The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally.
The Respondent is Ivan Pleshko of Chernivtsi Oblast, Ukraine. 2. The Domain Name and Registrar
The disputed domain name is registered with 0101 Internet, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 28, 2011. On September 29, 2011, the Center transmitted by email to 0101 Internet, Inc. a request for registrar verification in connection with the disputed domain name. On October 10, 2011,the Registrar 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 October 13, 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 October 14, 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 October 21, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 10, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 11, 2011.
The Center appointed Jonas Gulliksson as the sole panelist in this matter on November 24, 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, together with its affiliated companies, one of the world’s largest research-focused healthcare groups in the fields of pharmaceuticals and diagnostics. The Complainant has global operations in more than 100 countries.
VALIUM designates a sedative and anxiolytic drug belonging to the benzodiazepine family. The Complainant has registered VALIUM as a trademark in a multitude of countries worldwide. The registrations include an International Registration (No. R250784) with priority date of October 20, 1961.
The Respondent operates a website which apparently directs the customer to online pharmacies where VALIUM may be bought prescription fee. 5. Parties’ Contentions A. Complainant
Complainant is the holder of inter alia International Registration No. R250784, covering goods in classes 1, 3 and 5. Moreover, the trademark is well-known and notorious.
The disputed domain name is confusingly similar to the registered trademark of the Complainant. The descriptive term “online” is not sufficient to distinguish the disputed domain name from the Complainant’s trademark.
The Respondent has no rights or legitimate interests in the disputed domain name. No licence, permission, consent or authorization has been granted to the Respondent. It is obvious that the disputed domain name is used for commercial gain through capitalizing on the well-known status of the Complainant’s mark VALIUM. The disputed domain name was registered and is being used in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Panel finds that the Complainant is the holder of the rights to the trademark VALIUM and that the trademark is a well-known, if not notorious, trademark.
The Panel further, in accordance with the paragraphs below, finds that the disputed domain name is confusingly similar to the trademark of the Complainant, that the Respondent lacks rights or legitimate interests in the disputed domain name and that the domain name was registered and is being used in bad faith. Procedural Issue – Multiple Respondents
The Panel is here faced with the issue of two Respondents. One is a privacy service which has been disabled by the concerned Registrar upon receiving a Request for Registrar Verification, sent by the Center on September 29, 2011. The underlying registrant is now reflected in the WhoIs database.
This Panel adheres to its previous opinion (see bwin Services AG v. Brainman Wiaslova / Protected Domain Services,WIPO Case No. D2011-0886) with regard to the particular procedural issues surrounding domain names where the true holder has chosen to use a privacy service.
As the panel opined in the case Karsten Manufacturing Corp. v. Pingify Networks Inc., NAF Claim No. 1232823:
“Whilst this Panel is aware that the facts here invite a number of questions concerning interpretation of the Policy which have engaged the close attention of other panels, (See Padberg v. Eurobox Ltd,WIPO Case No. D2009-1886, (WIPO Mar 10, 2008); see also Baylor Univ. v. Domains by Proxy Inc, FA 1145651 (Nat. Arb. Forum, May 26, 2005), it is also conscious of the fact that the overriding intention of the Policy is to provide a practical alternative to court proceedings to combat abusive domain name registrations.”
In this case, this Panel is satisfied that the Registrar has duly released the identity of the underlying registrant of the disputed domain name. The Panel therefore finds that the Respondent is in fact Ivan Pleshko. Given that the identity of the registrant is known, this Panel will decide on the merits of this case in relation to Ivan Pleshko only. There is no reason to assess the circumstances under the supposition that “Domain Admin” is a party to this case. A. Identical or Confusingly Similar
The Complainant has established registered rights to the trademark VALIUM. Moreover, in this Panels view the trademark VALIUM is very well-known, if not notorious.
The disputed domain name contains the Complainant’s trademark in its entirety. The additional hyphen and the word “online” are not sufficient to prevent a confusing similarity. According to well-established consensus, the top level domain “.biz” is not distinguishing.
Consequently, this Panel finds the disputed domain name confusingly similar to the trademark in which the Complainant has established rights. B. Rights or Legitimate Interests
It is a consensus view, amongst UDRP panels, that a respondent's default does not automatically result in a decision in favour of the complainant. The Complainant is still required to make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions Second Edition (“WIPO Overview, 2.0”), paragraph 2.1.; see also The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064; and Berlitz Investment Corp. v. Stefan Tinculescu,WIPO Case No. D2003-0465. Further, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.
The Complainant has asserted that no licence, permission, consent or authorization has been granted to the Respondent. Moreover, the Complainant has stated that there is no reason why the Respondent would have a right or legitimate interest to the disputed domain name, which leads to a web site which directs visitors to online pharmacies where VALIUM can be bought prescription free.
Having considered the submissions of the Complainant, and the lack of Response from the Respondent, the Panel finds that the Respondent is not connected with the Complainant and is not commonly known by the disputed domain name, but uses the Complainant’s mark with an intention to derive commercial advantage of the Complainant’s VALIUM trademark. Such use by the Respondent is not a legitimate non-commercial or fair use and does not confer any rights in favour of the Respondent. C. Registered and Used in Bad Faith
The Respondent’s use of the disputed domain name to direct visitors to online pharmacies where the pharmaceutical product VALIUM is available for sale, may be evidence of bad faith use under the Policy. It is in this Panels view apparent that the disputed domain name was registered with knowledge the Complainant’s trademark and with the intention of attracting customers for commercial gain by creating a likelihood of confusion with that same mark. Even if the sale of the VALIUM products would be of genuine goods deriving from the Complainant, the Respondent had or has no right to register and use the disputed domain name.
This Panel notes that millions of people worldwide have used the prescription drug VALIUM to get relief from insomnia and anxiety and that this drug may be addictive. In light of the large number of domain name dispute cases where the disputed domain name consists of a pharmaceutical product only to be sold with prescription, the Panel concurs with the following statement by the Panel in F. Hoffmann-La Roche AG v. Private Whois , WIPO Case No. D2011-1463:
“Lastly, in the Panel’s opinion, the fact that supposedly authentic VALIUM drugs are offered for sale online without prescription is to be regarded as an additional factor revealing bad faith in the use of the disputed domain name.”
Consequently, the Panel finds that the disputed domain name was registered and is being used in bad faith under 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.
Jonas Gulliksson
Sole Panelist
Dated: December 2, 2011
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