The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally.
The Respondent is PrivacyP / Diogo Dias Pereira of Nobby Beach, Queensland, Australia and Contagem, Brazil, respectively. 2. The Domain Names and Registrar
The disputed domain names and are registered with DomainContext, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on October 18, 2012. On October 18, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 29, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 29, 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 October 30, 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 November 6, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 26, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 28, 2012.
The Center appointed Masato Dogauchi as the sole panelist in this matter on December 6, 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
Whereas the Respondent has not submitted any contentions, the following is found by the Panel to be the factual background of this case.
The Complainant is a company organized under the law of Switzerland, with its principal place of business in Basel, Switzerland.
According to the Registrar, the Respondent seems to be an entity in Australia or Brazil.
This dispute concerns the disputed domain names identified and , registered by the Respondent on September 26, 2012.
The Complainant is, together with its affiliated companies, one of the leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics, and has global operations in more than 100 countries. The Complainant’s mark VALIUM is protected in a multitude of countries worldwide. For instance, the priority date for the mark VALIUM under International Registration No. R250784 is October 20, 1961. The mark VALIUM designates a sedative and anxiolytic drug belonging to the benzodiazepine family, which enabled the Complainant to build a worldwide reputation in psychotropic medications. The mark VALIUM is well-known worldwide.
At the date when the Complaint was filed, the websites at the disputed domain names were advertised as online pharmacies where VALIUM could be purchased. 5. Parties’ Contentions A. Complainant
The Complainant asserts in essence as follows:
(1) The disputed domain names are identical or confusingly similar to the trademark in which the Complainant has rights;
(2) The Respondent should be considered as having no rights or legitimate interests in respect of the disputed domain names;
(3) The disputed domain names were registered and are being used in bad faith.
With regard to the item (1) above, the Complainant is the owner of the well-known mark VALIUM. The disputed domain names incorporate the Complainant’s mark entirely. The addition of the descriptive terms “cheap”, “order”, “now” and “online” does not sufficiently distinguish the disputed domain names from the mark. Furthermore, the Complainant’s use and registration of the mark VALIUM predates the Respondent’s registration of the disputed domain names.
With regard to the item (2) above, the Complainant has exclusive right for the mark VALIUM, and the Complainant has not allowed others to use it in their domain names. Therefore, the Respondent has no right to use it in the disputed domain names.
With regard to the item (3) above, the disputed domain names were registered in bad faith since, at the time of registration of the disputed domain names, namely on September 26, 2012, it is obvious that the Respondent had knowledge of the Complainant’s mark VALIUM. Also, they are used in bad faith since the Respondent is using the disputed domain names to intentionally attempt, for commercial purpose, to attract Internet users to its website, by creating a likelihood of confusion with the Complainant’s well-known mark. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to the Rules, paragraph 15(a), a UDRP panel shall decide a case on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
In accordance with the Policy, paragraph 4(a), in order to qualify for a remedy, the Complainant must prove each of the following:
(1) The disputed domain names are identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(2) The Respondent has no rights or legitimate interests in respect of the disputed domain names;
(3) The disputed domain names have been registered in bad faith and are being used in bad faith. A. Identical or Confusingly Similar
The fame of the Complainant’s mark, VALIUM is obvious to the Panel.
The dispute domain name includes the mark entirely. The addition of the descriptive terms “cheap”, “order”, “now” and “online” does not sufficiently distinguish the disputed domain names from the mark. Especially, these terms do not hinder Internet search engines from finding the mark. Furthermore, the Panel finds that the disputed domain names, incorporating such terms, can attract ordinary people who want to buy VALIUM. Accordingly, such additional words are completely insufficient to dispel user confusion from inevitably occurring.
The addition of the top-level domain “.com” does not have any impact on the overall impression of the dominant portion of the disputed domain names and is therefore irrelevant to determine the confusing similarity between the Complainant’s trademark and the disputed domain names.
The Panel therefore finds that the disputed domain names are confusingly similar to the trade mark in which the Complainant has rights. Paragraph 4(a)(i) of the Policy is accordingly satisfied. B. Rights or Legitimate Interests
The Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names.
It is not found that the Respondent has rights or legitimate interests in respect of the dispute domain names in the absence of any Response from the Respondent.
The Panel therefore finds, also in light of the Panel’s findings below, that the Respondent has no rights or legitimate interests in respect of the disputed domain names. Paragraph 4(a)(ii) of the Policy is accordingly satisfied. C. Registered and Used in Bad Faith
In consideration of the fame of the Complainant’s mark, VALIUM, the Panel finds that it is highly unlikely that the Respondent would not have known of the Complainant’s legal rights in the mark at the time of the registration of the disputed domain names.
It is found that the Respondent is using the disputed domain names in order to generate traffic to its website. By doing this, the Respondent is using the Complainant’s mark VALIUM and misleading Internet users to commercial web sites.
The Panel therefore finds that the disputed domain names have been registered in bad faith and are being used in bad faith. For this reason, the Panel finds that paragraph 4(a)(iii) of the Policy is accordingly satisfied.
Accordingly, all three cumulative requirements as provided for in the Policy, paragraph 4(a), are determined to be satisfied. 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 names and be transferred to the Complainant.
Masato Dogauchi
Sole Panelist
Dated: December 16, 2012
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