The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, internally represented.
The Respondent is PrivacyP of Queensland, Australia / Maniamin James of New York, Lithuania. 2. The Domain Name and Registrar
The disputed domain name is registered with Cloud Group Limited (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 14, 2013. On January 15, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 15 and January 22, 2013, 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. The Center sent an email communication to the Complainant on January 23, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed the amendment to the Complaint on January 23, 2013.
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 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, 1961 and 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 January 6, 2013. 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 5 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 5 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 generic expression “online” 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 redirects users to an on-line pharmacy where the Complainant’s product is being clearly offered for sale (Annex 6 to the Complaint).
Such use of the disputed domain name, in the Complainant’s point of view, clearly alludes to the Complainant and there is no reason that legitimate interests or rights can be found in favor of the Respondent.
Moreover the Respondent has intentionally attempted for commercial purposes to attract Internet users to its website creating a likelihood of confusion with the Complainant’s well-known trademark as to the source, affiliation and endorsement of its website to the products and services available there. 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 disputed 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 generic expression “online” and an hyphen “-“ in this Panel’s point of view does not sufficiently distinguish the disputed domain name from the Complainant’s trademark. On the contrary, the disputed domain name possibly leads a certain portion of Internet users into thinking that legitimate products bearing the mark will be available from the corresponding website by the addition of the “online” expression after the Complainant’s mark.
Several previous cases have already concluded that “the word ‘online’, a description of a selling medium, does nothing to diminish the distinctiveness of the Complainant’s trade mark” (see specially F. Hoffmann-La Roche AG v. PrivacyP / Arrakis Inc,WIPO Case No. D2012-1887, , which also dealt with the trademark VALIUM).
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 disputed 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 clearly aware of the Complainant’s trademark and product since it clearly depicts it in the website relating to the disputed domain name which has served as an on-line pharmacy that sold the Complainant’s product without prescription (Annex 6 to the Complaint).
In addition to that the Respondent is also promoting and selling at its website competing products to those of the Complainant. Such use in this Panel’s view cannot be considered – absent any evidence to the contrary – good faith.
Here, as in the already quoted F. Hoffmann-La Roche AG v. PrivacyP / Arrakis Inc,WIPO Case No. D2012-1887, , which also dealt with the trademark VALIUM: “In the view of this 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 those of the Complainant? There is no answer. The Respondent has not seen fit to come forward with any explanation to justify its selection of the Domain Name.”
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 mark 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 that the page corresponding to the disputed domain name has served as an on-line pharmacy selling both products with the Complainant’s VALIUM trademark as well as competing products.
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 mark by creating a likelihood of confusion in Internet users who likely believe that the disputed domain name is either connected, endorsed or authorized by the Complainant.
Also, the fact that the website at the disputed domain name has been subsequently deactivated does not preclude the Panel’s finding of the bad faith registration and use by the Respondent.
Further, 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 or use of the disputed domain name.
For the same reasons as 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: March 3, 2013
Full & Egal Universal Law Academy