The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally.
The Respondent is N/A, 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 August 19, 2011. On August 19, 2011, the Center transmitted by email to DomainContext, Inc. a request for registrar verification in connection with the disputed domain name. On August 19, 2011 DomainContext, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details of the Respondent.
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 August 23, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was September 12, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 13, 2011.
The Center appointed Francine Tan as the sole panelist in this matter on September 23, 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 trademark registrations, the International Registration No. 250784, with a priority date of October 20, 1961. The mark VALIUM is used in relation to a sedative and anxiolytic drug belonging to the benzodiazepine family.
The disputed domain name was registered on July 2, 2011 and directs to a webpage selling or offering for sale the Complainant’s products. 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 the mark in its entirety. The addition of the terms “online” and “norx” (viz. no prescription” or “noRX”) does not sufficiently distinguish the disputed domain name from the VALIUM trade mark. Further, because the mark VALIUM is well-known, the likelihood of confusion 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 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 a domain name registration. It is obvious 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 mark. It cannot be seen how the Respondent should have any right or legitimate interest 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 registration of the disputed domain name, the Respondent, no doubt, had knowledge of the Complainant’s well-known VALIUM 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 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 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 “onlinenorx” does not serve to avoid similarity or confusion as “onlinenorx” is descriptive and reflects or suggests that one may purchase Valium medication online and without a prescription.
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.
The second limb of paragraph 4(a) of the Policy is satisfied. C. Registered and Used in Bad Faith
The Panel notes that the screenshot of the Respondent’s website which was submitted in evidence by the Complainant reflects the following statement at the bottom of the page – “Valium® is a registered trademark of Roche”. The Respondent was undoubtedly aware of the Complainant’s mark and of the Complainant, but did nothing to disclose the nature of his relationship with the trademark owner on his webpage. The Panel is of the view that there has been improper use of the Complainant’s trade mark and is persuaded that the Respondent had, by using the disputed domain name, acted in bad faith and had “intentionally attempted to attract, for commercial gain, Internet users to [his] 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 [his] web site or location or of a product or service on [his] 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 7, 2011
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