The Complainant is Roche Products Inc. of Hamilton, British Overseas Territory of Bermuda and Genentech, Inc. of South San Francisco, California, United States of America, represented by Lathrop & Gage LLP of New York, United States of America.
The Respondent is Leonard Clever of Memphis, Tennessee, United States of America. 2. The Domain Name And Registrar
The disputed domain name is registered with Center of Ukrainian Internet Names (UKRNAMES) (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 30, 2011. On July 1, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 5, 2011, 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.
On July 11, 2011, the Center notified the Parties that as the language of the registration agreement for the disputed domain name was Russian (as per information provided by the Registrar), the Complainant would need to provide satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English; submit the Complaint translated into Russian; or submit a request for English to be the language of the administrative proceedings. On July 15, 2011 the Complainant submitted an amended Complaint in which the Complainant requested English to be the language of the administrative proceedings. The Respondent did not submit any comments regarding the language of the proceedings.
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 the Respondent of the Complaint, and the proceedings commenced on July 19, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 8, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 10, 2011.
The Center appointed Irina V. Savelieva as the sole panelist in this matter on August 17, 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, together with its affiliated companies is one of the world’s leading research-focused healthcare groups in the field of pharmaceuticals and diagnostics and has global operations in more than 100 countries. The Complainant owns the VALIUM trademark, a registered trademark in multiple countries, including in the United States Patent and Trademark Office under reg. No. 725,548 and has been in use since 1961.
The VALIUM trademark of the Complainant designates a psychotherapeutic agent that has been used and widely circulated by the Complainant in the United State of America. The product marketed under the VALIUM trademark has acquired fame and celebrity, symbolizing the goodwill that the Complainant has created in the United States of America and worldwide.
The disputed domain name was registered on April 21, 2011. 5. Parties’ Contentions A. Complainant
(a) The disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights:
- The disputed domain name contains the entire VALIUM trademark of the Complainant. In light of this, the Respondent’s registration of the disputed domain name creates a strong likelihood of confusion as to the source, sponsorship, association or endorsement of the website associated with the disputed domain name.
- The Complainant further attempted to contact the Respondent prior to these proceedings advising the Respondent that the registration of the disputed domain name infringed trademarks of the Complainant. However the Complainant received no answer from the Respondent.
- Numerous cases have established that adding descriptive language, in this case the word “drug”, does not prevent the confusing similarity. In this case the disputed domain name incorporates the whole VALIUM trademark of the Complainant (and adds the term “drug”), which leads to the disputed domain name being identical or confusingly similar to the Complainant’s VALIUM trademark within the meaning of the Policy, paragraph 4(a)(i).
(b) The Respondent has no rights or legitimate interests in respect of the disputed domain name:
- “Valium” is not a word and has no valid use other than in connection with the Complainant’s VALIUM trademark. The Complainant did not authorize the Respondent to use the VALIUM trademark or to incorporate the trademark in any domain name. The Respondent’s use of the disputed domain name clearly indicates that the disputed domain name was clearly selected and is being used because of the goodwill created by the Complainant and its VALIUM trademark. Based on the website associated with the disputed domain name it is clear that neither the Respondent nor the website that is associated with the disputed domain name has been commonly known by the name forming the disputed domain name.
- The website associated with the disputed domain name offers products marketed under the Complainant’s VALIUM trademark as well as generic diazepam, competitive anti-anxiety product(s) and other pharmaceutical products of competitors of the Complainant without any permission form the Complainant, owner of the VALIUM trademark that has been incorporated in the disputed domain name. The Respondent’s use of the VALIUM trademark is without permission or authorization from the Complainant.
- The actions undertaken by the Respondent may lead a consumer to believe that the Respondent is a source of VALIUM products and related information or that the Respondent is affiliated or sponsored by the Complainant. Alternatively it may also lead consumers to believe that the website associated with the disputed domain name is owned and/or operated by the Complainant.
- The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. The Respondent’s use of the disputed domain name, which intentionally trades on goodwill of the mark of the Complainant, cannot constitute a bona fide offering of goods or services.
- The Respondent was further not authorized by the Complainant to offer products and services related to the Complainant and this further cannot constitute a bona fide offering of goods and services.
- There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name. The Respondent is using the Complainant’s trademark in the disputed domain name in order to link to websites that offer both products under the VALIUM trademark and, amongst others, generic diazepam, competitive anti-anxiety and other pharmaceutical products without any license or authorization from the Complainant, which cannot represent legitimate noncommercial or fair use.
(c) The disputed domain name was registered and is being used in bad faith:
- The Respondent’s real purpose in registering the disputed domain name, which incorporates the VALIUM trademark in its entirety, is to capitalize on the reputation of the VALIUM trademark by diverting Internet users to a website associated with the disputed domain name without any permission from the Complainant in order to solicit orders. The bad faith is evidenced by the fact that “valium” is not a word, the VALIUM trademark has been coined and invented by the Complainant and has a strong reputation in North America, while the Respondent has never been authorized by the Complainant to use the VALIUM trademark in any way. Such use of the VALIUM trademark as demonstrated in this case suggests opportunistic bad faith on behalf of the Respondent. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion And Findings A. Language of the Proceedings
The language of the registration agreement for the disputed domain name is Russian. The Complainant has provided a request for the administrative proceedings to be conducted in English. The Respondent has not responded in any way to the Complaint.
In the amended Complaint the Complainant requests for English to be the language of the administrative proceedings. This is based on the fact that the website associated with the disputed domain name is fully in English, prices listed are in United States dollars and the shipment is to customers in the United States of America. Therefore it is clear that the Respondent is able to do business in English. Furthermore according to the WhoIs database the Respondent is located in the United States of America.
The Panel notes the request for English to be the language of the administrative proceedings in the amended Complaint. The Panel further notes that the Respondent has not filed any Response to the Complaint in either language.
The Panel finds that English should be the language of the administrative proceedings. The Panel finds that the Respondent being properly notified about the proceedings was given an opportunity to present his position on the matter of the language of the administrative proceedings; however, the Respondent has not communicated any response. Taking into account that the Respondent did not file any Response and that the Complaint was originally submitted in English, with an amended Complaint requesting for English to be the language of the administrative proceedings, the Panel finds it appropriate to conduct these proceedings in English in order to minimize any possible costs associated with the proceedings and to ensure that the proceedings are conducted in an efficient and timely manner. The Panel further notes that all of the Center’s communications have been transmitted in both Russian and English. B. Identical or Confusingly Similar
The Complainant has registered the VALIUM trademark in a number of jurisdictions, with registration in the United States of America dating back from 1961. The Complainant submits that the disputed domain name is confusingly similar to its trademark as the disputed domain name incorporates the VALIUM trademark in its entirety. As the word “valium” has no meaning in the English language, the Panel finds the Complainant’s VALIUM trademark to be highly distinctive.
In relation to the incorporation in the disputed domain name of the generic word “drug” the Panel finds that the inclusion of a generic element together with a trademark cannot contribute to distinguishing the disputed domain name from the registered trademark where such domain name incorporates a distinctive trademark. The Panel finds that due to the high distinctiveness of the VALIUM trademark of the Complainant, the addition of the merely generic or descriptive element “drug” in the disputed domain name does not avoid a finding of confusing similarity in this case. Indeed, the inclusion of this term in the disputed domain name together with the name of the drug being sold may increase the risk of confusion for the Internet users taking into account that the Respondent is using the disputed domain name to link to a website that is offering the ability to purchase drugs online.
It is clear in the Panel’s view that in the mind of an Internet user the disputed domain name could be directly associated with the Complainant’s trademark, which is likely to be confusing to the public as suggesting either an operation of the Complainant or one associated with or endorsed by it (See AT&T Corp. v. Amjad Kausar,WIPO Case No. D2003-0327).
Accordingly, the Panel finds the incorporation of the merely generic or descriptive word “drug” in the disputed domain name does not prevent a finding of confusingly similarity to the Complainant’s trademark VALIUM.
The Panel finds that the Complainant has satisfied its burden of proof under paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name.
Even though the Respondent has not filed a Response to the Complaint and has not contested the Complainant’s assertions, the Panel needs to consider whether the Respondent’s has rights or legitimate interests in the domain name.
According to paragraph 4(c) of the Policy the following circumstances, if proved, demonstrate a respondent’s rights or legitimate interests in a domain name:
(i) the respondent used or demonstrably prepared to use the domain name or corresponding name in connection with a bona fide offering of goods or services prior to notice of the dispute; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the complainant’s marks.
A respondent may elect to show rights or legitimate interests, non-exhaustively, by producing evidence under paragraphs 4(c)(i)-(iii) of the Policy.
By not responding to the Complainant’s contentions, the Respondent in these proceedings has not attempted to demonstrate its rights or legitimate interests.
The Panel further notes that, there is no evidence that before any notice of the dispute with the Complainant, the Respondent was using the disputed domain name for a bona fide offering of goods or services.
According to the documents submitted by the Complainant the disputed domain name links to a website that is in the business of offering for sale various medicines, including those that are sold under the VALIUM trademark. The Complainant further contends that the products that were available for sale from the website associated with the disputed domain name included not only those sold under the Complainant’s VALIUM trademark, but also generic diazepam, competitive anti-anxiety product(s) and other pharmaceutical products of the Complainant’s competitors.
This use of the disputed domain name, in the Panel’s view, cannot constitute a bona fide offering of goods and services in the circumstances of this case, so there is no evidence that the Respondent is able to show rights or legitimate interests in respect of the disputed domain name under paragraph 4(c)(i) of the Policy.
As to paragraph 4(c)(ii) of the Policy, there is no evidence that the Respondent has been commonly known by the disputed domain name.
The disputed domain name was registered on April 21, 2011. The Complainant asserts that the product under the VALIUM trademark has been registered and in use since 1961 and that the product is widely known by the VALIUM trademark, which is particularly popular and has gained great publicity in North America.
Therefore as the disputed domain name has been registered around 50 years after the registration of the Complainant’s VALIUM trademark, it is highly unlikely that the Respondent has been commonly known by the disputed domain name as provided in paragraph 4(c)(ii) of the Policy.
It is the Panel’s view, on the present facts, that the Respondent most likely registered the disputed domain name with full awareness of the Complainant’s trademark as well as the goodwill associated with it.
There is further evidence that the Respondent is possibly making commercial use from the disputed domain name (by linking to a website that offers medicines for sale). The Respondent is using the disputed domain name to further misleadingly divert customers to a website that is not associated with the Complainant. Therefore paragraph 4(c)(iii) of the Policy does not apply.
The Panel finds the Complainant has carried out its burden of proof to show that the Respondent has no rights or legitimate interests in the disputed domain name. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances are deemed to be evidence that a respondent has registered and is using a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of the complainants, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website or location or of a product or service on its website or location.
The Complainant contends that the Respondent has violated the bad faith provision of the Policy because the disputed domain name is used in connection with the offer for sale of other medicines via a website, including those that are direct competitors to the product of the Complainant associated with the VALIUM trademark as well as other medical products. The Complainant further contends that the disputed domain name was registered and used primarily for the purpose of confusing and misleading the public as to the affiliation of the disputed domain name as well as the associated website with the trademark of the Complainant.
The Panel finds that the Respondent's use of the disputed domain name has created a risk of confusion with the Complainant’s product and trademark as to the source, sponsorship, affiliation or endorsement of the disputed domain name and the website associated with it.
The Panel finds that the Complainant has presented evidence that the Respondent is in violation of the provisions of paragraph 4(b)(iv) of the Policy in respect of the disputed domain name.
The Panel holds that the Respondent has registered the disputed domain name in bad faith. In the circumstances, the Respondent must have known about the Complainant’s product and should have been aware of the trademark of the Complainant. The Panel is not aware of the Respondent conducting any legitimate business activity using the disputed domain name. These findings, together with the finding that the Respondent has no rights or legitimate interests in the disputed domain name, lead the Panel to conclude that the disputed domain name was registered and used by the Respondent in bad faith.
Moreover, the Panel draws inferences of bad faith from the fact that the website associated with the disputed domain name is offering drugs for sale online that would normally require a prescription and consultation and/or monitoring from a qualified doctor.
The Panel also draws inferences of bad faith from the lack of any response from the Respondent to the Complaint.
The Panel finds the Complainant has shown that the Respondent registered and used the disputed domain name 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 domain name be transferred to the Complainant.
Irina V. Savelieva
Sole Panelist
Dated: August 30, 2011
Full & Egal Universal Law Academy