Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally.
Respondent is Private Whois Service of Nassau, Bahamas. 2. The Domain Name and Registrar
The disputed domain name is registered with I Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 18, 2012. On January 18, 2012, the Center transmitted by email to I Corp. a request for registrar verification in connection with the disputed domain name. On January 19, 2012, I Corp. transmitted by email to the Center its verification response confirming that Respondent 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 Respondent of the Complaint, and the proceedings commenced on January 23, 2012. In accordance with the Rules, paragraph 5(a), the due date for the Response was February 12, 2012. Respondent did not submit any Response. Accordingly, the Center notified Respondent’s default on February 14, 2012.
The Center appointed Stephanie G. Hartung as the sole panelist in this matter on February 17, 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
Complainant, together with its affiliated companies, is one of the world’s largest research-focused healthcare providers of pharmaceuticals and diagnostics with operations in numerous countries worldwide.
The VALIUM trademark designates a sedative and anxiolytic drug belonging to the benzodiazepine family.
The VALIUM trademark is registered in favor of Complainant in numerous countries around the world. Complainant has submitted evidence that it holds, inter alia:
International word mark VALIUM, World Intellectual Property Organization (WIPO) Registration Number: R250784; Registration Date: December 20, 1961; Status: Active.
The disputed domain name was registered on November 16, 2011; it redirects to a website at “www.” which, in turn, is linked to various online pharmacies that offer a wide range of pharmaceutical products, including Complainant’s VALIUM medicine, for online sale.
Complainant requests the disputed domain name to be transferred to Complainant. 5. Parties’ Contentions A. Complainant
Complainant asserts that the disputed domain name is confusingly similar to Complainant’s VALIUM trademark because (1) the disputed domain name incorporates the trademark in its entirety and (2) the addition of the generic term “reviews” does not sufficiently distinguish the disputed domain name from that trademark. Complainant points to the fact that the VALIUM trademark is well-known and notorious and that Complainant’s registration and use of the VALIUM trademark predates Respondent’s registration and use of the disputed domain name.
Complainant further argues that Respondent has no rights or legitimate interests in respect of the disputed domain name because (1) Complainant has exclusive rights in the VALIUM trademark and has granted Respondent neither a license/permission/authorization nor any other consent to such use as a domain name and (2) Respondent obviously uses the disputed domain name for commercial gain and with the purpose of capitalizing on the fame of Complainant’s VALIUM trademark and (3) the disputed domain name clearly alludes to Complainant.
Finally, Complainant suggests that the disputed domain name was registered in bad faith since at the time of registration on November 16, 2011, Respondent had knowledge of Complainant’s well-known VALIUM trademark. Moreover, Complainant argues that the disputed domain name is being used in bad faith since when viewing Respondent’s website one realizes that Respondent has intentionally attempted (for commercial gain) to attract Internet users by creating a likelihood of confusion with Complainant’s well-known VALIUM trademark as to the source, affiliation and endorsement of Respondent’s website or of the products and services posted thereon or linked thereto. B. Respondent
The Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Respondent's default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(e) of the Rules provides that if Respondent does not submit a Response, in the absence of special circumstances, the Panel is to decide the dispute solely based upon the Complaint. A. Identical or Confusingly Similar
The Panel concludes that the disputed domain name is confusingly similar to the trademark VALIUM in which Complainant has shown to have rights.
The disputed domain name not only incorporates the VALIUM trademark in its entirety. Moreover, it has been held in numerous UDRP decisions and has meanwhile become a consensus view among panelists (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.9) that the addition of a generic or descriptive term or geographical wording to a trademark in a domain name is normally insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP. Accordingly, the mere addition of the generic term “reviews” is not capable to dispel the confusing similarity arising from the incorporation of Complainant’s VALIUM trademark into the disputed domain name (see also: F. Hoffmann-La Roche AG v. Antonino Chiaramonte,WIPO Case No. D2011-1955).
Therefore, the first element under the Policy as set forth in paragraph 4(a)(i) in the case at hand is fulfilled. B. Rights or Legitimate Interests
The Panel is further convinced that on the basis of Complainant’s undisputed contentions, Respondent apparently has neither made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent made a legitimate noncommercial or fair use without intent for commercial gain.
Complainant has produced sufficient evidence that the product “Valium” and, thus, the VALIUM trademark acquired over the years fame and celebrity in the United States of America and throughout the world. Many UDRP Panels, therefore, have considered VALIUM as a well-known trademark (e.g., Roche Products Inc. v. Dmitriy Feschenko,WIPO Case No. D2010-1665; F. Hoffmann- La Roche AG v. Ashima Kapoor,WIPO Case No. D2005-1351; F. Hoffmann-La Roche AG v. NetMarketing cc,WIPO Case No. D2005-1216). This Panel, therefore, concludes that Respondent had knowledge of Complainant’s VALIUM trademark at the time of the registration of the disputed domain name and that the latter obviously alludes to Complainant’s VALIUM trademark and product.
At the same time, Respondent obviously has not been authorized to use Complainant’s VALIUM trademark, neither as a domain name nor on Respondent’s website or in any other way. Respondent, however, uses the disputed domain name to resolve to a website which redirects to various online-pharmacies promoting the sale of Complainant’s VALIUM product as well as numerous other pharmaceuticals some of which are apparently competing with those of Complainant. In the absence of any other reasonable explanation, such use of the disputed domain name may neither be deemed legitimate nor non commercial nor fair (see also: F. Hoffmann-La Roche AG v. Private Whois ,WIPO Case No. D2011-1484).
Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview 2.0, paragraph 2.1). In the case at hand, Respondent did not reply to Complainant’s allegations as they were included in the Complaint duly notified to Respondent by the Center on January 23, 2012.
Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and thus the second element of the Policy. C. Registered and Used in Bad Faith
The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith.
The Panel takes the view that the redirection of the disputed domain name, which is confusingly similar to Complainant’s trademark VALIUM, to a website which is linked to various online-pharmacies promoting the sale of Complainant’s VALIUM product as well as numerous other pharmaceuticals some of which are apparently competing with those of Complainant, is a clear indication that Respondent intentionally attempted to attract, for commercial gain, Internet users to its own website, by creating a likelihood of confusion with Complainant’s VALIUM trademark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or a product thereon. Such circumstances shall be evidence of registration and use of the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy (see also: F. Hoffmann-La Roche AG v. Private Whois Service,WIPO Case No. D2011-2245; F. Hoffmann-La Roche AG v. Private Whois ,WIPO Case No. D2011-1484).
In connection with this finding, it carries weight in the eyes of the Panel that Respondent apparently being a Privacy Registration Service has been confirmed to be the factual registrant of the disputed domain name. It is a consensus view among panelists that, although the use of a privacy registration service is not in and of itself an indication of bad faith, the manner in which such service is used can in certain circumstances constitute a factor indicating bad faith (see WIPO Overview 2.0, paragraph 3.9).
Therefore, the Panel finds that also the third element under the Policy as set forth in paragraph 4(a)(iii) is fulfilled and that, accordingly, Complainant has satisfied all of the three requirements 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 Complainant.
Stephanie G. Hartung
Sole Panelist
Dated: February 22, 2012
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