The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally.
The Respondents are PrivacyP of Nobby Beach, Queensland, Australia and Yuriy Khokhlov of Lviv, Ukraine. 2. The Domain Name and Registrar
The disputed domain name is registered with UK2 Group Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 16, 2012. On May 16, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 18, 2012, the Registrar 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. In particular, the Center was advised by the Registrar that the registrant of the disputed domain name is Yuriy Khokhlov of Lviv, Ukraine. The Center sent an email communication to the Complainant on May 22, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on May 22, 2012 in which Yuriy Khokhlov was added as a Respondent to the originally named Respondent PrivacyP.
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 Respondents of the Complaint, and the proceedings commenced on May 23, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 12, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 13, 2012.
The Center appointed Marcin Krajewski as the sole panelist in this matter on July 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. 4. Factual Background
The Complainant F. Hoffmann-La Roche AG, 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 is the owner of the nominative trademark consisting of the word VALIUM, which is protected by, inter alia, International Registration No. 250784, with a priority date for the mark of December 20, 1961. Besides, for the VALIUM trademark the Complainant holds registrations in over a hundred countries.
The VALIUM trademark designates a sedative and anxiolytic drug belonging to the benzodiazepine family.
The disputed domain name was registered on February 28, 2012. It was used to redirect Internet users to a site that consisted of material referring to “Valium” and apparently contained links to an online pharmacy offering products branded “Valium” as well as products of different brands. 5. Parties’ Contentions A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are present in this case. In particular the Complainant claims that:
(i) The disputed domain name is confusingly similar to the trademarks in which the Complainant has rights
The disputed domain name is confusingly similar to the Complainant’s trademark seeing that it incorporates this mark in its entirety. The addition of the terms “buy” and “online” does not sufficiently distinguish the disputed domain name from the Complainant’s trademark.
Furthermore, the Complainant claims that the notoriety of the VALIUM trademark increases the likelihood of confusion.
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name
The Complainant contends that the disputed domain name clearly alludes to the Complainant’s trademark and it is obvious that the Respondent uses the domain name for commercial gain.
The Complainant states that no license or authorization of any other kind to use the VALIUM trademark has been given by the Complainant to the Respondent. Therefore, there is no reason why the Respondent should have any rights or legitimate interests in the disputed domain name.
(iii) The disputed domain name was registered and used in bad faith
The Complainant contends that the Respondent certainly had knowledge of the Complainant’s trademark VALIUM when registering the disputed domain name.
Moreover, the Complainant contends that the Respondent intentionally attempted 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 Respondent’s website or of the products or services posted on or linked to this website.
According to the Complainant, by using the disputed domain name the Respondent intentionally misleads the consumers and makes them believe that the Respondent’s website is associated with or recommended by the Complainant. As a result the Respondent may generate unjustified profit. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identification of Respondent
The Complainant initially named PrivacyP as the Respondent because it was unable to obtain the name of the underlying registrant. The Registrar of the disputed domain name, in reply to the Center’s request, divulged the name and contact details of the underlying registrant (i.e. of Mr. Yuriy Khokhlov). The Center provided the information to the Complainant, and the Complainant subsequently submitted an amendment to the complaint. This Panel finds it appropriate to follow the practice of most of the UDRP panels and record in this decision both the name of the privacy registration service and that of the disclosed underlying registrant. In this connection the Panel proceeds on the basis that both PrivacyP and Yuriy Khokhlov are Respondents in this administrative proceeding, but proposes to treat Yuriy Khokhlov as the substantive Respondent and references herein to “the Respondent” are to be construed accordingly. B. The Merits
Paragraph 4(a) of the Policy provides that the following facts must be established in order to grant the Complainant the remedy requested:
(1) that 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; and
(2) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(3) that the disputed domain name has been registered and is being used in bad faith. (i) Identical or Confusingly Similar
The most distinctive part of the disputed domain name is “valium”, which is identical to the Complainant’s trademarks. The Panel agrees with the Complainant’s argument that the addition of the suffixes “buy” and “online” is not relevant for the purposes of the Policy. Actually, the mentioned suffixes simply describe the way in which Valium is sold and, as a result, there is a risk that Internet users who see the disputed domain name would think that the website accessible through it would be a website where they could buy the true Valium product from the legitimate owner of the trademark or its authorized representative.
For the purpose of assessing whether a domain name is identical or confusingly similar to a trademark or service mark, the suffix “.net” may be disregarded as being simply a necessary component of a generic top level domain.
Accordingly, the Panel finds that the Complaint has satisfied paragraph 4(a)(i) of the Policy. (ii) Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exhaustive list of circumstances establishing a respondent’s rights or legitimate interests in a domain name. However, it seems that none of the mentioned circumstances is present in this case. In particular, there is no evidence that the Respondent has used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial use. Internet users who type the disputed domain name in their browsers are redirected to the website, where, as evidenced by copies of the respective pages, the Valium product as well as competitive products, such as Xanax and Ativan, are offered for sale. When ordering one of these products, the user is directed to an on-line pharmacy. Such use of the Complainant’s trademark cannot be considered to be a bona fide offering of goods or services.
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed 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 disputed domain name.
Accordingly, the Panel finds that the Complaint has satisfied paragraph 4(a)(ii) of the Policy. (iii) Registered and Used in Bad Faith
The Panel finds it obvious that the Respondent knew of the existence of the VALIUM trademark and had this trademark in mind at the time of registration of the disputed domain name, supporting the Panel’s finding that the disputed domain name was registered in bad faith.
It is equally clear that the disputed domain name was also used in bad faith. In particular, paragraph 4(b) of the Policy gives non-exhaustive illustrations of bad faith registration and use, including the following:
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”
The Panel finds the Respondent is using the domain name to intentionally attract Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s well-known VALIUM trademark, and using the domain name to link to an online pharmacy.
Accordingly, the Panel finds that the Complaint has satisfied 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.
Marcin Krajewski
Sole Panelist
Dated: July 16, 2012
Full & Egal Universal Law Academy