The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland.
The Respondent is Customer Id 6630958, NA, Ma Ying Jo of Shanghai, China and/or PrivacyP of Nobby Beach, Australia. 2. The Domain Name and Registrar
The disputed domain name is registered with RegisterM Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 1, 2011. On November 1, 2011, the Center transmitted by email to RegisterM Corp (the “Registrar”) a request for registrar verification in connection with the disputed domain name. On November 6, 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 November 10, 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 November 11, 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 November 14, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 4, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 13, 2011.
The Center appointed Syed Naqiz Shahabuddin as the sole panelist in this matter on January 12, 2012. 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 following summary sets out the uncontested factual submissions made by the Complainant:
4.1 The Complainant and its group of companies is a leading research-focused healthcare group in the fields of pharmaceuticals and diagnostics, with global presence in more than 100 countries.
4.2 VALIUM is a long standing trademark of the Complainant which has been registered on a worldwide basis. One of the trademark registrations of the Complainant (International Registration No. R250784) has a priority date that dates back to October 20, 1961.
4.3 The VALIUM trademark is applied to sedative and anxiolytic drugs that belong to the benzodiazepine family. The drug enabled the Complainant to build a global reputation in psychotropic medication.
4.4 The disputed domain name was registered on October 24, 2011. 5. Parties’ Contentions A. Complainant
5.1 The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s VALIUM trademark. The disputed domain name comprises of the Complainant’s VALIUM trademark in its entirety and the descriptive words “buy”, “online” and “now” and does not sufficiently distinguish the disputed domain name from the VALIUM trademark.
5.2 The Complainant further contends that the Respondent does not have any rights or legitimate interests to the disputed domain name because:
(a) the Complainant has exclusive rights to the VALIUM trademark.
(b) the Complainant has not licensed, authorised or otherwise permitted the Respondent to use the VALIUM trademark for a domain name.
(c) the Respondent is not using the disputed domain name (or a name corresponding to the disputed domain name) in connection with a bona fide offering of goods or services as it resolves to a search engine comprising sponsored links.
(d) the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name as the Respondent seeks to trade on the fame of the VALIUM trademark for commercial gain and profit.
5.3 In relation to the requirement of bad faith registration and use of the domain name, the Complainant contends as follows:
(a) the Respondent had knowledge of the Complainant’s VALIUM trademark when it registered the disputed domain name on October 24, 2011.
(b) the content of the website which the disputed domain name resolves to indicate an intentional attempt by the Respondent to create a likelihood of confusion with the Complainant’s well known VALIUM trademark as to the source, affiliation and endorsement of the Respondent’s website or of the products or services posted on or linked to the website.
(c) the disputed domain name resolves to a website that promotes and/or offers products and services of third parties which allow click-through commissions from the diversion of Internet users. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In order to succeed in its Complaint, the Complainant is required to establish the following elements set out under paragraph 4(a) of the Policy:
(a) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(b) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(c) that the disputed domain name has been registered and is being used in bad faith.
6.1 Identical or Confusingly Similar to the Trademark
The Panel is satisfied with the evidence adduced by the Complainant to establish its rights to the VALIUM trademark. The trademark has been registered since 1961 and used by the Complainant on a global basis for its psychotropic medication.
The disputed domain name comprises the VALIUM trademark in its entirety with the additional descriptive words “buy”, “online” and “now”. When the VALIUM trademark is combined with the additional descriptive words, it suggests that the VALIUM drugs manufactured by the Complainant can be immediately purchased through the Internet.
As such, the distinctive feature of the disputed domain name remains the VALIUM trademark and the additional descriptive words do not distinguish the disputed domain name from the VALIUM trademark nor eliminate the likelihood of confusion (see Wal-Mart Stores, Inc. v Kuchora, Kal, WIPO Case No. D2006-0033).
As such the Panel finds that the disputed domain name is confusingly similar to the Complainant’s VALIUM trademark for the purpose of the Policy.
6.2 Rights or Legitimate Interests in the Disputed Domain Name
The Complainant’s assertions had not been rebutted by the Respondent to indicate whether it has any rights or legitimate interests to the disputed domain name.
The Complainant unequivocally denied granting the Respondent any licence, authority or permission to use the VALIUM trademark. There was also no evidence to indicate that the Respondent was known by the name “Valium”, “Buy”, “Online” or “Now”.
The disputed domain name resolves to a website that comprises only Internet links to products and services of third parties. Presumably, the website operator or owner earns commissions through Internet traffic diverted from the website. This business model is commonly referred to as click-through services.
In this Panel’s opinion, as the Respondent uses the VALIUM trademark as a critical feature of its domain name and the use thereof is unauthorized, then such use cannot be regarded as a bona fide offering of goods or services or one which is fair or non-commercial in nature (see also Sigikid H. Scharrer & Koch GmbH & Co. KG, MyBear Marketing-und Vertriebs GmbH, Mr. Thomas Dufner v Bestinfo,WIPO Case No. D2004-0990)
In the circumstances, the Panel is, therefore, satisfied that the second element of paragraph 4(a) of the Policy has been proven by the Complainant.
6.3 Registration and Use in Bad Faith
The Panel agrees with the contention by the Complainant that the Respondent had knowledge of the Complainant’s VALIUM trademark when it registered and started using the disputed domain name. The factors that were taken into account to arrive at this conclusion include the date of registration of the VALIUM trademark which pre-dated the registration of the disputed domain name by more than five decades and the widespread use of the VALIUM trademark at an international level.
The Panel is satisfied with the contention by the Complainant that the use of the VALIUM trademark as part of the disputed domain name appears to be an attempt to mislead or to divert Internet traffic to the Respondent’s website. The use of the VALIUM trademark seeks to represent a connection or association between the Respondent’s website and the Complainant or the Complainant’s products or services related to the VALIUM trademark.
As such, the Panel finds that bad faith has been demonstrated under paragraph 4(b)(iv) 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 domain name, be transferred to the Complainant.
Syed Naqiz Shahabuddin
Sole Panelist
Dated: January 29, 2012
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