Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented by F. Hoffmann-La Roche AG, Switzerland.
Respondent is Viktor Konin of Ekaterinburg, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name is registered with DomainContext, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 26, 2012. On January 27, 2012, the Center transmitted by email to DomainContext, Inc. a request for registrar verification in connection with the disputed domain name. On January 30, 2012, DomainContext, Inc. 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 31, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 20, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 21, 2012.
The Center appointed Halvor Manshaus as the sole panelist in this matter on March 1, 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 was founded in 1896, and is, together with its affiliated companies, one of the world’s leading research-focused healthcare groups within the fields of diagnostics and pharmaceuticals. Complainant has operations in more than 100 countries. Several of Complainant’s products, such as VALIUM, are well-known worldwide.
Complainant is the owner of a number of registered trademarks, including the mark VALIUM protected in a significant number of jurisdictions. Reference is made to International Registration No. R250784 VALIUM, priority dated October 20, 1961.
Respondent is a private individual, Mr. Viktor Konin of Ekaterinburg, Russian Federation.
The disputed domain name was registered by Respondent on January 1, 2012. 5. Parties’ Contentions A. Complainant
Complainant holds that the disputed domain name is confusingly similar to Complainant’s mark VALIUM.
Complainant further argues that Respondent does not have any rights or legitimate interests in respect of the disputed domain name. Complainant has exclusive rights to the use of the mark VALIUM, and has never granted Respondent any license, permission or authorization to the use of said mark. In Complainant’s view, Respondent uses the mark in order to benefit from Complainant’s reputation to achieve commercial gain, thus illegitimately trading off the fame of Complainant’s mark VALIUM.
Additionally, Complainant argues that the domain name has been registered and is being used in bad faith by Respondent, by attracting Internet users, searching for Complainant’s products, to the website corresponding to the disputed domain name. Complainant holds that Respondent creates a likelihood of confusion with Complainant’s mark as to the source, thus intentionally misleading Internet users to the website in order to achieve commercial gain. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, a complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which it has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
As evidenced above, Complainant has exclusive rights to the mark VALIUM through its registration and use of said mark. Complainant’s registration of the mark VALIUM significantly predates Respondent’s registration of the disputed domain name. The disputed domain name incorporates Complainant’s mark VALIUM in its entirety and the generic terms “online” and “now”.
Previous UDRP decisions state that the mere addition of generic or common terms such as “online” and “now” to a registered trademark is insufficient to avoid confusing similarity between a domain name and the trademark of a complainant. Reference is made to Siemens AG v. Private Registration Aktien Gesellschaft,WIPO Case No. D2011-1163; Swarovski Aktiengesellschaft v. Kimi DeLuca,WIPO Case No. D2007-0252; PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS),WIPO Case No. D2003-0696; PepsiCo, Inc. v. Diabetes Home Care, Inc. and DHC Services,WIPO Case No. D2001-0174; and Parfums Christian Dior v. 1 Netpower, Inc.,WIPO Case No. D2000-0022.
Thus, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark. B. Rights or Legitimate Interests
Complainant has demonstrated its exclusive rights to the mark VALIUM. Complainant has never granted Respondent any permission, license, authorization or consent to use VALIUM in the disputed domain name. It has not been evidenced that Respondent trades or is commonly known under any name incorporating the mark VALIUM.
It follows from previous UDRP decisions that it is sufficient for a complainant to make a prima facie showing of its assertion under paragraph 4(c) of the Policy in order to shift the burden of proof of rights and legitimate interests to Respondent, cf. section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). The presented evidence and circumstances referred to by Complainant, in the Panel’s view, establish a prima facie showing that Respondent has no rights or legitimate interests in the disputed domain name. Respondent has failed to produce any counter-evidence of its rights or legitimate interests in the disputed domain name.
The Panel therefore, on the basis of the available record, concludes that Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The website corresponding to the disputed domain name offers for sale Complainant’s products.
The Panel agrees with Complainant in that Respondent is deliberately trying to mislead Internet users, searching for Complainant’s products, to the website to which the disputed domain name resolves. Respondent is trading off and attempting to benefit from the reputation of the mark VALIUM in order to achieve commercial gain, by creating a likelihood of confusion in the minds of the consumers as to the source, affiliation and endorsement of the website and the products and services therein. There is a definite risk that consumers will believe that the online pharmacies on the website are either associated with or recommended by Complainant. The Panel finds that Respondent may generate unjustified revenues and is illegitimately capitalizing on the reputation of the mark VALIUM.
The Panel cannot see that Respondent is making a legitimate noncommercial or fair use of the disputed domain name, cf. paragraph 4(c)(iii) of the Policy. Reference is made to Hoffmann-La Roche Inc. v. #1 Viagra Propecia Xenical & More Online Pharmacy,WIPO Case No. D2003-0793; “[…] it is evident that Respondent is not making a legitimate noncommercial or fair use of the Domain Name under Policy (c)(iii). The Respondent's use is manifestly commercial. It sells pharmaceuticals on the website associated with the challenged Domain Name”.
Thus, the Panel finds that the disputed domain name has been registered and is being used in bad faith. 7. Decision
Complainant has requested that the disputed domain name be transferred to Complainant.
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 Complainant.
Halvor Manshaus
Sole Panelist
Dated: March 15, 2012
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