Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally.
Respondent is Berger Charlie of Durango, Colorado, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with EuroDNS S.A. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 9, 2014. On April 9, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 10, 2014, 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 Respondent of the Complaint, and the proceedings commenced on April 15, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 5, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 6, 2014.
The Center appointed Manoel J. Pereira dos Santos as the sole panelist in this matter on May 26, 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 March 31, 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 letter “z” 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. According to Complainant, (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 ad generating unjustified revenues for each click-through by on-line consumers of the sponsored links. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Effect of the Default
The consensus view of UDRP panels is that a respondent’s default does not automatically result in a decision in favor of the complainant and that a 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 Complainant. 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 UDRP 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 previous 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 only difference between the disputed domain name and the trademark is the letter “z” added at the end of the word “valium”.
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. Under those circumstances, it is clear to the Panel that the disputed domain name is confusingly similar to the VALIUM trademark.
Finally, the addition of generic top-level domain suffix “.com” is non-distinctive in this case because it is a simple requirement 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 of URDP panels is that a complainant is required to make out an initial prima facie case, after which the respondent carries the burden of demonstrating its rights or legitimate interests in the domain name. 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 done enough to establish a prima facie case. The Panel finds reasonable Complainant’s contentions that Respondent has never been licensed, authorized or otherwise permitted to use the disputed domain name.
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 registrant's relationship with the trademark owner.
The issue as to whether use of a domain name for purposes of offering “sponsored links” creates a legitimate right to a domain name has been addressed in previous UDRP decisions. There is a consensus view that such use cannot be considered a bona fide offering of goods or services, or a noncommercial or fair use, when a respondent is in fact capitalizing on someone else’s trademark value. See Bridgestone Corp. v. Horoshiy, Inc., WIPO Case No. D2004-0795; Deutsche Telekom AG v. Dong Wong,WIPO Case No. D2005-0819; and PRL USA Holdings, Inc. v. LucasCobb, WIPO Case No. D2006-0162.
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 Respondent lacks rights or legitimate interests in the disputed domain name.
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
Complainants’ contention of bad faith registration is based on the argument that at the time of the registration of the disputed domain name Respondent knew of the existence of the VALIUM trademark. The Panel finds that Respondent must have undoubtedly been aware of the existence of Complainant’s trademark when Respondent registered the disputed domain name as the only difference between the well-known VALIUM trademark and the disputed domain name is the addition of the letter “z” at the end.
The Panel finds that that the disputed domain name was selected and is being used by Respondent to take advantage of the notoriety and good will associated with the VALIUM trademark, with the intent to attract for commercial gain Internet users by utilizing sponsored links. The Panel concurs with the understanding of several other UDRP panels that the use of a domain name to point to a website that offers sponsored links to competing websites is evidence of bad faith. See Mudd, LLC v. Unasi, Inc.,WIPO Case No. D2005-0591; and Volvo Trademark Holding AB v. Unais, Inc.,WIPO Case No. D2005-0556.
As a matter of fact, in the case of a domain name so obviously connected to a registered mark, its use by someone with no legitimate interest in respect of the registered domain name constitutes what has been called as “opportunistic bad faith”. See SSL International PLC v. Mark Freeman,WIPO Case No. D2000-1080; Perfumes Christian Dior v. Javier Garcia Quintas and Christian Dior. net,WIPO Case No. D2000-0226; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163.
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 9, 2014
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