The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally.
The Respondent is Hongyu Liu of Anhui, China. 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 April 8, 2013. On April 8, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 8, 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 April 12, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 2, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 3, 2013.
The Center appointed Gonçalo M. C. Da Cunha Ferreira as the sole panelist in this matter on May 15, 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 goods in class 05 medicines (inter alia) (Annex 3 to the Complaint).
For more than forty years, the Complainant has used the VALIUM mark in connection with a medicine used inter alia to treat anxiety disorders.
On March 29, 2013, more than forty years after the first registration of the Complainant’s trademark, the Respondent registered the disputed domain name .
Prior to the filed Complaint the disputed domain name led Internet users to a website showing on the top of the front page the title valiumonlinepharmacy and other information with a clear commercial character.
The website at the disputed domain name is currently inactive. 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 4 to the Complaint).
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 “onlinepharmacy” does not sufficiently distinguish the disputed domain name from the trademark.
Despite the commercial scope of the site was not clear, Annex 6 to the Complaint clearly shows that the page corresponding to the disputed domain name has served as an online pharmacy selling both products with the Complainant’s VALIUM trademark as well as competing products. Therefore, there is no doubt that 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
In order to obtain the transfer of a disputed domain name, a complainant must prove three elements, regardless of whether the respondent files a response to the complaint. The first element is that the “domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.” Policy, paragraph 4(a)(i). The second element a complainant must prove is that the respondent has “no rights or legitimate interests in respect of the domain name.” Policy, paragraph 4(a)(ii). The third element for a complainant to establish is that the “domain name has been registered and is being used in bad faith.” Policy, paragraph 4(a)(iii). A. Identical or Confusingly Similar
The Complainant has International Trademark Registration VALIUM No. R 250784, of December 20, 1961, subsequently renewed and valid until December 20, 2021 to cover goods in class 05 medicines (inter alia) (Annex 3 to the Complaint).
The Complainant’s trademark is entirely reproduced in the disputed domain name and the addition to it of the generic expression “onlinepharmacy” 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 trademark will be available from the corresponding website by the addition of the “onlinepharmacy” expression after the Complainant’s trademark.
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). Following the same principle, the word pharmacy for medicines also does nothing to diminish the distinctiveness of the Complainant’s trademark.
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
Following Terroni Inc. v. Gioacchino Zerbo,WIPO Case No. D2008-0666: “[i]n order for a complainant to prove that a respondent has no rights or legitimate interests in the Disputed Domain Name, UDRP case law has consistently held that it is sufficient for a complainant to prove a prima facie case. (see amongst others, Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455, Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110). Once a prima facie case is shown the burden of [production] shifts to the Respondent who must demonstrate its rights or legitimate interests .”
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, ).
Facing the contents of the site and the explicit use of the trademark VALIUM is easy for the Complainant to make a prima facie case against the Respondent.
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.”
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 UDRP states that one way for a complainant to prove bad-faith registration and use is to show the respondent has “intentionally attempted to attract, for commercial gain, Internet users to [the] web site 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] web site or location or of a product or service on [the] web site or location.” Policy, paragraph 4(b)(iv). The Complainant has made this showing.
In the present case, Annex 6 to the Complaint clearly shows that the page corresponding to the disputed domain name has served as an online pharmacy selling both products with the Complainant’s VALIUM trademark as well as competing products.
Facing the fact that the trademark VALIUM is clearly a well-known trademark it is clear for the Panel that such use constitutes an attempt to profit from the fame and goodwill associated with the Complainant’s notorious trademark, 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.
The fact that the disputed domain name is currently inactive does not change the Panel’s findings.
With these facts it is clear for the Panel that the Respondent intentionally registered and is using the disputed domain name in bad faith. 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.
Gonçalo M. C. Da Cunha Ferreira
Sole PanelistDate: May 29, 2013
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