The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, internally represented.
The Respondent is Samreen Rizwan of Punjab, Pakistan. 2. The Domain Name and Registrar
The disputed domain name, (the “Domain Name”), is registered with Melbourne IT Ltd (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 28, 2012. On September 28, 2012 and October 3, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 5, 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 October 5, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 25, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 26, 2012.
The Center appointed Tony Willoughby as the sole panelist in this matter on November 2, 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 one of the world’s largest pharmaceutical companies. One of its most successful drugs is diazepam, which it has marketed internationally for nearly 50 years under the brand name VALIUM.
The Complainant is the registered proprietor of many trade mark registrations for VALIUM, one of the earliest being International Trade Mark registration No. 250784 dated December 20, 1961 VALIUM (word) for a variety of goods including pharmaceuticals.
The Domain Name was registered on August 9, 2012 and is connected to an online pharmacy website offering for sale Valium, generic diazepam and a wide variety of pharmaceuticals of other manufacturers. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name is confusingly similar to the Complainant’s VALIUM trade mark, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Respondent registered the Domain Name in bad faith and is using it in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name was registered and is being used in bad faith. B. Identical or Confusingly Similar
The Domain Name comprises the Complainant’s brand name, VALIUM, the dictionary word, “masters”, and the generic “.com” top level domain suffix. It being well-established that for the purpose of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, panels may ignore the top level domain suffix, it is left for the Panel to compare “valiummasters” with VALIUM.
VALIUM is prominent as the first part of the Domain Name and is highly distinctive; whereas “masters”, on the other hand, is an ordinary dictionary word and, to the eye of this Panel, does nothing to dilute or neutralize the distinctiveness of the brand name.
The Panel believes it probable that many Internet users will assume that the Domain Name will lead them to a site belonging to or authorized by the Complainant.
The Panel finds that the Domain Name is confusingly similar to the Complainant’s trade mark. C. Rights or Legitimate Interests
The Respondent has linked the Domain Name to an online pharmacy website. As the proprietor of a pharmacy, the fame of VALIUM is such that the Respondent will at all material times have been well aware of the Complainant’s product. Were there to be any doubt about that, it is removed when one sees that the Respondent is offering Valium for sale on the website.
The Complainant asserts that it has never granted the Respondent any permission to use its VALIUM trade mark for this or any other purpose and the Respondent has not challenged that assertion.
In certain circumstances it may be acceptable for a reseller to use the brand name of the product he is selling as part of a domain name and without the permission of the brand owner. In this case, the Respondent is offering for sale a variety of pharmaceuticals on his website, including not only the Complainant’s Valium, but also a variety of products of other manufacturers including generic diazepam of other manufacturers, which is in competition with Valium.
Use of a domain name for the purpose of a bona fide offering of goods can constitute a right or legitimate interest for the purposes of paragraph 4(a)(ii) of the Policy (paragraph 4(c)(i) of the Policy). However, in the view of the Panel to use a domain name which is confusingly similar to a complainant’s trade mark, without the permission of the complainant and with a view to selling goods which compete with the complainant’s goods cannot on any basis be categorized as bona fide.
While it is for the Complainant to prove each element of paragraph 4(a) of the Policy, paragraph 4(a)(ii) of the Policy requires a complainant to prove a negative in respect of matters, which will often only be known to the respondent. In recognition of this difficulty, panels will be satisfied if the complainant comes forward with a prima facie case. It is then incumbent upon the respondent to answer that case.
In the view of the Panel the Complainant has come forward with a prima facie case, which calls for an answer. What possible justification can the Respondent have had for adopting a domain name making prominent use of the Complainant’s trade mark for the purpose of selling inter alia products competing with that of the Complainant? There is no answer. The Respondent has not seen fit to come forward with any explanation to justify his selection of the Domain Name.
In the circumstances, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. D. Registered and Used in Bad Faith
The Complainant contends that the Respondent selected the Domain Name with knowledge of the Complainant’s trade mark and with the intention of using the Complainant’s trade mark to attract Internet users to his online pharmacy website for the purposes of commercial gain. The Complainant contends that in so doing he is deceiving Internet users. The Complainant contends that Internet users, seeing the Domain Name, will believe that the website to which it is connected is either owned by or authorized by the Complainant.
The Panel agrees. The Panel finds that the Domain Name was registered and is being used in bad faith within the meaning of paragraphs 4(a)(iii) and 4(b)(iv) 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.
Tony Willoughby
Sole Panelist
Dated: November 4, 2012
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