The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, internally represented.
The Respondent is Private Whois of Nassau, Bahamas. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with I Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 29, 2012. On March 29, 2012, the Center transmitted by email to I Corp. a request for registrar verification in connection with the disputed domain name. On April 2, 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 April 5, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 25, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 26, 2012.
The Center appointed Nick J. Gardner as the sole panelist in this matter on May 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
The relevant facts are straightforward and can be summarized very briefly as follows:
The Complainant is one of the world's largest pharmaceutical companies.
One of its products is a sedative and anxiolytic drug belonging to the benzodiazepine family which it markets under the trade mark VALIUM. It has marketed the drug under that name since at least 1961.
The Complainant has registered the word “valium” as a trademark in hundreds of countries. By way of example reference is made by the Complainant to the International Registration No. R250784, with a priority date for the mark VALIUM of October 20, 1961.
The drug as marketed under the trade mark VALIUM is extremely well known.
“Valium” is a made-up word with no other meaning, coined by the Complainant for its product.
The Respondent is using the Domain Name in connection with a web site “www.” which provides a number of links to third party suppliers of products, many of which are pharmaceuticals of one sort or another. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions are equally straightforward and can be summarized as follows:
The Domain Name is confusingly similar to its trade mark VALIUM in which it clearly has rights. Addition of the letters “uk” does not distinguish the Domain Name.
The Respondent has no rights or legitimate interests in the term “valium”. There is no other meaning associated with valium or valiumuk other than in relation to the Complainant’s product.
The Domain Name was registered and is being used in bad faith. In this respect the Complainant relies upon various UDRP decisions that using the Domain Name in connection with a web site which provides links to third party goods and services amounts to bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(i) The Domain Name is identical with or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(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. A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the trade mark VALIUM. Although no details have been provided as to turnover or sales figures, the drug under the name VALIUM has clearly been marketed on an international basis on a substantial scale and is well known. Further, the Complainant has a wide range of registered trade mark rights in the word “valium”.
The Domain Name is confusingly similar to the VALIUM trade mark. Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy, “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662).
It is established that, where a mark is the distinctive part of a disputed domain name, the disputed domain name is considered to be confusingly similar to the registered mark (DHL Operations B.V. v. DHL Packers,WIPO Case No. D2008-1694).
It is also established that the addition of a generic term (such as here the letters “uk” which are commonly used as a geographical designation of the United Kingdom of Great Britain and Northern Ireland) to the disputed domain name has little, if any, effect on a determination of legal identity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman,WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does not exclude the likelihood of confusion (PRL USA Holdings, Inc. v. Spiral Matrix,WIPO Case No. D2006-0189).
Accordingly the Panel finds that the Domain Name is confusingly similar to the Complainant’s trade mark. Accordingly the first condition of paragraph 4(a) of the Policy has been fulfilled. B. Rights or Legitimate Interests
“Valium” is a made-up word with no other meaning save in relation to the Complainant’s product. The addition of the letters “uk” do not provide any additional basis for the Respondent to claim rights in the composite word.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to the Respondent of the dispute, use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the domain name, even if the Respondent has acquired no trade mark or service mark rights; or
(iii) the Respondent is 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 trade mark or service mark at issue.
None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Domain Name or to use the VALIUM trade mark. The Complainant has prior rights in the VALIUM trade mark which precede the Respondent’s registration of the Domain Name. The Complainant has therefore established a prima facie case that the Respondent has no rights and legitimate interests in the Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Domain Name (see for example Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
The Panel finds that the Respondent has failed to produce any evidence to establish its rights or legitimate interests in the Domain Name. Accordingly the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled. C. Registered and Used in Bad Faith
In the present circumstances, the distinctive nature of the VALIUM trade mark, and the evidence as to the extent of the reputation the Complainant enjoys in the VALIUM trade mark, and the confusingly similar nature of the Domain Name to the VALIUM trade mark, and the lack of any explanation from the Respondent as to why it registered the Domain Name lead the Panel to conclude the registration and use was in bad faith.
In the present case, the Panel concludes the Respondent was aware of the Complainant’s VALIUM trade mark when it registered the Domain Name. The Panel concludes that it is highly likely that the Respondent selected the Domain Name because of its similarity with the Complainant’s VALIUM Trade Mark. The addition of only the letters “uk” suggests to the Panel that the Respondent was deliberately choosing a name with a close and confusing connection to the Complainant’s product. The Panel finds it difficult to conceive of any use which the Respondent could make of the Domain Name which would be legitimate. Further the Panel notes the Respondent has not filed a Response and hence has not availed itself of the opportunity to present any case of legitimate use that it might have. The Panel infers that none exists.
The website operated by the Respondent at the Disputed Domain Name comprises a series of “click through” links to other third party websites. The Panel infers that some consumers, once at the Respondent’s website will follow the provided links and “click through” to other sites which offer products some of which may compete with those of the Complainant. The Respondents presumably earn “click through” linking revenue as a result. The Panel suspects the Respondent’s website is probably automatically generated and it is not clear to the Panel whether this is being arranged by the Respondent directly or by a third party provider. This does not however matter. It is well established that where a Domain Name is used to generate revenue in respect of “click through” traffic, and that traffic has been attracted because of the name’s association with the Complainant, such use amounts to use in bad faith, see for exampleShangri-La International Hotel Management Limited v. NetIncome Ventures Inc.,WIPO Case No. D2006-1315; Owens Corning v. NA,WIPO Case No. D2007-1143; McDonald’s Corporation v. ZusCom,WIPO Case No. D2007-1353; Villeroy & Boch AG v. Mario Pingerna,WIPO Case No. D2007-1912; Rolex Watch U.S.A., Inc. v. Vadim Krivitsky,WIPO Case No. D2008-0396.
As a result, and applying the principles in the above noted decisions, the Panel finds that the Domain Name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled. 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 Domain Name, , be transferred to the Complainant.
Nick J. Gardner
Sole Panelist
Dated: May 8, 2012
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