The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, internally represented.
The Respondent is Bargin Register, Inc. - Client Services of Grand Cayman, GCM, KY, Overseas territory of the United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with Bargin Register Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 9, 2012. On March 9, 2012, the Center transmitted by email to Bargin Register Inc. a request for registrar verification in connection with the disputed domain name. The Center did not receive a response, thus additional requests were sent on March 14, 2012 and March 16, 2012. Since Bargin Register, Inc. failed to respond to these requests, the Center decided to proceed on the basis of potentially incomplete information. Therefore, the Center accepts no responsibility in the event of complications resulting from inaccurate or incomplete information in the concerned Registrar’s WhoIs database.
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), on March 20, 2012 the Center sent the Complaint and its annexes to Respondent via e-mail, and also a Written Notice of the Complaint via courier and facsimile, setting April 9, 2012 as the deadline by which Respondent could file a Response to the Complaint. However, delivery to Respondent failed in all cases due to false contact details and Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 10, 2012.
The Center appointed Fernando Triana, Esq. as the sole panelist in this matter on April 20, 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 Panel finds that the Center has discharged its responsibility under Paragraph 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of electronic and written notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted by Complainant and in accordance with the Policy, the Rules, the Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent. 4. Factual Background
Complainant together with its affiliated companies is one of the world’s leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics, with operations in over 100 countries.
Complainant owns the trademark VALIUM in a multitude of jurisdictions worldwide, including the European Community, Switzerland, Egypt, China, Vietnam, the Russian Federation, Sudan, and Algeria. The trademark VALIUM designates a sedative and anxiolytic drug belonging to the benzodiazepine family. Annex 3 to the Complaint comprises a certificate issued by World Intellectual Property Organization (WIPO) as the administrator of the Madrid System, attesting to the renewal on December 20, 2011 of the international registration certificate no. 250784. Complainant underlines that the priority date claimed for this international registration is October 20, 1961, corresponding to the filing date of the Swiss trademark application and further registration no. 188587.
Complainant contends that the trademark VALIUM is well-known. So as to prove this contention, Complainant included three articles published from 2003 to 2005 in renowned newspapers and magazines as Annex 5 to the Complaint.
The Panel wishes to highlight that a trademark’s alleged well-known character must be proven by the interested party and cannot simply be taken for granted. The Panel cannot accept the evidence of the VALIUM trademark’s well-known character in 2003 and 2005 as evidence of its fame in 2012. The famous or well-known character of a mark must be analyzed within a specific time. However, after i) conducting searches on the GOOGLE search engine of the Complainant and its trademark VALIUM, ii) reviewing recent UDRP decisions in which prior Panels held that the trademark VALIUM is well-known1, iii) conducting a search of the Complainant and its trademark VALIUM in Wikipedia, iv) visiting online drugstores and, v) evaluating the number of UDRP cases handled by the Center and the National Arbitration Forum regarding domain names including the trademark VALIUM, the Panel acknowledges that the well-known character of the VALIUM trademark can be extended until 2012. 5. Parties’ Contentions A. Complainant
1. Complainant’s trademark VALIUM is protected as such in a multitude of countries.
2. The disputed domain name is confusingly similar to the trademark VALIUM since the latter is wholly comprised in the former. The addition of the descriptive term “online” does not suffice to distinguish the disputed domain name from the registered and well-known trademark VALIUM.
3. Complainant has exclusive rights in the trademark VALIUM, and has not authorized/licensed its use to Respondent.
4. Respondent registered the disputed domain name in bad faith since at the domain name’s registration date (January 25, 2012) Respondent must have had knowledge of the trademark VALIUM.
5. Respondent is also using the disputed domain name in bad faith, given that he is intentionally attempting to attract Internet users to his website for commercial purposes, by creating a likelihood of confusion with the Complainant’s well-known trademark. B. Respondent
Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Likewise, paragraph 10(d) of the Rules, provides that “the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.”
The Panel wants to make special emphasis to the evidence filed by the parties to prove their assertions, which has been thoroughly studied in order to determine its relevance and weight in arriving to a decision. The statements that have been accompanied by evidence have been given more importance than the mere statements made by the parties without further demonstration to its existence. The Panel is empowered to confirm this evidence ex officio. In the present case the Panel considered necessary to exercise his power so as to complete and bring the evidence submitted by Complainant up to date regarding the well-known character of the trademark VALIUM.
Paragraph 4(a) of the Policy requires that Complainant proves each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(3) the disputed domain name has been registered and is being used in bad faith.
This discussion, based on the evidentiary support submitted by the Parties, will be developed as follows:
First of all (Section A), the Panel will determine whether or not the disputed domain name is identical or confusingly similar to the trademarks in which Complainant has rights. Secondly (Section B), the Panel will verify if Respondent has any rights or legitimate interests in respect of the disputed domain name; and thirdly (Section C), the Panel will establish whether or not the disputed domain name have been registered and are being used in bad faith by Respondent. Section A. Identical or Confusingly Similar
Complainant contends to be the owner of the trademark VALIUM in a multitude of jurisdictions since 1961. a) Existence of a trademark or service mark in which the Complainant has rights
Firstly, it is important to point out that Paragraph 4(a) of the Policy requires the existence of a trademark or a service mark, the rights to which may be acquired by registration before a competent office in a number of jurisdictions of the world.
The worldwide-accepted definition of a trademark, involves the concept of distinctiveness as the most relevant element. Said force gives the sign the capability to identify the products or services of its owner and differentiate them from the product and services of other participants in the market.
When a sign is registered as a mark, it is surrounded by a presumption of sufficient distinctive force, and the owner is granted an exclusive right over the mark, which entitles him to prevent any third party from using the registered sign or any other sign confusingly similar to it.
In this case, Complainant proved its rights in the trademark VALIUM. Annex 3 to the Complaint includes a copy of the renewal certificate issued by WIPO, as the Madrid System Administrator, attesting to the renewal on December 20, 2011 of the international registration no. 250784 of the trademark VALIUM in international classes 12, 33 and 54.
This information appears to be incontestable and conclusive evidence of Complainant’s ownership of the trademark and the exclusive right to use it in connection with the stated goods. The registration of a trademark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive5.
Thus, Complainant established its rights in the trademark VALIUM.
Therefore, the Panel concludes that Complainant has demonstrated registered rights in the trademark VALIUM for purposes of Paragraph 4(a)(i) of the Policy. b) Identity or confusing similarity between the Disputed Domain Name and Complainant’s trademark
Complainant alleges that the disputed domain name incorporates the trademark VALIUM, adding only the descriptive term “online”, which does not sufficiently differentiate the disputed domain name from the registered and well-known trademark VALIUM.
Before establishing whether or not the domain name is confusingly similar to the Complainant’s trademark VALIUM, the Panel wants to point out that the addition of generic top-level domains (gTLD), i.e., “.net“, “.com,” “.biz,” “.edu,” “.org”, ”.co” cannot be considered when determining if the domain name is identical or confusingly similar to the registered trademark. Neither the addition of country code top-level domains (ccTLD), i.e., “.co”, “.de”, “.cr”, “.es”, nor the insertion of a gTLD have a distinctive function.
UDRP Panels have unanimously accepted that the inclusion of the “.com” (gTLD), in the disputed domain name is not a factor in analyzing whether a disputed domain name is identical or confusingly similar to the mark in which Complainant asserts rights. In the Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico,WIPO Case No. D2000-0477, the Panel stated that “the addition of the generic top-level domain (gTLD) name “.com” is without legal significance since use of a gTLD is required of domain name registrants, “.com” is one of only several such gTLDs, and ‘.com’ does not serve to identify a specific enterprise as a source of goods or services.” This conclusion applies also to the “.net” gTLD.
In addition, the Panel agrees with the Complainant on the conclusion that including the descriptive term “online” at the end of the second-level domain name is not sufficient to make it different from the trademark VALIUM. The term “online” simply indicates an entity’s presence on the Internet, a common manner of doing business nowadays. Thus, “the addition of the generic term “online” (…) to the Complainant's trademark in the disputed domain name does not prevent a finding of confusing similarity to the Complainant's trademark”6.
As per this reasoning, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark VALIUM and thus, the requirement set forth in Paragraph 4(a)(i) of the Policy is duly complied with. Section B. Rights or Legitimate Interests a) Prima Facie Case
Regarding this second element of Paragraph 4(a) of the Policy, UDRP Panels have unanimously consented that requiring the Complainant to prove the lack of rights or legitimate interests of the Respondent in the disputed domain name is often an impossible task: it is not only a negative but also demands access to information that is mostly within the knowledge of the Respondent.
In Julian Barnes v. Old Barn Studios Limited,WIPO Case No. D2001-0121, the panel stated that:
“Is the Respondent required to adduce any such evidence, if the onus is on the Complainant to prove the three elements of paragraph 4 of the Policy? While the overall burden of proof is on the Complainant, this element involves the Complainant proving matters, which are peculiarly within the knowledge of the Respondent. It involves the Complainant in the often impossible task of proving a negative. In the Panel’s view the correct approach is as follows: the Complainant makes the allegation and puts forward what he can in support (e.g. he has rights to the name, the Respondent has no rights to the name of which he is aware, he has not given any permission to the Respondent). Unless the allegation is manifestly misconceived, the Respondent has a case to answer and that is where paragraph 4(c) of the Policy comes in. If the Respondent then fails to demonstrate his rights or legitimate interests in respect of the Domain Name, the complaint succeeds under this head”.
Therefore, a Complainant is required to make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Once this prima facie case is made, the burden of production shifts to Respondent, who must prove those rights or legitimate interests. If Respondent fails to do so, Complainant is deemed to have met the second element of Paragraph 4(a) of the Policy.
Complainant asserts that Respondent has no rights or legitimate interests in the domain name : Complainant has exclusive rights on the trademark VALIUM, and no license, permission, or authorization was granted to Respondent to use the trademark VALIUM in the disputed domain name. In addition, annex 6 to the Complaint includes a printout of the website to which the domain name resolves, showing that Respondent is using the disputed domain name for commercial gain and with the purpose of capitalizing the fame of the trademark VALIUM.
The Panel accepts this assertion as a prima facie case made by Complainant that shifts the burden of production to Respondent. b) Respondent’s rights or legitimate interests in the disputed Domain Name
Paragraph 4(c) of the Policy includes an enunciative listing of circumstances that prove Respondent’s rights or legitimate interests in a disputed domain name:
(i) before any notice of the dispute, Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if you have acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Despite of the Center’s efforts, Respondent did not received notice of the Complaint due to false contact details and therefore, did not file a Response to it.
However, the Panel believes that even if the Respondent was in receipt of the Complaint, Respondent could not have proven any rights or legitimate interests in the disputed domain name: the trademark VALIUM is worldly associated with its owner, that is, with Complainant. The Respondent is not commonly known by the words “Valium Online”. In addition, annex 6 to the Complaint shows that Respondent is indeed profiting from VALIUM’s worldwide fame and reputation, which is the opposite to a bona fide offering of goods.
This Panel finds on the record that Respondent lacks rights or legitimate interests in the disputed domain name . Therefore, the requirement set forth in Paragraph 4(a)(ii) of the Policy is duly complied with. Section C. Registered and Used in Bad Faith
According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(1) circumstances indicating that Respondent has registered or has 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 Respondent’s documented out-of-pocket costs directly related to the domain name; or
(2) Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(3) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(4) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his/her 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 his/her website or location or of a product or service on his/her website or location.
Complainant asserts that Respondent registered the domain name in bad faith, since he must have had knowledge of the trademark VALIUM on January 25, 2012.
The Panel agrees with Complainant. The fact that Respondent chose the “Valium” and “online” words to make up his domain name is in this Panel’s view evidence per se of his bad faith. This selection of words was deliberate and not product of chance: “Valium” is not a common word in the English, Spanish, German or French languages as the Panel confirmed through searches conducted in different online dictionaries7. Given the extent of the trademark VALIUM’s well-known character, Respondent simply could not have been unaware of it. Thus, he deliberately took someone else’s trademark to register a domain name and to create a business around it. This Panel deems that the mere fact of knowingly incorporating a third-party’s well-known mark in a domain name constitutes registration in bad faith. See Aktiebolaget Electrolux v. Jorgeariel Figueroa Rodríguez,WIPO Case No. D2011-1311, where the panel held: “The selection of this word is certainly not a random decision; the Panel finds that it is a consequence of Respondent’s prior knowledge of the mark. This fact, by itself, is registration in bad faith in the Panel’s opinion”.
In addition, Complainant contends that Respondent is using the domain name in bad faith, since “Respondent is intentionally attempting (for commercial purpose) 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 Respondent’s website of the products or services posted on or linked on Respondent’s website”.
The Panel concurs. This intention explains the selection of words with which Respondent made his domain name up. He knew that it would attract Internet users seeking “Valium” to the website from which he expected to make money. Thus, Respondent intentionally attempted to attract Internet users by creating a likelihood of confusion with Complainant’s mark. The more diverted Internet users he could attract, the more profit he would make.
Complainant also mentions that Respondent makes revenues or click through fees from consumers that click on the links posted on Respondent’s website. As in Microsoft Corporation v. Abdullah Ali, NAF Case No. 1423605, this Panel believes that “pay-per-click advertisement is a valid Internet advertising model which does not necessarily entail use of a domain name in bad faith. However, this Panel also believes that registering a domain name which comprises someone else’s well-known mark so as to make profit from diverted Internet users in the form of pay-per-click fees, is use in bad faith as per Policy 4(b)(iv)”.
Finally, the Panel considers that providing fake contact information when registering a domain name is also indicative of bad faith. Domain name registrants are required to provide accurate and updated contact information.
The three elements of the Policy, paragraph 4(a) are satisfied in the present case in respect to Respondent of the disputed domain name. 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.
Fernando Triana, Esq.
Sole Panelist
Dated: April 24, 2012
1 See F. Hoffmann-La Roche AG v. Private Whois Service,WIPO Case No. D2012-0081; F. Hoffmann-La Roche AG v. PrivacyP, Neeraj Khanna / E2 Solution,WIPO Case No. D2009-1496; and F. Hoffmann-La Roche AG v. Andris Maupalis TraffMan,WIPO Case No. D2007-1551.
2 The listing of products in international class 1 includes: Chemical preparations for scientific purposes, chemical substances for preserving food.
3 The listing of products in international class 3 includes: Cosmetics, essential oils, soaps.
4 The listing of products in international class 5 includes: Medicines, chemical preparations for medical purposes, pharmaceutical drugs and preparations, plasters, surgical dressings, herbicides and preparations for destroying vermin disinfectants, dietetic foods.
5 See Janus International Holding Co. v. Rademacher,WIPO Case No. D2002-0201.
6 See Farouk Systems, Inc. v. yishi,WIPO Case No. D2010-0006.
7 English: “”; Spanish: “ ”; French: “/en/dictionaries/french”; German: “”.
Full & Egal Universal Law Academy