Complainant is F. Hoffmann-La Roche AG of Grenzacherstrasse Basel, Switzerland, represented by Jérôme Rhein, Switzerland.
Respondent is William Tell, N/A of Panama City, Panama. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 25, 2014. On March 25, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 26, 2014, the Registrar transmitted by email to the Center its verification response confirming that 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 March 31, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 20, 2014. The Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 25, 2014.
The Center appointed Manoel J. Pereira dos Santos as the sole panelist in this matter on May 23, 2014. 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 trademark upon which the Complaint is based is VALIUM. According to the documentary evidence and contentions submitted, Complainant owns a number of registrations for the VALIUM trademark in different countries, including International Trademark registration No. 250784, with the registration date of December 20, 1961.
According to the documentary evidence and contentions submitted, Complainant F. Hoffman-La Roche AG together with its affiliated companies is a leading healthcare supplier in the field of pharmaceuticals and diagnostic products operating in more than 100 countries.
The disputed domain name was registered on January 17, 2014. The documentary evidence shows that the disputed domain name is used to resolve to a web page offering generic products identical to Complainant’s VALIUM products, and which are sold under Complainant’s VALIUM trademark. The Panel visited the website on May 30, 2014 and found out that such activity continues and that the website to which the disputed domain resolves does not accurately and prominently disclose the registrant's relationship with the trademark owner. 5. Parties’ Contentions A. Complainant
Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademark because (i) it incorporates the VALIUM trademark in its entirety; (ii) the addition of the figure “4” and of the plural generic term “bitcoins” does not sufficiently distinguish the disputed domain name from the Complainant’s trademark; and (iii) the likelihood of confusion is increased by the fact that the VALIUM trademark is well-known.
Complainant further contends that Respondent does not have rights or legitimate interests regarding the disputed domain name because (i) Complainant has not licensed, authorized or otherwise permitted Respondent to use the VALIUM trademark; and (ii) Respondent intends to use the disputed domain name for gain and to benefit from the reputation of the VALIUM trademark by redirecting to a webpage and pharmacy online.
Finally, Complainant contends that Respondent registered and uses the disputed domain name in bad faith because (i) Respondent registered the disputed domain name in bad faith because at the time of the registration Respondent knew of the existence of the VALIUM trademark; (ii) Respondent is using the disputed domain name to attract Internet users to its website and to obtain commercial gain from the false impression with regard to an association/affiliation with Complainant; and (iii) Respondent is illegitimately capitalizing on the VALIUM trademark fame. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Effect of the Default
The consensus view of UDRP panels is that respondent’s default does not automatically result in a decision in favor of complainant and that complainant must establish each of the three elements required by paragraph 4(a) of the UDRP. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.2. However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.
The Panel finds that there are no exceptional circumstances in this case for the failure of Respondent to submit a Response. As a result, the Panel infers that Respondent does not deny the facts asserted and contentions made by Complainant from these facts. Reuters Limited v. Global Net 2000, Inc.,WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084; Ross-Simons, Inc. v. Domain.Contact, WIPO Case No. D2003-0994.Therefore, asserted facts that are not unreasonable will be taken as true and Respondent will be subject to the inferences that flow naturally from the information provided by Complainants. Reuters Limited v. Global Net 2000, Inc., supra; RX America, LLC v. Matthew Smith,WIPO Case No. D2005-0540.
The Panel will now review each of the three cumulative elements set forth in paragraph 4(a) of the Policy to determine whether Complainants have complied with such requirements. B. Identical or Confusingly Similar
The disputed domain name incorporates the VALIUM trademark in its entirety. Previous WIPO panels have held that when a domain name wholly incorporates a complainant’s registered trademark that may be sufficient to establish confusing similarity for purposes of the Policy. See, e.g., Telstra Corporation v. Barry Cheng Kwok Chu,WIPO Case No. D2000-0423; Pfizer Inc. v. United Pharmacy Ltd,WIPO Case No. D2001-0446; E.I. du Pont de Nemours and Company v. Richi Industry S. r. l.,WIPO Case No. D2001-1206; Utensilerie Associate S. p. A. v. C & M,WIPO Case No. D2003-0159; Lilly Icos LLC. v. John Hopking/ Neo net Ltd. ,WIPO Case No. D2005-0694; Shaw Industries Group Inc., Columbia Insurance Company v. Wan-Fu China, Ltd.,WIPO Case No. D2007-0282.
As decided in other UDRP cases, “the test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone”. LEGO Juris A/S v. Name Administrator, Hong Kong Domains, LLC., supra. See also Wal-Mart Stores, Inc. v. Traffic Yoon,WIPO Case No. D2006-0812. In the instant case, the combination of the word “valium” with the figure “4” and the term “bitcoins” does not affect the overall impression of the dominant part of the disputed domain name. In fact, several previous UDRP decisions have held that the addition of a common word does not distinguish a domain name from Complainant’s trademark or preclude a finding of confusing similarity. See e.g., Hoffmann–La Roche Inc. v. Hightech Industries, Andrew Browne, WIPO Case No. D2010-0240; Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662.
Also, previous UDRP decisions have recognized that the VALIUM trademark is well-known and this Panel concurs with such finding. See, e.g., F. Hoffmann-La Roche AG v. Med2shop, Thomas Donald Stenzel,WIPO Case No. D2013-2120; F. Hoffmann-La Roche AG v. N/A, tomson eneriho,WIPO Case No. D2013-0483.
Finally, the addition of generic top-level domain suffix “.com” is nondistinctive because it is required for the registration of the domain name. RX America, LLC v. Mattew Smith,WIPO Case No. D2005-0540; Sanofi-Aventis v. US Online Pharmacies,WIPO Case No. D2006-0582.
Therefore, the Panel finds that the disputed domain name is clearly confusingly similar to the VALIUM trademark and, as a result, finds that the requirement of paragraph 4(a)(i) of the Policy is met. C. Rights or Legitimate Interests
The consensus view in the UDRP panel decisions has been that a complainant is required to make out an initial prima facie case, that a respondent does not have rights or legitimate interests in the domain name. It is then for the respondent to rebut such a prima facie showing if the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP, WIPO Overview 2.0, paragraph 2.1.
In the instant case, Complainant has established a prima facie case. In fact, the Panel finds as reasonable Complainant’s contentions that Respondent has never been licensed, authorized or otherwise permitted to use the disputed domain name or any other domain name using Complainant’s trademark.
The Panel also finds that Respondent’s use of the disputed domain name does not satisfy the test for bona fide use established in prior UDRP panel decisions as the disputed domain name is being used to host a website offering generic products identical to Complainant’s Valium products, which are sold under Complainant’s VALIUM trademark, and that such website does not accurately and prominently disclose the Registrants relationship with the trademark owner.
In short, the contents of the site to which the disputed domain name resolves and the explicit use of the VALIUM trademark by Respondent support a finding that Complainant has made a prima facie case against Respondent.
In light of the foregoing, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is met. D. Registered and Used in Bad Faith
The Panel concurs with previous WIPO decisions holding that registration of a well-known trademark as a domain name may be an indication of bad faith in itself, even without considering other elements. See Pepsico, Inc. v. Zhavoronkov,WIPO Case No. D2002-0562; Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; Pepsico, Inc. v. Domain Admin,WIPO Case No. D2006-0435.
In view of the particulars of the instant case, the Panel finds that Respondent was undoubtedly aware of the existence of Complainant’s VALIUM trademark when Respondent registered the disputed domain name. In fact, the Panel sees no plausible explanation for Respondent’s adoption of the term “valium” in conjunction with the figure “4” and term “bitcoins” in the disputed domain name other than to attract for commercial gain Internet users by creating a likelihood of confusion with Complainant’s trademark. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “M”,WIPO Case No. D2000-0847.
The disputed domain name is used to resolve to a website offering generic products identical to Complainant’s Valium products, and which are sold under Complainant’s VALIUM trademark. Paragraph 4(c)(iv) of the Policy provides that if, by using the domain name respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 Respondent’s web site or location or of a product or service on the respondent’s web site or location, that circumstance shall be evidence of the use of a domain name in bad faith.
In short, the manner in which Respondent has registered and is using the disputed domain name demonstrates that the disputed domain name was registered and is being used in bad faith.
In light of all the conclusions and findings above, the Panel finds that the requirement of paragraph 4(a)(iii) of the Policy is met. 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.
Manoel J. Pereira dos Santos
Sole Panelist
Date: June 2, 2014
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