The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland.
The Respondent is Private Whois 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 February 22, 2012. On the same date, the Center transmitted by email to I Corp a request for registrar verification in connection with the disputed domain name. On February 24, 2012, I Corp transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on March 1, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 21, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 22, 2012.
The Center appointed Zoltán Takács as the sole panelist in this matter on April 10, 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.
The language of this administrative proceeding is English, that being the language of the registration agreement. 4. Factual Background
The Complainant, together with its affiliated companies, is among the world wide leading healthcare companies in the field of pharmaceuticals and diagnostics with operation in more than 100 countries.
The Complainant is the owner of the international trademark registration no. 250.784 VALIUM since December 20, 1961, the trademark being registered in more than 40 countries for variety of goods including medicines, pharmaceutical drugs and preparations.
The disputed domain name was created February 6, 2012 and is being used for advertising and linking website to for-profit on-line pharmacies. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name, is confusingly similar to its VALIUM trademark, since it wholly incorporates the trademark, and that the addition of descriptive words “usa” and “fastdelivery” does not dispel confusing similarity.
The Complainant submits that the VALIUM trademark constitutes its property, no rights in connection with its trademark can pass to any third party without formal permission or authorization and the Respondent has never been granted any such rights.
The Complainant asserts that the disputed domain name was registered and is being used in bad faith, since it functions as an advertising link through which Internet users are directed to on-line pharmacies. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules requires that the Panel’s decision be made “on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
It has been a consensus view in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) that a respondent’s default does not automatically result in a decision in favor of the complainant.
A complainant must establish each of the three elements required by paragraph 4(a) of the Policy in order to succeed with the complaint, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights,
(ii) the respondent and registrant of the disputed domain name has no rights or legitimate interest 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
Under this paragraph, the Complainant must first establish that it has rights in a trademark or service mark, and second that the disputed domain name is identical or confusingly similar to its trademark.
The Complainant has provided the extract evidencing that it enjoys trademark protection for the trademark VALIUM as early as October 20, 1961 (filing date) in more than 40 jurisdictions worldwide. The Complainant’s international trademark was registered on December 20, 1961 by the World Intellectual Property Organization under No. 250.784 and the complainant therefore satisfies the requirement of having trademark rights.
Having determined that the Complainant has trademark rights in VALIUM, the Panel next needs to assess, whether the disputed domain name is identical or confusingly similar to VALIUM. The disputed domain name comprises three elements. It begins with fully incorporating the Complainant’s VALIUM trademark to be followed by terms “usa” and “fastdelivery”.
According to paragraph 1.2 of the WIPO Overview 2.0, in order to satisfy the threshold test for confusing similarity under the Policy, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, descriptive terms typically being regarded as insufficient to prevent threshold Internet user confusion.
The VALIUM trademark of the Complainant is the only recognizable element in the disputed domain name, which can only be understood as term “valium” combined with the common and descriptive words “usa” and “fastdelivery” and the “.com” gTLD.
The Panel accepts the Complainant’s contention that the use of the terms “usa” and “fastdelivery” do not prevent the disputed domain name from being confusingly similar to the Complainant’s VALIUM trademark. It is likely to believe that consumers will think that the disputed domain name is connected with the Complainant, and for these reasons, this Panel finds that the first element of paragraph 4(a) of the Policy is satisfied. B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, the Respondents may demonstrate their rights or legitimate interests in the disputed domain name by showing any of the following circumstances, in particular but without limitation:
“(i) their use of, or demonstrable preparation to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services before any notice to;
(ii) they have been commonly known by the domain name;
(iii) they are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
In this case, the Complainant has submitted incontestable evidence that it owns exclusive rights in the VALIUM trademark and that the disputed domain name is being used to redirect Internet consumers to a website that entirely relate to selling of medicines, pharmaceutical drugs and preparations none of which has anything to do with the Complainant.
The Complainant neither authorized nor permitted the Respondent to use its VALIUM trademark in a domain name, or in any other way. The Complainant’s prior rights in the VALIUM trademark long preceded the date of registration of the disputed domain name.
It has been a consensus view of the UDRP panels, that although the burden to prove lack of the Respondent’s rights of legitimate interests in respect of the disputed domain name rests with the Complainant, this could result in often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the Respondent. If the Complainant makes out a prima facie case that the Respondent lacks rights of legitimate interests, the burden of production of such evidence shifts to the Respondent.
By defaulting and failing to respond, the Respondent has failed to offer this Panel any of the types of evidence set forth in paragraph 4(c) of the Policy, and facts and circumstances brought forward by the Complainant in regard to making out this requirement of the Policy convince the Panel that the Respondent has no rights or legitimate interests in the disputed domain name. Therefore, the Panel finds that the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of factors which, if found by the Panel to be present, shall be evidence of registration and use of the domain name in bad faith. This non-exclusive list includes:
“(i) circumstances indicating that you [the Respondent] have registered or you have acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name;
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct;
(iii) you have registered the domain name primarily for the purpose of disrupting the business of the competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location of a product or service on your website or location.”
This Panel finds that the Respondent has registered and used the disputed domain name in bad faith for at least the following reasons:
According to the World Health Organizations’ Glossary, “VALIUM is the originator brand name for diazepam. The use of this name is reserved exclusively for its owner as opposed to the generic name e.g. diazepam” (See “/medicines/areas/access/NPrices_Glossary.pdf”, page 231).
Over 40 years of registration and use the VALIUM trademark made it extensively recognizable and known not only in the pharmaceuticals industry and business but in general. The fact that the Respondent decided to entirely incorporate such recognized trademark into the disputed domain name is indicative to the Panel that the Respondent must have been aware of the trademark and its reputation and has registered the disputed domain name to misappropriate the value of the Complainant’s trademark.
The disputed domain name has been and is being used as an advertising and linking website to for-profit on-line pharmacies which offer pharmaceutical drugs and preparations that compete with the Complainant’s products. This misdirection of Internet traffic to the Respondent’s benefit, the Respondent’s use of the disputed domain name to promote sale of products in competition with the Complainant’s products is clear indicative of bad faith.
The Panel concludes that the Complainant has sufficiently demonstrated conditions set forth in paragraph 4(a)(iii) 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 the Complainant.
Zoltán Takács
Sole Panelist
Dated: April 21, 2012
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