The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally.
The Respondent is Domains of Tokyo, Japan. 2. The Domain Name and Registrar
The disputed domain name is registered with Wild West Domains, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 7, 2011. On November 8, 2011, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the disputed domain name. On November 8, 2011, Wild West Domains, Inc. transmitted by email to the Center its verification response confirming that Domains is listed as the registrant and providing the contact details.
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 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 5, 2011.
The Center appointed Gunnar Karnell as the sole panelist in this matter on December 9, 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 one of the world’s leading research-focused healthcare groups in the fields of pharmaceuticals.
The disputed domain name was registered by the Respondent on October 25, 2011.
The Complainant has requested that the disputed domain name be transferred to the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant bases its Complaint on its trademark VALIUM. Registrations of the mark, presently in over a hundred countries, go back to October 20, 1961, hence predating the registration of the disputed domain name. The trademark, designating a sedative and anxiolytic drug belonging to the benzodiazepine family, is notoriously well-known all over the world.
The disputed domain name incorporates the Complainant’s trademark to which are added the descriptive terms “buy” and “online” as well a “rx” that means prescription medicines, and hyphens, none of which distinguishes the disputed domain name from the trademark or obviates ascertainment of confusing similarity of the disputed domain name to the trademark.
The Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant has not consented to the use of its trademark in the disputed domain name. The Respondent uses it to direct Internet users to websites which are search engines composed of sponsored links. The Respondent’s reason in registering the disputed domain name is to benefit from the reputation of the trademark VALIUM and illegitimately trade on its fame for commercial gain and profit.
The disputed domain name was registered in bad faith, because at the time of its registration the Respondent must have known about the Complainants trademark VALIUM, and the disputed domain name is used in bad faith since the Respondent’s website evidences that the Respondent intentionally attempts for commercial purposes to attract Internet users to it by creating a likelihood of confusion with the Complainant’s well-known trademark as to the source, affiliation and endorsement of the Respondent’s website or of products or services posted on it or linked to the website. The Respondent is intentionally misleading consumers so as to attract them to other websites in belief that the websites behind links are associated or recommended by the Complainant. Consequently, the Respondent may generate unjustified revenues for each “click-through” by online consumers over the sponsored links, capitalizing on the VALIUM trademark’s reputation. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The factual foundation of the Complainant’s contentions, as presented by the Complainant, while supporting its non-contradicted complaint by written evidence and reference to earlier UDRP decisions, leads the Panel to the following conclusions: A. Identical or Confusingly Similar
The Complainant’s trademark VALIUM has been proven by ample written documentation to have been registered and well-known worldwide at the time of registration of the disputed domain name. The Panel sees no reason to pay regard to the elements in the disputed domain name that surround the trademark. The similarity of the trademark and the disputed domain name as registered and in use is in this Panel’s view obviously confusing. B. Rights or Legitimate Interests
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and there has been no rebuttal by the Respondent. Nothing in the case file provided by the Center to this Panel gives reason to believe that the Respondent has or has had any rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
Absent any indication in the case file of elements that might tell against giving credence to the Complainant’s assertions regarding facts leading up to its conclusions that the disputed domain name has been registered and is used in bad faith, the Panel confirms that the conditions about bad faith registration and bad faith use for a transfer of the disputed domain name to the Complainant are satisfied. 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.
Gunnar Karnell
Sole Panelist
Dated: December 12, 2011
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