The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally.
The Respondent is El Exigente - Arrakis Inc of Chitre, Panama. 2. The Domain Name and Registrar
The disputed domain name is registered with Realtime Register B.V. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 26, 2013. On September 26, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 27, 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 October 1, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 21, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 22, 2013.
The Center appointed Christophe Caron as the sole panelist in this matter on November 25, 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, F. Hoffmann-La Roche AG, is a worldwide healthcare group in the fields of pharmaceuticals and diagnostics.
The Complainant is the owner of several trademarks for VALIUM protected in many countries worldwide. As an example, the Complainant has submitted evidence of an international trademark VALIUM No. 250784, filed in October 20, 1961, in international class 1 and 3.
The disputed domain name was registered on August 26, 2013.
The disputed domain name is used for a website dedicated to selling “Generic Valium (Diazepam)” which is a sedative and anxiolytic drug. 5. Parties’ Contentions A. Complainant
The Complainant makes the following submissions and arguments.
The Complainant argues that its trademark VALIUM is protected as trademark in a multitude of countries worldwide. As an example reference is made to the International Registration No. 250784.
According to the Complainant, the disputed domain name is confusingly similar to the Complainant’s mark “seeing that it incorporates this mark in its entirety”. The addition of the verb “(to) get” does not sufficiently distinguish the disputed domain name from the Complainant’s trademark. The Complainant adds that the trademark VALIUM is well-known and notorious.
The Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name, because no license, or permission, or authorization was given to the Respondent. Furthermore, the Complainant adds that it is obvious that the Respondent uses the domain for commercial gain and with the purpose of “capitalizing on the fame of the Complainant’s mark VALIUM”. The Complainant notes that the disputed domain name “directs to a webpage and pharmacy online offering/selling Complainant’s products”.
Finally, the Complainant argues that the disputed domain name was registered in bad faith since at the time of the registration, the Respondent had “no doubt” knowledge of the Complainant’s well-known products and VALIUM trademarks. The Complainant considers that the disputed domain name is also being used in bad faith because the Respondent, by using the disputed domain name, “is intentionally misleading the consumers and confusing them so as to attract them to other websites”. Consequently, the Complainant states that the Respondent should be considered to have registered and to be using the disputed domain name in bad faith.
For all of the above reasons, the Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants 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. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant is the owner of several trademarks for VALIUM around the world, including international trademark VALIUM No. 250784, filed on December 20, 1961, and duly renewed, in International class 1 and 3.
The disputed domain name reproduces the Complainant’s trademarks VALIUM in its entirety.
The addition of the term “get” in the disputed domain name is not relevant and leads the public to believe that the Complainant is the owner of or somehow connected to the disputed domain name.
The Panel therefore finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in respect of the domain name. Paragraph 4(c) of the Policy provides examples of circumstances that can demonstrate the Respondent’s rights or legitimate interests in a domain name, as follows:
“(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Panel notes that the Respondent does not appear to have been commonly known by the disputed domain name, is not a licensee or an agent of the Complainant, nor in any way authorized to use the Complainant’s trademarks.
Furthermore, according to the Registrar’s verification, the disputed domain name was registered on August 26, 2013, long after the Complainant’s registration of its VALIUM trademarks. The Respondent could not claim to have been using the term “valium”, without being aware of the Complainant’s rights to it.
The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. Indeed, the disputed domain name leads to a webpage where with prominent links to an “online pharmacy” consumers can buy “Generic Valium (Diazepam)”. The webpage does not disclose the Respondent’s relationship with the Complainant. The Respondent has chosen a domain name including the term “valium” in order to generate traffic to its own website for commercial gain and to misleadingly divert consumers.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and that the requirement of paragraph 4(a)(ii) of the Policy is also satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances, which “in particular but without limitation”, shall be evidence of the registration and use of a domain name in bad faith. These four circumstances, which are framed in the alternative, but are expressly non-exclusive, are:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.”
The notoriety of the Complainant’s VALIUM trademark and products could not be ignored by the Respondent at the time of the registration of the disputed domain name. The Respondent has registered the disputed domain name in order to divert consumers to a website where consumers can buy “Generic Valium (Diazepam)” on line. Consequently, the choice of the Respondent is not a coincidence. The disputed domain name was registered in bad faith.
As previously stated, the disputed domain name leads to a website dedicated to selling “Generic Valium (Diazepam)”. By using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s trademarks. This is evidence of registration and use of the disputed domain name in bad faith pursuant to paragraph 4(b)(iv) of the Policy.
For all these reasons, the Panel finds that the disputed domain name has been registered and is being used in bad faith.
The Panel therefore finds that paragraph 4(a)(iii) of the Policy is made out. 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.
Christophe Caron
Sole Panelist
Date: December 13, 2013
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