The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally.
The Respondent is John Lewis of Paris, France. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 20, 2011. On September 20, 2011, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the Domain Name. On September 20, 2011, GoD, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on September 27, 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 September 28, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 18, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 19, 2011.
The Center appointed Jacob (Changjie) Chen as the sole panelist in this matter on November 14, 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 a Swiss healthcare company in the fields of pharmaceuticals and diagnostics. The Complainant holds registrations for the VALIUM mark in over one hundred countries worldwide, inter alia, International Registration No. 250784. The mark VALIUM designates a sedative and anxiolytic drug in psychotropic medications and has a global reputation.
The Respondent registered the Domain Name on September 1, 2011. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name registered by the Respondent is confusingly similar to its VALIUM trademark. The Complainant has rights to the VALIUM mark (International Registration No. 250784) with a priority date of October 20, 1961, which predates the registration of the Domain Name. The mark VALIUM, which is protected as a trademark in many countries worldwide, is well-known and has a global reputation. The Domain Name incorporates the VALIUM mark in its entirety and the addition of the generic term “buy” and the international non-proprietary name “diazepam” does not distinguish the Domain Name from the VALIUM trademark.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant has exclusive rights to the mark VALIUM and no license/permission/authorization has been granted to the Respondent to use the mark VALIUM in the Domain Name. The purpose of the Respondent in registering and using the Domain Name is to capitalize on the fame of the Complainant’s mark VALIUM for commercial gain and profit.
The Complainant further contends that the Respondent registered the Domain Name and is using it in bad faith. The Complainant states that the Respondent had knowledge of the Complainant’s well-known mark VALIUM at the time of registering the Domain Name. By using the Domain Name, the Respondent is intentionally attempting to attract Internet users, for commercial purposes, to its website by creating a likelihood of confusion with the Complainant’s well-known trademark VALIUM as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of the products or services posted on or linked to the Respondent’s website. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
To succeed in a complaint, the Complainant must, in accordance with paragraph 4(a) of the Policy, satisfy the Panel of the following three elements:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
The Complainant’s mark VALIUM is protected as a trademark in many countries worldwide and the Complainant holds numerous registrations in over a hundred countries, including International Registration No. 250784 with a priority date of October 20, 1961. The Panel finds the Complainant has rights in the mark VALIUM.
The Domain Name incorporates the Complainant’s trademark VALIUM in its entirety, which in itself is sufficient to support the claim that the Domain Name is confusingly similar to the Complainant’s mark. See EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047 (“When a domain name incorporates, in its entirety, a distinctive mark, that creates sufficient similarity between the mark and the domain name to render it confusingly similar”); see also Oakley, Inc. v. Zhang Bao,WIPO Case No. D2010-2289.
The word “buy” added to the Domain Name is generic and the word “diazepam” is the international non-proprietary name of the drug. The addition of generic or descriptive words is insufficient to dispel the confusing similarity arising from the incorporation of the Complainant’s VALIUM mark. See Wal-Mart Stores, Inc. v. Kuchora, Kal,WIPO Case No. D2006-0033 (“It is well-established that the addition of a generic term to a trademark does not necessarily eliminate a likelihood of confusion”); see also PRL USA Holdings, Inc. v. Unasi Management Inc., WIPO Case No. D2005-1027.
The Panel holds that the Domain Name is confusingly similar to the Complainant’s trademark VALIUM. B. Rights or Legitimate Interests
The Complainant has exclusive rights to the VALIUM trademark and has not licensed, permitted or authorized the Respondent to use the VALIUM mark in the Domain Name.
The Panel is satisfied that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(c) of the Policy. According to a consistent series of prior UDRP decisions, in such a case the burden of production shifts to the Respondent to rebut. See among others Carolina Herrera, Ltd. v. Alberto Rincon Garcia,WIPO Case No. D2002-0806; International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio,WIPO Case No. D2002-0683.
The Panel notes that the Respondent has failed to file a response to prove its rights or legitimate interests in the Domain Name under paragraph 4(c) of the Policy. For all of the above reasons, the Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. C. Registered and Used in Bad Faith
The Complainant is one of the leading research-focused healthcare companies in the fields of pharmaceuticals and diagnostics and has global operations in more than 100 countries. The Complainant’s trademark VALIUM is well-known and has a global reputation as psychotropic medication. The incorporation of the Complainant’s well-known trademark in the Domain Name indicates that the Respondent had knowledge of the Complainant’s trademark VALIUM at the time of registering the Domain Name, which constitutes bad faith. See America Online, Inc. v. Anson Chan,WIPO Case No. D2001-0004.
As evidenced by the documents submitted by the Complainant, the Respondent’s website contains sponsored links offering the various goods or services of other companies. The Panel finds that bad faith is established by the Respondent’s use of the Domain Name to attract Internet users to a website containing advertising links, via which the Respondent obtains click-through commissions from the diversion of Internet users. The Panel views the acts of the Respondent as amounting to “opportunistic exploitation of inevitable Internet user confusion for the Respondent’s own benefit” (Sound Unseen, Ltd.; Apple Bottoms, LLC; and Cornell Haynes p/k/a “Nelly” v. Patrick Vanderhorst, WIPO Case No. D2005-0636), and “such exploitation of the reputation of trademarks to obtain click-through commissions from the diversion of internet users is a common example of use in bad faith” (L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc,WIPO Case No. D2005-0623). By incorporating the mark VALIUM in the Domain Name, the Respondent is intentionally creating a likelihood of confusion with the Complainant as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
Failure of the Respondent to respond to the Complaint may be further indicative of bad faith. See Awesome Kids LLC and/or Awesome Kids L.L.C. v. Selavy Communications, WIPO Case No. D2001-0210.
In light of the above facts and reasons, the Panel therefore finds that the Domain Name was registered and is being used in bad faith pursuant to 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 Domain Name, , be transferred to the Complainant.
Jacob (Changjie) Chen
Sole Panelist
Dated: November 28, 2011
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