The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, internally represented.
The Respondent is PrivacyP of Nobby Beach, Australia / Viktor Konin of Ekaterinburg, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name is registered with DomainContext, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 28, 2011. On June 28, 2011, the Center transmitted by email to DomainContext, Inc. a request for registrar verification in connection with the disputed domain name. On July 1, 2011, DomainContext, Inc. 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 July 1, 2011, providing the 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 Complaint on July 4, 2011.
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 July 4, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 24, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 25, 2011.
The Center appointed Tuukka Airaksinen as the sole panelist in this matter on August 1, 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 Complainant is the owner of the trademark VALIUM, registered in a multitude of countries and as an International Registration No. R250784, dated December 20, 1961. The mark designates a sedative and anxiolytic drug and the Complainant also contends that the mark is well-known and notorious.
The disputed domain name was registered on May 17, 2011. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademark, because it merely combines it with non-distinctive and generic terms, i.e. “buy”, “online” and “now”. Because the mark is well known and notorious, the likelihood of confusion is even greater.
The Complainant has not granted any rights to the Respondent to use the mark VALIUM in the disputed domain name and the disputed domain name resolves to a website offering the Complainant’s goods. Therefore the Respondent’s use is not legitimate noncommercial nor fair use of the disputed domain name, but the Respondent’s aim is to benefit from the trademark’s reputation.
The Complainant further contends that the Respondent has registered and is using the domain in bad faith, because at the time of registration the Respondent must have been aware of the Complainant’s trademark. The disputed domain name is also being used in bad faith, because the Respondent is trying to attract Internet users to the Respondent’s website, which includes a picture of the packaging of the Complainant’s product. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
As the Complainant has stated, the disputed domain name combined the Complainant’s registered trademark with other common words that add no distinctive character to the disputed domain name. The Panel agrees with the panel in Microsoft Corporation v. J. Holiday Co.,WIPO Case No. D2000-1493, in that it is generally not possible to avoid confusing similarity by taking another’s trademark and combine it with generic terms.
The only distinctive part of the disputed domain name is “valium”, identical with the Complainant’s earlier trademark. The domain is therefore confusingly similar to the Complainant’s trademark VALIUM. B. Rights or Legitimate Interests
The Complainant has stated that it has not granted any rights to the Respondent to use the trademark VALIUM in the disputed domain name. The Complainant also contends that the Respondent is selling the Complainant’s products on the website concerned. Hence the Respondent cannot be making any noncommercial or fair use of the disputed domain name.
None of these allegations have been rebutted by the Respondent and the Panel finds that the Complainant has made at least a prima facie case of the Respondent’s lack of rights or legitimate interests in the disputed domain name. The Panel notes that the Respondent is not authorized to sell the Complainant’s products and therefore finds in favour of the Complainant. C. Registered and Used in Bad Faith
The Complainant has submitted some evidence to support its allegation that VALIUM is a well-known trademark. The evidence filed in support of that claim is scarce as it consists merely of three newspaper articles, of which two are illegible. However, it is clear that the Respondent must have been aware of the Complainant’s trademark when registering the disputed domain name, because the Respondent is offering the Complainant’s products on the website to which the disputed domain name resolves. In the Panel’s opinion, this is clear evidence of the Respondent’s intention to trade off on the reputation of the Complainant’s trademark.
Policy paragraph 4(b)(iv) states that for example the following shall be evidence of registration and use of a domain in bad faith:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”.
This is exactly what the Respondent is doing in this case, because the Respondent is using the disputed domain name to create an image that it is an authorized reseller of the Complainant’s products, which is not the case. This is clear evidence of use and registration in bad faith. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Tuukka Airaksinen
Sole Panelist
Dated: August 8, 2011
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