The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally.
The Respondent is PrivacyP / Yeva Aneta, Nobby Beach, Queensland, Australia and Gävleborgelän, Sweden, respectively. 2. The Domain Name and Registrar
The disputed domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 18, 2011. On the same day, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomZainR a request for registrar verification in connection with the disputed domain name. On August 19, 2011, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR 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 August 22, 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 August 23, 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 August 24, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was September 13, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 14, 2011.
The Center appointed Francine Tan as the sole panelist in this matter on October 6, 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, with its affiliated companies, is one of the world’s leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics. It has global operations in more than 100 countries.
The Complainant asserts that its trade mark VALIUM is protected as a registered trade mark in over a hundred countries worldwide and is well-known. Reference was made to one of its trade mark registrations, the International Registration No. 250784, with a priority date of October 20, 1961. The Complainant’s trade mark VALIUM is used in relation to a sedative and anxiolytic drug belonging to the benzodiazepine family.
The disputed domain name was registered on May 31, 2011 and directs to a website selling pharmaceutical products online. 5. Parties’ Contentions A. Complainant
The Complainant asserts that the disputed domain name is confusingly similar to the Complainant’s VALIUM trade mark as it incorporates this trade mark in its entirety, and the addition of hyphens and generic terms such as “5mg” (i.e. 5 milligrams), “street” and “value” does not sufficiently distinguish the disputed domain name from the Complainant’s trade mark. Further, because the trade mark VALIUM is well-known, the confusing similarity is thereby increased. The Complainant also points out that the Complainant’s use and registration of the mark VALIUM predates the Respondent’s registration of the disputed domain name.
Secondly, the Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant states that it has exclusive rights in respect of the trade mark VALIUM and has not licenced or authorized the Respondent to use the VALIUM trade mark in the disputed domain name. It is obvious, in the Complainant’s opinion, that the Respondent registered and used the disputed domain name for commercial gain and with the purpose of capitalizing on the fame of the VALIUM trade mark. It cannot be seen how the Respondent should have any rights or legitimate interests in the disputed domain name.
Thirdly, the Complainant submits that the disputed domain name was registered and is being used in bad faith, and this is supported by the following facts:
(a) At the time of the creation of the disputed domain name, the Respondent, no doubt, had knowledge of the Complainant’s well-known VALIUM trade mark and of the product sold under the VALIUM trade mark.
(b) When viewing the Respondent’s website, one would realize that the Respondent is intentionally attempting (for commercial purpose) to attract Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s well-known trade mark as to the source, affiliation and endorsement of the Respondent’s website or of the products or services posted on or linked to the Respondent’s website. Consumers would be confused into believing that the websites behind those links are associated with or recommended by the Complainant. As a result, the Respondent may generate unjustified revenues and is therefore illegitimately capitalizing on the fame of the VALIUM trade mark. B. Respondent
The Respondent did not file a Response. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, a complainant must prove each of the following:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has established its rights in the VALIUM trade mark. As regards the next issue of whether the disputed domain name is confusingly similar to the VALIUM trade mark, the Panel is of the view that it is: (a) The disputed domain name incorporates the well-known VALIUM trade mark: and (b) the suffix “5mg-street-value” does not serve to avoid similarity or confusion. The suffix “5mg” is descriptive of or suggests the relevant dosage of the product and “street-value” is descriptive in nature, suggesting the price at which the product is sold on the website is the price at “street value”. The suffix does not remove the confusion which arises from the incorporation of the Complainant’s VALIUM trade mark in the disputed domain name.
The Complainant has therefore satisfied the first limb of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out examples of circumstances which, if established by a respondent, can demonstrate its right or legitimate interest in a domain name:
(i) Before receiving any notice of the dispute, the respondent used or made preparations to use the domain name in connection with a bona fide offering of goods or services: or
(ii) The respondent has been commonly known by the domain name: 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 trademark at issue.
In the absence of evidence to demonstrate the Respondent’s rights or legitimate interests in the disputed domain name which incorporates the VALIUM trade mark, the Panel is left to only consider the submissions made by the Complainant.
In this case, the Complainant has not licensed nor authorized the use of its VALIUM trade mark to the Respondent. There is nothing on the Respondent’s website which disclaims any relationship or connection with the Complainant. It would therefore not be inconceivable that Internet users reaching the Respondent’s website would believe that it is somehow associated with, or endorsed by the Complainant. The unauthorized appropriation of the Complainant’s well-known VALIUM trade mark in a domain name for commercial use cannot be considered to be justifiable, and the circumstances in this case do not show a bona fide offering of goods or services.
The Panel is therefore of the view that the Complainant has established prima facie evidence that the Respondent has no rights or legitimate interests in the disputed domain name, which the Respondent has not rebutted.
Consequently, the Panels finds that the second limb of paragraph 4(a) of the Policy is satisfied. C. Registered and Used in Bad Faith
The Complainant made reference to the case of Pfizer Inc. v. jg a/k/a Josh Green,WIPO Case No. D2004-0784 in which the panelist therein observed that “several cases have found that a registrant has no legitimate interest in a domain name that is similar to a pharmaceutical manufacturer’s mark and that is being used to direct consumers to an on-line pharmacy”. The Complainant also cited the case of F. Hoffmann-La Roche AG vs. Pinetree Development, Ltd.,WIPO Case No. D2006-0049 which it says is similar to the circumstances of the instant case as “the website resolving to the domain name at issue has been used to provide an online pharmacy which offers […] various other drugs which directly compete with the Complainant. The use of the disputed domain name thus appears to be an attempt to attract for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark. This is evidence of bad faith registration and use pursuant to the Policy, paragraph 4(b).”
The Panel is of the view that there has been improper use of the Complainant’s trade mark. Internet users in this case are not only able to purchase products under the VALIUM trade mark but also a whole host of other brands of pharmaceutical products. The Panel is persuaded that the Respondent has, by using the disputed domain name, acted in bad faith and has “intentionally attempted to attract, for commercial gain, Internet users to its 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 its web site or location or of a product or service on its web site or location”.
The Panel therefore finds that the Complainant has satisfied the third limb of paragraph 4(a) of the Policy. 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.
Francine Tan
Sole Panelist
Dated: October 15, 2011
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