalize on the fame of its name and trademark VALIUM.
The disputed domain name was registered on December 8, 2010 and the Complainant contends that this registration was in bad faith because the Respondent doubtless knew of the Complainant’s trademark VALIUM at that time. In addition, when viewing the website at the disputed domain name, it can be seen that the Respondent has intentionally attempted to attract Internet users to this website by creating a likelihood of confusion with the Complainant’s well-known trademark VALIUM as to the source, affiliation, and endorsement of the Respondent’s website or of the products posted on or linked to those sites. The Complainant further contends that the Respondent’s use of the disputed domain name is intentionally misleading consumers and confusing them by making them believe that the website behind those links is associated with, or recommended by the Complainant. The Complainant contends that the Respondent might generate unjustified revenues from this activity, and is therefore capitalizing illegitimately on the fame of its trademark VALIUM. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires that a complainant prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) that the domain name registered by the respondent is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith. Preliminary Remarks
Paragraph 5(b)(i) of the Rules specifies that a respondent is expected to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name […]”
In this case, the Center forwarded the Complaint to the Respondent, in compliance with paragraph 2(a) of the Rules, and the Respondent has thereby been given an opportunity to present his case, but has failed to do so.
Paragraph (14)(b) of the Rules specifies that, in the event of a default, “[…]the Panel shall draw such inferences therefrom as it considers appropriate.” It was said in Viacom International Inc. v. Ir Suryani, WIPO Case No. D2001-1443 that “[s]ince the Respondent has not submitted any evidence and has not contested the contentions made by the Complainant, this Panel is left to render its decision on the basis of the uncontroverted contentions made, and the evidence supplied, by the Complainant. In the absence of any evidence to the contrary submitted by the Respondent, this Panel accepts in large measure (but not wholly) the submitted evidence and the contended for factual and legal conclusions as proven by such evidence.”
In this present proceeding, since the Respondent has chosen not to submit a Response, his default entitles the Panel to conclude that the Respondent has no arguments or evidence to rebut the Complainant’s assertions, and to take its decision on the basis of the statements and documents before it, always in accordance with the Policy, the Rules, and any rules and principles of law that are deemed applicable. A. Identical or Confusingly Similar
The Complainant claims to have numerous registrations of the trademark VALIUM, but has supplied details only of a single International Registration No. R250784 which dates from its original registration of October 20, 1961, but which is in fact extended to at least 36 countries.
The Complainant has also supplied evidence for the substantial use of the name VALIUM in the form of several newspaper extracts. In one of these, a 2005 article in The New York Times, VALIUM Is described as “not only the country’s best selling drug, but an American icon”. The Complainant has thus established, to the Panel’s satisfaction, its rights in, and the fame of, the word trademark VALIUM, registered in many territories around the world.
It is by now well established that, when comparing a disputed domain name with a trademark, then a gTLD such as – in this case – “.com” should be disregarded. See, for example Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429 in which it was found that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar. Therefore, the comparison here is between the trademark VALIUM and the combination “valium values”.
The Complainant’s trademark VALIUM is extremely well-known throughout the world and, not surprisingly, it has attracted numerous attempts by cybersquatters to incorporate it into various domain names. Since the UDRP began in 2000, there have been several dozens of WIPO decided cases involving variants of the trademark VALIUM, in all of which the Decision was to transfer the disputed name to the Complainant or to one of its affiliates.
In the present case, the disputed domain name has merely added the generic term “values” to the word VALIUM and there is little doubt that the average consumer would regard the term “valium values” as referring directly to the Valium element of the name, and so directly to the Complainant’s trademark and widely prescribed product.
In Wal-Mart Stores, Inc. v. Kuchora, Kal WIPO Case No. D2006-0033 it was held that “It is well-established that the addition of a generic term to a trademark does not necessarily eliminate a likelihood of confusion.” It was also held in Merrell Pharmaceuticals Inv., Aventis Pharma SA v. Filips KostinsWIPO Case No. D2004-0943 that “The Domain Name is confusingly similar to the trademark ALLEGRA, as the prefixes “buy” and “generic” are generic terms, which do not influence significantly the overall impression of the Domain Name which is dominated by the word ALLEGRA.”
In these circumstances, and in the light of these clear precedents, the Panel has little hesitation in finding that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights, and that paragraph 4(a)(i) of the Policy is therefore proved. B. Rights or Legitimate Interests
The Panel is satisfied that the Complainant has established a prima facie case under paragraph 4(a)(ii) of the Policy namely that the Respondent has no rights or legitimate interests in the disputed domain name, and it is well established that once a complainant has made out a prima facie case that the respondent has no rights or legitimate interests in a domain name, then the burden shifts to the respondent to prove otherwise. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, NAF Claim No. FA 741828 in which it was held that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name.
In the present case, the Respondent has chosen not to file anything in his defence despite the burden and the consequences under the Rules for doing so (see above). If the Respondent had any justification for registering or using the disputed domain name, he could have provided it. In particular, the Respondent has not contended that any of the circumstances described in paragraph 4(c) of the Policy, or indeed in any other circumstance, are in his favour.
The only information available about the Respondent is the WhoIs information provided by the Registrar.
This contains no evidence of any rights or legitimate interests of the Respondent in the disputed domain name, which, as found above, is confusingly similar to the Complainant’s distinctive and well-known trademark VALIUM. The Respondent makes no claims for having rights or legitimate interests in respect of the disputed domain name, and provides no explanation whatsoever for its registration and use. As submitted by the Complainant, and not denied by the Respondent, the disputed domain name has been associated to a commercial online pharmacy website at which numerous medicines are on offer, and this has taken place without the consent of the Complainant.
The above circumstances merely serve to confirm the Complainant’s prima facie case, and the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name so that paragraph 4(a)(ii) of the Policy is also proved in respect of it. C. Registered and Used in Bad Faith
In the present case, the disputed domain name is confusingly similar to the Complainant’s trademark VALIUM and clearly refer to the Complainant’s product. The website directly offers for sale many other pharmaceutical products for a variety of ailments, including the Complainant’s Valium product. This is sufficient for the Panel to conclude that at the time the disputed domain name was registered, the Respondent was clearly aware of the Complainant and of its product. The Respondent has provided no evidence of any actual or contemplated good faith use of the disputed domain name.
As the Complainant has pointed out, there have been several cases in which bad faith has been found in respect of domain names that are similar to a complainant’s trademark and which direct users to an on-line pharmacy. See, for example Pfizer Inc. v. jg a/k/a Josh Green WIPO Case No. D2004-0784 in which it was said that bad faith is established when “Respondent is using the domain names as a forwarding address to a for-profit on-line pharmacy”. See also F.Hoffmann-La Rocje AG v. Pinetree Development, Ltd. WIPO Case No. D2006-0049 in which the disputed domain name resolved to a website that was used as an online pharmacy and it was held that this was evidence of bad faith.
It has also been held under the Policy that the incorporation of a well known trademark into a domain name by a registrant having no plausible explanation for doing so may be an indication of opportunistic bad faith. See Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163 in which it was said “VEUVECLICQUOT.ORG is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith”. Precisely the same argument applies in this case, as Valium is also a well-known product.
The disputed domain name has been used by the Respondent – without the consent of the Complainant – for an online pharmacy website. Among many other things, this website offers both the Complainant’s product Valium and a so-called generic version of Valium. Internet users accessing the Respondent’s website may well believe that it is endorsed by the Complainant and that they can obtain the Complainant’s genuine products there. This would be false. Therefore, and in the absence of any contrary evidence, the Panel accepts that the Respondent has registered and used the disputed domain name in bad faith by intentionally attempting to attract, for commercial gain, Internet users to an online location, and by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of this online location or of the products offered on it. Paragraph 4(a)(iii) is therefore proved. 7. Decision
For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
David H. Tatham
Sole Panelist
Dated: February 9, 2011
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