The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally.
The Respondent is JoliMari of New York, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with DomainContext, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 27, 2012. On April 27, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 2, 2012, the Registrar transmitted by email to the Center its verification response that indicated 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 May 4, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 24, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 25, 2012.
The Center appointed Nicholas Smith as the sole panelist in this matter on June 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 Complainant, together with its affiliated companies, is a leading healthcare supplier in the field of pharmaceuticals and diagnostic products. It operates in more than 100 countries.
The Complainant, together with its affiliated companies produces and distributes the pharmaceutical product diazepam under the brand name “Valium”. Diazepam is used for the treatment of various mental ailments, including anxiety and panic disorder. The Complainant has registered a trade mark consisting of the word “Valium” (the “VALIUM Mark”) in numerous countries around the world. The VALIUM Mark was first registered by the Complainant in 1961.
The Domain Name was registered on January 27, 2012. It currently resolves to a site consisting of material that refers to “Valium”, contains links to other sites that appear to sell “generic valium” and offers “generic valium” for sale. 5. Parties’ Contentions A. Complainant
The Complainant makes the following contentions:
(i) that the Domain Name is confusingly similar to the Complainant’s VALIUM Mark;
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the VALIUM Mark which designates a sedative and anxiolytic drug belonging to the benzodiazepine family. The Complainant holds registrations for the VALIUM Mark in over 100 countries across the world. The Complainant has used the VALIUM Mark for over 50 years and the VALIUM Mark is well-known throughout the world.
The Domain Name consists of the VALIUM Mark in its entirety with the addition of the words “cheap” and “pill”. The addition of the words “cheap” and “pill” do not distinguish the Domain Name from the VALIUM Mark.
The Complainant has not authorized or licensed the Respondent to use the VALIUM Mark. The Domain Name resolves to a website that displays the VALIUM Mark (the “Respondent’s Website”). The Respondent’s Website sells pharmaceutical products including what is described as “valium”. This does not amount to a bona fide offering of goods or services, nor does this amount to legitimate noncommercial or fair use of the Domain Name without intent for commercial gain. The Respondent’s only reason for registering and using the Domain Name is to benefit from the reputation of the VALIUM Mark. As such, the Respondent does not have rights or legitimate interests in the Domain Name.
The Respondent has registered and is using the Domain Name in bad faith. The Respondent registered the Domain Name in bad faith as it had knowledge of the VALIUM Mark at the time of registration. The Respondent is using the Domain Name in bad faith by intentionally misleading consumers so as to attract them to other websites by making them believe that those websites are affiliated with the Complainant. The use of the Domain Name for a forwarding address of a for-profit online pharmacy can be use in bad faith. Pfizer Inc. v. jg a/k/a/ Josh Green,WIPO Case No. D2004-0784. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the VALIUM Mark which is a registered trade mark in multiple countries. The VALIUM Mark is applied to a drug produced by the Complainant used for the treatment of various mental ailments. Diazepam has been produced and distributed under the VALIUM Mark for over 50 years and the VALIUM Mark is well-known throughout the world.
The Domain Name consists of the VALIUM Mark and the generic suffixes “cheap” and “pill”. The Panel finds that the addition of the suffixes “cheap” and “pill” are not distinguishing features. The suffix “pill” simply describes the form in which Valium is sold and the suffix “cheap” describes the product indicated in the remaining element(s) of the Domain Name.
As a result, there is a risk that Internet users who see the Domain Name would think that the website accessible through it would be a website where they could buy the Complainant’s Valium product. The Panel finds that the Domain Name is confusingly similar to the Complainant’s VALIUM Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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 trademark or service mark rights; or
(iii) you are making legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Respondent is not affiliated with the Complainant in any way and has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the VALIUM Mark or a mark similar to the VALIUM Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name.
There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial use. The Respondent’s Website displays the VALIUM Mark and uses that mark to offer for sale “generic valium” (diazepam) and provide links to various third party sites that also appear to sell “generic valium”. Such use does not amount to a bona fide offering as the Respondent is attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant.
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has chosen not to respond to the Complaint and thus has failed to provide any evidence of rights and legitimate interests in the Domain Name. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii), 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 the Domain Name in bad faith:
(i) circumstances indicating that the 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 owners of the trade mark 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 Domain Name; or
(ii) the Respondent has registered the Domain Name in order to prevent the owner of the trade mark 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) the Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 finds that the Respondent at the time of registration of the Domain Name knew of the existence of the Complainant. The Domain Name resolves to a website that displays the VALIUM Mark and provides detailed information about diazepam, which it describes using the VALIUM Mark. The Respondent’s Website is then used to sell diazepam using the name “generic valium”, as well as provide links to other sites at which “generic valium” may be sold.
The Respondent’s conduct in registering the Domain Name when it was aware of the Complainant’s rights and lacked rights and legitimate interests of its own amounts to registration in bad faith.
The use of the Domain Name to sell a product, namely “generic valium”, that competes directly with the Complainant’s VALIUM pharmaceutical product amounts to use of the Domain Name in bad faith as does the use of the Domain Name to provide a series of links to third party sites that appear to sell “generic valium”. The Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s VALIUM Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s Website.
Accordingly, the Panel finds that the Respondent has registered and used the Domain Name 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 Domain Name be transferred to the Complainant.
Nicholas Smith
Sole Panelist
Dated: June 5, 2012
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