The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally.
The Respondent is Gina Buffoni of Merrylands, New South Wales, Australia. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on January 4, 2013. On January 4, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 7, 2013, 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 January 24, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 13, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 14, 2013.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on February 21, 2013. 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 a leading pharmaceutical company having global operations in more than 100 countries. One of its marks is VALIUM, originally registered in Switzerland on October 20, 1961and later subject of the international registration No. R.250784, of December 20, 1961, subsequently renewed and valid until December 20, 2021 to cover in class 05 medicines (inter alia) (Annex 3 to the Complaint).
The disputed domain name was registered on December 20, 2012. 5. Parties’ Contentions A. Complainant
The Complainant asserts that the mark VALIUM is used to distinguish a sedative from the benzodiazepine family largely sold in various countries throughout the world (Annex 4 to the Complaint). The mark is so well-known that it has been depicted in the prestigious “The New York Times” as an “American cultural icon” in addition to being “the best-selling drug in the United States of America” (Annex 4 to the Complaint) and a constant reference in movies and novels.
The disputed domain name is confusingly similar to the Complainant’s notorious trademark since it incorporates the mark in its entirety and the addition of the figure “2” and of the term “go” does not sufficiently distinguish the disputed domain name from the trademark.
The Complainant further asserts that the Respondent has no rights or legitimate interests over the disputed domain name since no authorization, license, permission or consent was granted for the use of VALIUM in a domain name.
In the Complainant’s point of view the disputed domain name has thus been used for commercial gain and with the purpose of capitalizing on the fame of the Complainant’s VALIUM mark since the respective website consists of a search engine with sponsored links to websites promoting and/or offering products and services of third parties including the pharmaceutical field which is the business of the Complainant.
Such use of the disputed domain name intentionally misleads Internet users possibly making them believe that the websites behind those links might be associated or recommended by the Complainant, what is not true.
Moreover revenues from each click by users on the sponsored links will generate under Complainant’s belief unjustified revenues for the Respondent, illegitimately capitalizing on the VALIUM trademark’s fame. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:
(i) the disputed domain name is identical or confusingly similar to a trademark 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 disputed domain name has been registered and is being used in bad faith.
The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present so as to have the disputed domain name transferred to it, according to paragraph 4(i) of the Policy.
In accordance with paragraph 14(b) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint. A. Identical or Confusingly Similar
The Complainant has established its rights in the trademark VALIUM according to the international registration No. R 250784, of December 20, 1961, subsequently renewed and valid until December 20, 2021 to cover in class 05 medicines (inter alia) (Annex 3 to the Complaint).
The Complainant’s mark is entirely reproduced in the disputed domain name and the addition to it of the figure “2” and the verb “go” in this Panel point of view does not sufficiently distinguish the disputed domain name from the trademark. On the contrary, the disputed domain name possibly leads a certain portion of Internet users which are keen on using acronyms and idiomatic expressions into thinking that the products bearing the mark will be available from the corresponding website by the addition of “2go” after the Complainant’s mark.
Previous cases have already concluded that “The addition of the descriptive term “2go” and of the top-level domain “.com” do not detract from the fact that the mark and domain name are confusingly similar.” (see DFO, LLC v. Foodfetchers,WIPO Case No. D2008-0593, ).
For the reasons above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that indicate the Respondent’s rights to or legitimate interests in the disputed domain name. These circumstances are:
(i) before any notice of the dispute, the Respondent’s 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) the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, in spite of not having acquired trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to and/or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules (see e.g. Banco Bradesco S/A v. B Private Registrant, A Happy DreamHost Customer,WIPO Case No. D2010-2108, ). Nevertheless the burden is still on the Complainant’s side to make a prima facie case against the Respondent.
In that sense, the Complainant indeed states that no authorization, license, permission or consent was granted to the Respondent for the use of VALIUM in the disputed domain name.
Moreover, the Respondent is neither known by the disputed domain name, nor such appears to be its name or how it is commonly known or referred to.
In addition to that the website corresponding to the disputed domain name consisting of a search engine with sponsored links to websites promoting and/or offering products and services of third parties in the Complainant’s field of business also indicates, in the absence of a bona fide or fair use, bad faith (e.g. Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.6 in fine: “By contrast, where such links are based on trademark value, UDRP panels have tended to consider such practices generally as unfair use resulting in misleading diversion.”).
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name. C. Registered and Used in Bad Faith
The Policy indicates in paragraph 4(b)(iv) that bad faith can be found in the use of the disputed domain name, with an intentional attempt to attract, for commercial gain, Internet users to the website or other on-line location, by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
In the present case, Annex 6 to the Complaint clearly shows the page corresponding to the disputed domain name in which a search engine and sponsored links to websites promoting and/or offering products and services of third parties in the Complainant’s field of business is displayed.
Such use in this Panel’s view constitutes an attempt to profit from the fame and goodwill associated with the Complainant’s notorious trademark, thus capitalizing on the fame of the Complainant’s VALIUM trademark.
It has been found by previous UDRP panels that licit and good faith use in connection with pay-per-click advertisements and sponsored links can only be found in the absence of the targeting of a relevant trademark, which the Panel does not find in these circumstances.
Also, as already mentioned, the Respondent did not file any response to the Complaint, failing thereby to invoke any circumstance which could demonstrate its good faith in the registration and use of the disputed domain name.
For the same reasons than those stated above, the Respondent's conduct has to be considered, in this Panel’s view, as bad faith registration and use pursuant to paragraph 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 disputed domain name be transferred to the Complainant.
Wilson Pinheiro Jabur
Sole Panelist
Date: February 28, 2013
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