The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, internally represented.
The Respondent is Noresco Ltd. of Panama City, Panama / Whois Privacy Protection Service of Xiamen, Fujian, China. 2. The Domain Name and Registrar
The disputed domain name is registered with B, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 16, 2012. On April 16, 2012, the Center transmitted by email to B, Inc. a request for registrar verification in connection with the disputed domain name. On April 17, 2012, B, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 17, 2012 providing the registrant and contact information disclosed by B, Inc., and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on April 18, 2012.
The Center verified that the Complaint together with the amendment to 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 24, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 14, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 15, 2012.
The Center appointed Zentaro Kitagawa as the sole panelist in this matter on June 4, 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.
Having reviewed the case file of the above-referenced proceeding, the Panel noted the following:
- At the time of filing the Complaint on April 16, 2012, the Complainant has provided the Center with both the WORD and PDF versions of the Complaint. The WORD version of the Complaint satisfies the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules and Supplemental Rules. However, the PDF version of the Complaint did not appear to include some of the grounds on which the Complaint is made in accordance with the Policy. In particular, it did not describe “why the Respondent (domain-name holder) should be considered as having no rights or legitimate interests in respect of the domain name(s) that is/are the subject of the complaint” in accordance with the Rules, paragraph 3(b)(ix)(2).
- On April 24, 2012, the Written Notice was notified to the Respondent’s postal addresses pursuant to paragraph 2(a)(i) of the Rules. Also, the document “Notification of Complaint and Commencement of Administrative Proceeding” and the Complaint (including annexes) were appropriately notified to the Respondent’s email addresses pursuant to paragraphs 2(a)(ii) of the Rules. However, in transmitting the Complaint via email, the PDF version of the Complaint, instead of the WORD version, was forwarded to the Respondent.
In view of the above and in the interests of due process, on June 19, 2012, the Panel issued Administrative Panel Procedural Order No. 1, in which it found the appropriate course in the present circumstances to be as follows:
“1) The Center shall forward the WORD version of the Complaint to the Respondent, copying the Complainant and the Registrar.
2) The Respondent shall be granted with an additional ten (10) days from the date of the Center's transmission of the WORD version of the Complaint in order to file its Response or otherwise.
3) In the absence of further communication from the parties, the due date for the Panel to forward its decision to the Center shall be extended to the date five (5) days after the expiry of the deadline for the Respondent indicated in point 2) above.”
On June 19, 2012, the Center forwarded the WORD version of the Complaint to the Respondent. The Respondent has not submitted any Response within the specified due date. 4. Factual Background
The Complainant is together with its affiliated companies one of the world’s leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics and having global operations in more than 100 countries. 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. For the mark VALIUM the Complainant holds registrations in over hundred countries on a world-wide basis.
The Complainant’s mark VALIUM is protected as trademark in a multitude of countries worldwide. As an example reference is made to the International Registration No. R250784. Priority date for the mark VALIUM is October 20, 1961.
The disputed domain name was registered by the Respondent on October 8, 2011. 5. Parties’ Contentions A. Complainant
(1) The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademark.
(2) The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name.
(3) The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith. B. Respondent
The 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.”
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
A. The disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
B. The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
C. The disputed domain name has been registered and is being used in bad faith.
The Respondent provided no Response. Taking into consideration the Respondent’s default, the Panel can infer that the Complainant’s reasonable factual allegations are true where appropriate to do so. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. Nonetheless, the Complainant retains the burden of proving the three requisite elements of paragraph 4(a) of the Policy. A. The disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights (Policy, paragraph 4(a)(i))
It is held that a domain name is identical or confusingly similar to a trademark 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 also established that “the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark” (Hoffmann-La Roche Inc. v. Hightech Indutries, Andrew Browne,WIPO Case No. D2010-0240) and that the addition of generic terms to the disputed domain name has little effect on a determination of confusing similarity 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 generally not exclude the likelihood of confusion (PRL USA Holdings, Inc. v. Spiral Matrix,WIPO Case No. D2006-0189).
The disputed domain name incorporates the Complainant’s mark in its entirety, and the Panel finds that it is therefore confusingly similar to the Complainant’s trademark. The addition of the generic terms “special” and “price” does not distinguish the disputed domain name from the trademark.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. B. The Respondent has no rights or legitimate interests in respect of the disputed domain name Policy, paragraph 4(a)(ii))
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 you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name even if you have acquired no trade mark or service mark rights; or
(iii) you are making a legitimate noncommercial 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.”
The Complainant has exclusive rights for VALIUM and there is no evidence that the Complainant has licensed or authorized or permitted the Respondent to register or use the disputed domain name or to use its trademark.
Furthermore, there is no evidence adduced to show that the Respondent has been commonly known by the disputed domain name or is making any legitimate noncommercial or fair use. Instead, it is obvious that Internet users are directed to the Respondent’s on-line pharmacy website, “www..” where other competing products are also offered for sale. See Pfizer Inc. v. jg a/k/a Josh Green,WIPO Case No. D2004-0784: “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 consumers to an on-line pharmacy”.
In the Panel’s view, the Respondent uses the disputed domain name for commercial gain. Also, the Respondent has failed to produce any evidence to establish any rights or legitimate interests in the disputed domain name.
The Panel therefore finds that the Complainant has fulfilled the second condition of paragraph 4(a) of the Policy. C. The disputed domain name was registered and is being used in bad faith Policy, paragraph. 4(a)(iii))
Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct constitutes evidence of registration and use in bad faith on the part of the Respondent:
“By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 or of a product or service on your web site or location.”
The Respondent creates a likelihood of confusion with the Complainant’s trademark by using the disputed domain name . As no counter evidence is shown, it firstly follows that at the time of the registration, namely on October 8, 2011, the Respondent mut have been aware of the Complainant’s well-known product and mark VALIUM. The Panel thus finds that the disputed domain name was registered in bad faith. Secondly, the disputed domain name is being used in bad faith. Indeed, in this Panel’s view, it is also obvious that, when viewing the Internet website “www.” of the Respondent, one realizes that 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 trademark as to the source, affiliation and endorsement of the Respondent’s website or services posted on the Respondent’s website. See Pfizer Inc. v. jg a/k/a Josh Green,WIPO Case No. D2004-0784, which held that bad faith is established when “Respondent is using the domain names as a forwarding address to a for-profit on-line pharmacy”.
The Panel therefore finds the requisite element of bad faith has been satisfied, under paragraph 4(b)(iv) of the Policy.
Under these circumstances, the Panel concludes that the disputed 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 disputed domain name be transferred to the Complainant.
Zentaro Kitagawa
Sole Panelist
Dated: July 3, 2012
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