The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally.
The Respondent is Fundacion Private Whois of Panama, Panama. 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 April 11, 2012. On April 12, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 13, 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 April. In accordance with the Rules, paragraph 5(a), the due date for Response was May 9, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May.
The Center appointed Andrew Brown Q.C. as the sole panelist in this matter on May. 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 disputed domain name was first registered on March 31, 2012.
The Complainant states that, together with its affiliated companies, it is one of the world’s leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics and has global operations in more than 100 countries. The mark VALIUM designates a sedative and anxiolytic drug belonging to the benzodiazepine family, which the Complainant asserts, enabled it to build a world-wide reputation in psychotropic medications. The Complainant asserts that its mark VALIUM is protected as a trademark in a multitude of countries worldwide. The Complainant relies in particular on International Registration No. R250784 for the word mark VALIUM in classes 1, and 3 with a priority date of October.
The Complainant states and the Panel accepts that the mark VALIUM is well-known and notorious, and has referred the Panel to articles in third party press including a February article in the New York Times which stated that “Valium … would not only become the country’s biggest selling drug, but an American cultural icon”.
As at the date of the Complaint, the Respondent was using the disputed domain name to host a website containing the text “Cheap VALIUM (Generic or Brand)” and containing a link to an online pharmacy. From this website, generic product is available for purchase under the description “Valium Generic”. 5. Parties’ Contentions A. Complainant
The Complainant asserts that it has satisfied the three elements of paragraph 4(a) of the Policy and requests that the disputed domain name be transferred to it. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following elements with respect to the disputed domain name in order to succeed in this proceeding:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Complainant had registered rights in the trademark VALIUM as at the date of registration of the disputed domain name by way of its registered international trademark for VALIUM (which well predates the registration of the disputed domain name). The Panel also finds that the trademark VALIUM was well-known before the date of registration of the disputed domain name.
The Panel considers that the Complainant’s distinctive VALIUM mark is instantly recognizable within the disputed domain name. The descriptive “-4you” does not sufficiently distinguish the disputed domain name from the Complainant’s trademark so as to overcome the confusing similarity.
The Panel accordingly finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights and finds that paragraph 4(a)(i) of the Policy is satisfied in favor of the Complainant. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish that it has rights or legitimate interests in the disputed domain name, among other circumstances, by showing any of the following elements:
(i) that before notice of the dispute, the Respondent used or made demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) that the Respondent has been commonly known by the disputed domain name, even if it had acquired no trademark or service mark rights; or
(iii) that the 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.
The overall burden of proof for establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name lies with the Complainant.
However the Complainant is required only to make out a prima facie case that the Respondent lacks rights or legitimate interests. Once a prima facie case is made out, the burden of production shifts to the Respondent to come forward with appropriate evidence demonstrating its rights or legitimate interests in the disputed domain name.
The Complainant states and the Panel accepts that it has exclusive rights in VALIUM and has never given the Respondent any license, permission or authority to use the trademark VALIUM or to seek registration of a domain name incorporating it.
There is no evidence that the Respondent has made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods. There is no evidence that the Respondent operates any business under a name that is similar to or the same as the disputed domain name.
The disputed domain name has been used to direct Internet users to an online pharmacy. The Panel notes Pfizer Inc. v. jg a/k/a Josh Green,WIPO Case No. D2004-0784 in which the relevant Panel stated “several cases have found that a registrant has no legitimate interest in a domain name that is similar to a pharmaceutical manufacturer’s mark and that is being used to direct customers to an on-line pharmacy”.
In the circumstances, the Panel finds that the Complainant has clearly satisfied the burden of showing a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
Accordingly, and in the absence of any Response from the Respondent, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied in favor of the Complainant. C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, are evidence of the registration and use of the disputed domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the disputed domain name; or
(ii) that the Respondent has registered the disputed 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 the Respondent has engaged in a pattern of such conduct; or
(iii) that the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s 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 the Respondent’s website or location or of a product or service on the Respondent’s website or location.
The Panel is satisfied that the disputed domain name was registered in bad faith. The Complainant’s registered trademark VALIUM is very well-known and has enjoyed a longstanding reputation over many decades. The Respondent must have been aware of the Complainant’s mark at the time of registration of the disputed domain name. Further, the Respondent plainly had in mind the Complainant’s trademark at the time of registration because the web pages at the disputed domain name refer to and offer for sale “generic” Valium.
The Panel is also satisfied that the disputed domain name is being used in bad faith. The disputed domain name is being used to host a website containing the text “Buy Cheap VALIUM (Generic or Brand)”.
The Complainant has not given any permission or license to the Respondent to use its VALIUM trademark in respect of any generic product. There is therefore clear evidence of use of the disputed domain name to generate revenues by unauthorized sales of generic product using the Complainant’s VALIUM trademark. 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.
Andrew Brown Q.C.
Sole Panelist
Dated: May 31
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