Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented by Jérôme Rhein, Switzerland.
Respondent is Shop User of Punjab, Pakistan. 2. The Domain Name and Registrar
The disputed domain name (the "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 September 11, 2014. On September 12, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 15, 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 the Respondent of the Complaint, and the proceedings commenced on September 17, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 7, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 8, 2014.
The Center appointed Martin Schwimmer as the sole panelist in this matter on October 17, 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
Complainant asserts that it is one of the world's leading research-focused healthcare groups in the fields of pharmaceutical and diagnostics, having operations in more than 100 countries.
It holds registrations for the mark VALIUM in over one hundred countries, which it uses in relation to "a sedative and anxiolytic drug belonging to the benzodiazepine family […]." The most common generic term for VALIUM is diazepam. Complainant's priority rights in the VALIUM mark date back to 1961.
The domain name was created by Respondent August 18, 2014.
The Domain Name resolves to a website soliciting inquiries in response to the sites offer of both VALIUM diazepam and generic diazepam. 5. Parties' Contentions A. Complainant
Complainant alleges that its VALIUM trademark is well-known and notorious. It provides various newspaper articles to support that contention.
Complainant "strongly denies" the assertion on Respondent's website to the effect that it is associated with Complainant, and denies that Respondent has any license, permission or authorization to sue the VALIUM mark or sell VALIUM-branded products.
Complainant attaches a print-out of Respondent's website indicating that the name is being used in connection with an on-line pharmacy, offering what Respondent purports to be VALIUM brand diazepam, as well as generic diazepam. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Respondent's domain name incorporates Complainant's VALIUM trademark in its entirety. It is the consensus view of UDRP panels to usually disregard the generic Top-Level Domain ("gTLD") suffix as well as generic or descriptive terms such as "buy" and "online" and even the word "generic", for purposes of determining confusing similarity.
The word "generic" raises a question whether, somewhat like the word"sucks", it may mitigate confusing similarity in some way. The Panel notes two compelling arguments against that view.
First, it concurs with prior panels who noted that non-English speakers (or search engines) won't interpret the word "generic" as somehow "disclaiming" trademark affiliation. See, e.g., Lilly ICOS LLC v. Emilia Garcia, WIPO Case No. D2005-0031.
Also, the first element of the Policy is a threshold "standing" requirement. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.2. The question of the interpretation of whether such words would somehow fact mitigate confusion is best left for discussion under the second and third elements of the Policy. See, e.g., Nix Solutions Ltd. V. WhoisGuard Protected / Shaun Ferguson,WIPO Case No. D2014-1475 ( and confusingly similar to Complainant's mark, but were not registered and used in bad faith).
In this dispute, the Panel holds that, pursuant to paragraph 4(a) of the Policy, the disputed domain name is confusingly similar to Complainant's VALIUM mark. B. Rights or Legitimate Interests
Complainant states in no uncertain terms that Respondent is not licensed, permitted, or otherwise authorized to sell products under its mark. The Panel notes that despite the use of the word "generic" in the domain name, the most prominent wording on the site is "a spotlight on valium". The most prominent graphic on the website's home page is a depiction of a tablet of medicine presumably originating with Complainant (as the "V" logo and ROCHE trademark are clearly visible on the tablet). Furthermore, the website inaccurately claims that "We are directly associated with the manufacturers which is why you can be assured of being provided with authentic VALIUM from our website."
Complainant unambiguously states that such claims are false and that Respondent's use is unauthorized (coupled with the fact that neither WhoIs nor the website to which the Domain Name resolves illustrates any sort of trading name use reflecting the trademark), then the Complainant is deemed to have made out a prima facie case and the burden of proving bona fide rights or legitimate interests shifts to Respondent.
The Panel notes that previous panels have held that a respondent has no legitimate interest in a domain name consisting of a famous pharmaceutical trademark used to divert traffic to an unauthorized online pharmacy. See Pfizer, Inc. v jg a/k/a Josh Green,WIPO Case No. D2004-0784).
Complainant also draws the Panel's attention to the claim made on Respondent's website that Respondent will not require users to proffer a prescription to purchase VALIUM. Not only is VALIUM a prescription drug, it is, in the United States, a controlled substance, subjecting it to an even greater degree of restriction on its sales. Even so, the regulation of prescription drug sales is beyond the Panel's competency.
Respondent has not submitted a response to address these allegations, and thus the Panel finds that the Complainant has established an un-rebutted prima facie case and concludes that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith
VALIUM is the subject of the Rolling Stones song "Mother's Little Helper". The rapper "Eminem" has mentioned VALIUM at least three times in his songs. VALIUM is to this Panel, in short, a text book example of a famous trademark, in that it is a coined term that has become a household word.
As stated above, Respondent is utilizing the disputed domain name to purportedly sell both VALIUM branded and generic diazepam. In view of Complainant's allegation that Respondent has no authorization to sell VALIUM, it was clearly aware of the VALIUM mark's commercial magnetism, and is simply misusing Complainant's famous trademark to divert traffic to its website.
Furthermore, the purported offering of a controlled substance without a prescription, constitutes bad faith use. See Aventis, Aventis Pharma SA v. VASHA Dukes,WIPO Case No. D2004-0276.
The Panel finds that Complainant has established that the domain name was registered and used in bad faith, as outlined under paragraph 4(a)(iii) 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.
Martin Schwimmer
Sole Panelist
Date: October 25, 2014
Full & Egal Universal Law Academy