The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally.
The Respondent is Private Whois of Nassau, Bahamas. 2. The Domain Name and Registrar
The disputed domain name is registered with I Corp. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 29, 2012. On February 29, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 2, 2012, the Registrar 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 5, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 25, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 26, 2012.
The Center appointed Alain Bensoussan as the sole panelist in this matter on April 13, 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 Complainant was founded in 1896, and is, together with its affiliated companies, one of the world’s leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics. The Complainant has operations in more than 100 countries.
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. 250784) has a priority date that dates back to October 20, 1961.
The mark VALIUM designates a sedative and anxiolytic drug belonging to the benzodiazepine family, which enabled the Complainant to build a world-wide reputation in psychotropic medications.
The disputed domain name was registered on February 14, 2012. 5. Parties’ Contentions A. Complainant
The Complainant asserts that the disputed domain name is confusingly similar to the numerous and well-known VALIUM trademarks insofar as it incorporates the VALIUM mark in its entirety. The addition of the generic term “professional” does not sufficiently distinguish the disputed domain name from the VALIUM trademarks.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because:
- the Complainant has exclusive rights to the VALIUM trademark;
- the Complainant has not licensed, permitted or authorized the Respondent to use the VALIUM trademark for a domain name;
- the Respondent uses the disputed domain name for commercial gain and with the purpose of capitalizing on the name of the Complainant’s mark VALIUM as it directs Internet users to an online pharmacy.
In relation to the requirement of bad faith registration and use of the disputed domain name, the Complainant contends as follows:
- the Respondent had inevitably knowledge of the Complainant’s well-known VALIUM product/trademark at the time of the registration of the disputed domain name on February 14, 2012;
- the Respondent has intentionally attempted for commercial purpose to attract Internet users to the Respondent’s website, 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 the products or services posted on or linked to the Respondent’s website;
- The Respondent is intentionally misleading and confusing consumers by making them believe that the websites behind those links are associated or recommended by the Complainant. As a result, the Respondent may generate unjustified revenues and, therefore, is illegitimately capitalizing on the fame of the VALIUM trademark. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Panel examines the case according to paragraph 4(a) of the Policy applicable to the instant case and according to which the holder of a domain name ending in “.com” is required to submit to a mandatory administrative proceeding in the event that a third party (a “complainant”) asserts to the applicable Provider, in compliance with the Rules, that :
(i) (the) domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) (the respondent has) no rights or legitimate interests in respect of the domain name; and
(iii) (the) domain name has been registered and is being used in bad faith.
Notwithstanding the default of the Respondent, the Complainant has to prove the above three elements.
The Panel also refers to several UDRP panel decisions according to which:
- the first condition is satisfied when the relevant trademark is recognizable within the domain name, which only adds to this trademark common, dictionary, descriptive terms, this construction of the domain name being insufficient to prevent confusion with Internet users (Fondation Le Corbusier v. Monsieur Bernard Weber, Madame Heidi Weber,WIPO Case No. D2003-0251, et al., Denial, Transfer in Part; America Online, Inc. v. Johuathan Investments, Inc., and AOLLNEWS.COM,WIPO Case No. D2001-0918, inter alia, Denial, Transfer in Part); the only exception to this rule is when a not very distinctive trademark is incorporated with other words so that it cannot be considered as the dominant component of the domain name (Hachette Filipacchi Presse v. Vanilla Limited/Vanilla Inc/Domain Finance Ltd.,WIPO Case No. D2005-0587, et al., Cancellation, with Denial in Part).
- the top-level suffix in the domain name, e.g. “.com” is disregarded when assessing the risk of confusion since it is merely a technical requirement of registration of a domain name (Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic,WIPO Case No. D2000-1698, , Transfer);
- as far as the second element has to be proven, according to a consensus view, the Complainant “is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP” (See paragraph 2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) and the quoted relevant decisions such as Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455, , Transfer). A. Identical or Confusingly Similar
The Complainant has proved that it owns one international trademark registration for VALIUM No. 250784 which designates numerous countries all around the world and has been registered since October 20, 1961 in Switzerland, the priority country. Moreover, the Complainant has evidenced that the trademark VALIUM is known. Finally, it is not doubtful that the trademark VALIUM is well-known worldwide by professionals, as well as by the general public for pharmaceuticals products.
Moreover, the Complainant’s trademark VALIUM has been proven to have been registered and well-known at the time of registration of the disputed domain name.
The disputed domain name comprises the VALIUM trademark in its entirety with the additional generic word “professional”. Numerous previous UDRP decisions state that the mere addition of generic or common terms such as “professional” 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 is satisfied that the Complainant has succeeded to evidence that the disputed domain name is identical or confusingly similar to a trademark or service in which the Complainant has rights, under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant has demonstrated its exclusive rights to the mark VALIUM. The Complainant contends that he has never granted the Respondent any permission, license, authorization or consent to use VALIUM in the disputed domain name. There was no evidence to indicate that the Respondent was known by the name ”Valium”.
The disputed domain name resolves to a website that provides online pharmacy services and contains Internet links to third party websites. Presumably, the website operator or owner also earns commissions through Internet traffic diverted from the website. The click-trough business model is commonly referred to as click-through services.
The Respondent’s use of the VALIUM trademark cannot be regarded as a bona fide offering of goods and services or one which is fair or noncommercial in nature. The Panel also agrees with the Complainant’s contention that the use of the VALIUM trademark as part of the disputed domain name to provide online pharmacy services cannot give rise to a legitimate interest (Pfizer, Inc. v. jg (a/k/a Josh Green,WIPO Case No. D2004-0784).
As mentioned above, according to the consensus view indicated in paragraph 2.1 of the WIPO Overview 2.0, the Complainant “is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name”.
The Respondent failed to bring contrary evidences to the assessments and evidences filed by the Complainant. In particular, the Respondent did not demonstrate that he was authorized to use the well-known VALIUM trademark.
Taking into account all these elements, the Panel is satisfied that the Complainant has succeeded to evidence that the Respondent has no rights or legitimate interests in respect of the disputed domain name, under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel agrees with the contention by the Complainant that the Respondent had knowledge of the Complainant’s trademark when it registered the disputed domain name insofar as:
- the date of registration of the VALIUM trademark pre-dates the registration of the disputed domain name;
- the VALIUM product/trademark is well-known worldwide.
In view of the evidences relating to the use of the disputed domain name, which have not been argued by the Respondent, the Panel agrees with the Complainant in that the Respondent is deliberately trying, in order to achieve commercial gain, to mislead and to attract Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s well-known mark as to the source, affiliation and endorsement of the Respondent’s website or the products or services posted on or linked to the Respondent’s website.
The content of the website which was active under the disputed domain name is highly deceiving. The consumers were likely to believe that the online pharmacy and the Internet links to third party websites on the Respondent’s website were either associated with or recommended by the Complainant. The Panel finds that the Respondent may have generated unjustified revenues and was illegitimately capitalizing on the reputation of the mark VALIUM.
Moreover, further to the Complaint, the Panel has found that the Respondent has withdrawn all the website pages which were previously available from the disputed domain name and ceased using the disputed domain name. The Panel interprets the withdrawal of the disputed domain name’s website as evidencing that the Respondent admitted that the disputed domain name has been registered and was used in bad faith.
Taking into account all these elements, the Panel is satisfied that the Complainant has succeeded to evidence that the disputed domain name has been registered and is being used in bad faith, under 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.
Alain Bensoussan
Sole Panelist
Dated: April 26, 2012
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