The Complainant is F. Hoffmann-La Roche AG, Basel, Switzerland, internally represented.
The Respondent is Fundacion Private Whois, Panama, Panama. 2. The Domain Name and Registrar
The disputed domain name is registered with I Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on June 6, 2012. On June 6, 2012, the Center transmitted by email to I Corp a request for registrar verification in connection with the disputed domain name. On June 11, 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 June 14, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 4, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 9, 2012.
The Center appointed Amarjit Singh as the sole panelist in this matter on July 19, 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 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 Complainant’s mark VALIUM is protected as trademark in a multitude of countries worldwide. 5. Parties’ Contentions A. Complainant
The mark VALIUM designates a sedative and anxiolytic drug belonging to the benzodiazepine family, which enables 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. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant is a registered proprietor of trademark VALIUM under international classes 1, 3 and 5 as per the certificate filed by the Complainant under International Registration No. 250784 dated October 20, 1961. The disputed domain name of the Respondent is confusingly similar to the Complainant’s mark as incorporates Complainant’s mark in its entirety. The addition of the term “rx” (i.e. prescription, as “rx” is a well known commonly used acronym for prescription) and the letters “ph” does not sufficiently distinguish the disputed domain name from Complainant’s mark.
The Complainant relies upon the decision Wallmart Store INC. v. Kuchora, Kal ,WIPO Case No. D2006-0033. A prior panel held that, “if a domain name incorporates a complainant’s mark in its entirety, it is confusingly similar to that mark despite the addition of other words. It is well established that the addition of a generic term to a trademark does not necessarily eliminate a likelihood of confusion”.
The Respondent has not responded to the claims of the Complainant. In the absence of any denial on the part of the Respondent, the Panel admits the claim of the Complainant on the basis of the Registration Certificates as has been provided by the Complainant in the proceedings and finds that the Complainant is successful in proving first element of UDRP under paragraph 4(a)(ii) of the Policy. B. Rights or Legitimate Interests
The Complainant has not granted any Licence/permission/authorization to the Respondent to use VALIUM as the essential feature of the domain name. Furthermore it is obvious that the Respondent uses the disputed domain name for commercial gain and with the purpose of capitalizing on the fame of the Complainant’s mark VALIUM.
The Complainant has been successful in proving its trade mark rights in the mark VALIUM and the Respondent has not disputed the claim of the Complainant.
Furthermore, Internet users are directed to an online pharmacy store wherein counterfeit products of the Complainant is being sold.
The Panel concludes that the Respondent has no rights or legitimate interest in the disputed domain name and finds that the Complainant is successful in proving the second element of UDRP under para 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The disputed domain name in question was registered on March 3, 2012 much later than the first use of the Complainants trademark. The document filed in the Complaint as Annexure –6 clearly establishes that Respondent is intentionally attempting to attract for commercial gain Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s well-known mark as to the source, affiliation and endorsement of Respondent’s website or of the products or services posted on or linked to Respondent’s website.
Furthermore the Respondent is intentionally misleading the consumers by making them believe that the websites behind those links are associated or recommended by Complainant.
The Respondent has registered the disputed domain name with false email and physical address details with intent to encash upon the goodwill of the complainant. It is pertinent to note that neither email, nor physical mail sent by the Center to the Respondent was not delivered due to the in correct contact information provided on the publicly available WhoIs record of the Registrar.
It proves that the disputed domain name has been registered by the Respondent in bad faith intention and the same has been used to encash upon the goodwill associated with the mark of the complainant.
In light of the above, the Panel finds that the Complainant is successful in proving the third element of UDRP 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 disputed domain name be transferred to the Complainant.
Amarjit Singh
Sole Panelist
Dated: July 24, 2012.
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