The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally.
The Respondent is Private Whois Service of Nassau, Bahamas. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with I Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 23, 2011. On May 23, 2011, the Center transmitted by email to I Corp. a request for registrar verification in connection with the Disputed Domain Name. On May 27, 2011, I Corp. 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 27, 2011. On May 29 and May 30, 2011, the Center received two informal emails from Mr. F. Beckman. In accordance with the Rules, paragraph 5(a), the due date for Response was June 16, 2011. The Respondent did not submit any formal response. Accordingly, the Center notified the parties that an administrative panel was going to be appointed on June 20, 2011.
The Center appointed William P. Knight as the sole panelist in this matter on June 27, 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 current registration of the Disputed Domain Name dates from February 3, 2011.
The Complainant is a Swiss company and a member of a very large, multinational group of companies which has traded for many decades. The Complaint asserts and provides supporting information that it is the owner of the trademark VALIUM in many countries, dating back to 1961, in respect of which the Complainant provides by way of example International Registration R250784, dated October 20, 1961, which is sufficient for present purposes.
The product referred to as VALIUM is extremely well-known internationally. It is a sedative and anxiolytic drug belonging to the benzodiazepine family, and is indicated for the treatment of anxiety-related disorders.
The website to which the Disputed Domain Name directs is presently a meaningless, almost blank page but, at the time of the Complaint, it appeared to offer genuine benzodiazepine family products of the Complainant and generic substitutes without prescription. 5. Parties’ Contentions A. Complainant
In accordance with paragraph 4(a) of the Policy, the Complainant asserts, inter alia, as follows:
(i) that the Disputed Domain Name is confusingly similar to the Complainant’s registered trademarks; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) that the Disputed Domain Name has been registered and is being used in bad faith.
In respect of (i) and (ii), in addition to the undisputed international reputation of the Complainant in the trademark VALIUM. The Complainant further notes that the addition of the hyphen and the word “zopiclone” does nothing to distinguish the Disputed Domain Name, as “zopiclone” is a generic name for a non-benzodiazepine hypnotic agent used in the treatment of insomnia – a condition frequently associated with anxiety for which the Complainant’s product is prescribed.
In respect of (ii), the Complainant asserts that the Respondent is not licensed in any way to supply the Complainant’s products or to use its trademarks. The Complainant refers to Pfizer Inc. v. jg a/k/a Josh Green,WIPO Case No. D2004-0784 which finds that to use a pharmaceutical trademark as a domain name for an on-line pharmacy does not show a right or legitimate interest.
In respect of (iii), the Complainant again relies upon Pfizer Inc. v. jg a/k/a Josh Green,WIPO Case No. D2004-0784 as well as F. Hoffman-La Roche AG v. Pinetree Development, Ltd.,WIPO Case No. D2006-0049 to argue that the use of a pharmaceutical trademark in the manner demonstrated by the Respondent in this matter, so as to divert Internet trade to the Respondent’s offerings of competing generic drugs without prescription, demonstrates bad faith use.
In support of (iii), the Complainant asserts that registration and use in bad faith is evidenced by the fact of the Respondent must have registered the Disputed Domain Name in circumstances where it knew full well of the Complainant’s reputation in the trademark VALIUM and intended to exploit that to divert custom from the Complainant (or its related companies) in selling generic pharmaceutical products. This conduct is inherently registration and use in bad faith. B. Respondent
The attempt to serve the Complaint by courier was unsuccessful as it would appear that the address of the Respondent given at the time of the registration of the Disputed Domain name was false. However, after service by email of the Complaint at the email contact details of the Respondent, as given in the registration of the Disputed Domain Name and on the website of the Respondent, a Mr. F. Beckman responded to the service of the Complaint by email complaining that he had purchased the Disputed Domain Name and had invested a substantial sum of money in development of the website under it, and accordingly offering to sell it (to the Center) for a greater sum. A Mr. F. Beckman was named on the website under the Disputed Domain Name as being connected with it. When the Center advised Mr. Beckman by return of this proceeding and providing information regarding the next procedural steps, he responded in an offensive manner protesting his right to do anything he chose with the Disputed Domain Name. No other form of response was forthcoming from the Respondent. 6. Discussion and Findings
The onus is on the Complainant to prove each of the three elements set out in paragraph 4(a) of the Policy.
The Panel finds that the Complainant has rights in the trademark VALIUM and that the Disputed Domain Name is confusingly similar to that trademark, the addition of the descriptive term “zopiclone” does not affect this finding of confusing similarity.
The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name.
The Respondent has made no attempt to justify his registration and use of the Disputed Domain Name and, indeed, there appears no conceivable justification for the Respondent’s conduct, for all the reasons argued by the Complainant.
The Panel concludes that the Respondent has registered and is using the Disputed Domain Name in bad faith. This extends to its current use as a blank page, as it is clear from the Respondent’s past conduct and his email communications to the Center that he sees nothing wrong with his conduct and, if given an opportunity to do so, he would continue his former use of the Disputed Domain Name or would attempt to sell it to enable another, unscrupulous person to misuse it.
In the light of the findings above, the Panel concludes that:
- the Disputed Domain Name is confusingly similar to the Complainant’s VALIUM trademark; and
- the Respondent has no rights or legitimate interests in the Disputed Domain Name; and
- the Disputed Domain Name has been registered and is being used in bad faith. 7. Decision
For all the foregoing reasons, the Panel orders in accordance with paragraphs 4(i) of the Policy and 15 of the Rules that the Disputed Domain Name be transferred to the Complainant.
William P. Knight
Sole Panelist
Dated: July 4, 2011
Full & Egal Universal Law Academy