The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally.
The Respondent is Domain ID Shield Service of Hong Kong, China / Laura Yun of Victoria, Mahe, the Seychelles. 2. The Domain Name and Registrar
The disputed domain name is registered with OnlineNic, Inc. d/b/a China-C (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 4, 2014. On November 4, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 5, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name that differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 7, 2014, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on November 11, 2014.
The Center verified that the Complaint together with the amendment to 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").
The Center received several email communications from the Respondent's Registrar-confirmed email address on November 13, 2014 and November 18, 20141.
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 November 18, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 8, 2014. The Respondent did not submit any formal Response. Accordingly, the Center notified the Commencement of Panel Appointment Process on December 10, 2014.
The Center appointed Andrea Dawson as the sole panelist in this matter on January 8, 2015. 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. Hofmann-La Roche AG, is pharmaceutical company with a place of business in Basel, Switzerland, and is the owner of the VALIUM trademark, and all other trademarks used in connection with the VALIUM brand.
The Complainant is one of the world's leading research-focused healthcare group in the field of pharmaceuticals and diagnostics in the health industry. The Complainant has global operations in over 100 countries.
The Complainant's trademark VALIUM is registered and protected worldwide, having registered the trademark for the first time back in October of 1961.
VALIUM is the trademark name of the pharmaceutical drug "diazepam" produced by Complainant.
The disputed domain name was registered on October 21, 2014. 5. Parties' Contentions A. Complainant
The Complainant states that it is the owner of the trademark registration VALIUM filed originally on October of 1961, registration number R250784 (See annex 3 to the Complaint).
The Complainant states that the disputed domain name reproduces the trademark VALIUM and is confusingly similar to the domain names previously registered by the Complainant.
The Complainant adds that the disputed domain name is confusingly similar to the Complainant's trademark seeing that it incorporates the international non-proprietary term "diazepam" and Complainant's trademark VALIUM.
This leads to the conclusion that the disputed domain name is confusingly similar to the Complainant's trademark, making it possible for customers to believe that the disputed domain name is endorsed or related to the Complainant.
The Complainant indicates that there is no trademark registered, in the name of the Respondent, that consists of, or contains, the word "valium", or that it has any right on an unregistered basis in such a mark. In addition, the Complainant has not entered in any agreement, authorization or license with the Respondent with respect to the use of the word "valium".
The Complainant further states that the bad faith of the Respondent can be deduced also by the fact that the Respondent has used the notorious mark VALIUM as a domain name to redirect Internet users to an online pharmacy, for commercial gain and with the purpose of capitalizing on the fame of the Complainant.
The Complainant adds that the trademark VALIUM is a well-known trademark therefore there is no doubt that the Registrant had knowledge of the Complainant's trademark rights.
The Complainant also indicates that it is obvious that the use of the domain name is in bad use since the Respondent has intentionally attempted to attract Internet users to its website by creating a likelihood of confusion with Complainants trademark as to the source, affiliation and endorsement of Respondent´s website, since the website is an online pharmacy.
The Complainant states that it contacted the Respondent before this UDRP proceeding by sending a cease-and-desist letter, however the Respondent merely replied with an offer to sell the disputed domain name to Complainant for USD 10.000USD.
The Complainant finally states that it has established and proven that the three requirements of paragraph 4(a)(i)(ii)(iii) of the Policy have been met in the present case, i.e., that the disputed domain name is confusingly similar to Complainant's VALIUM trademark, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, that is the subject of the Complaint, and that the registration and use of the disputed domain name have been made by the Respondent in bad faith. B. Respondent
The Respondent did not formally reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy stipulates that the Complainant must prove the following three elements in order to be successful in its action:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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
The Complainant has been able to demonstrate that it has rights to the trademark VALIUM (Annex 3 to the Complaint).
The disputed domain name consists of the generic pharmaceutical name "diazepam" and the addition of the Complainant's trademark VALIUM.
In this particular case, the relevant trademark is recognizable as such within the disputed domain name, even with the addition of "diazepam", especially since one can consider that it is merely the generic description of the commercial term of such pharmaceutical Valium.
Moreover, this Panel considers that the risk that Internet users may actually believe there to be a real connection between the disputed domain name and the Complainant and/or its goods and services is absolutely plausible.
Furthermore, this Panel agrees with the general consensus view findings of previous UDRP decisions in that the addition of a generic term - and in this specific case a non-proprietary term such as "diazepam" to a well-known trademark is not sufficient to prevent the resulting domain name from being confusingly similar to the trademark.
For the above-cited reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant's trademark and therefore the condition of paragraph 4(a)(i) of the Policy is fulfilled. B. Rights or Legitimate Interests
According to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent lacks rights or legitimate interests in the disputed domain name. Under paragraph 4(c) of the Policy, the Respondent may demonstrate that it has rights to and legitimate interests in the disputed domain name by proving that:
(i) Before any notice of the dispute to the Respondent, the Respondent used, or made demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods and services; or
(ii) The Respondent has been commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) The Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant's trademark.
The Panel agrees with what has been stated by previous UDRP panels, which is that a complainant is required to make out a prima facie case and finds that it has met that standard.
The Respondent was given the possibility to demonstrate its rights to or legitimate interests in the disputed domain name but failed to prove any of the above-mentioned circumstances, as it did not formally reply to the Complaint.
The Panel notes the arguments of the Complainant that the Respondent did not have any registered trademark corresponding to the disputed domain name. the Panel also notes the Complainant's contention that the Respondent is not commonly known by the name "valium", is not in any way affiliated with the Complainant, nor authorized or licensed to use the VALIUM trademark.
The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, but intentionally misleading consumers to its website by using a domain name confusingly similar to the Complainant's trademark, thus diverting them to its web site.
Furthermore, the Complainant contacted the Respondent before this UDRP proceeding by sending a cease-and-desist letter, however the Respondent merely replied with an offer to sell the disputed domain name to Complainant for USD 10.000USD. UDRP panels have repeatedly stated that when a respondent does not avail itself of its right to respond to a complainant, it may be assumed that the respondent has no rights or legitimate interests in the disputed domain name.
Consequently, the Panel finds that the Complainant has satisfied the requirements of the second element under paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances which, in particular but without limitation, if found by the Panel to be present, shall be evidence of both registration and use of the disputed domain name in bad faith.
The Panel considers that the Complainant has submitted evidence, unchallenged by the Respondent, that the Respondent has registered the disputed domain name with the knowledge of the Complainant's rights in the Complainant's trademarks and that the Respondent's bad faith is evidenced by several circumstances indicating that the Respondent must have been aware of the Complainant's trademarks at the time of the registration of the disputed domain name.
As mentioned by the Complainant, it is unlikely that the Respondent was unaware of the Complainant's rights in the VALIUM trademark when it registered the disputed domain name, since the Complainant owns numerous trademarks that are well-known throughout the world, therefore, it is difficult to conclude that the Respondent did not have this trademark in mind when registering the disputed domain name.
After reviewing the Annexes provided as evidence by the Complainant, the Panel has no hesitation in finding that the disputed domain name was registered in bad faith.
There is evidence to sustain that the Respondent has used the disputed domain name to profit via an online pharmacy web site. The Panel also notes that the web site at the disputed domain name seeks to create the impression of being associated or endorsed by the complainant, which in fact is not the case.
Furthermore, when contacted the Respondent simply offered to sell the disputed domain for valuable consideration in excess of out-of-pocket costs directly related to the disputed domain name, showing no intention to explain the use given to the disputed domain name nor to prove that the use given was legitimate or bona fide, having the possibility to do so, either then or now by means of the UDRP.
So as a conclusion this Panel accepts the arguments of the Complainant that the disputed domain name was registered and used in bad faith as the Respondent intentionally attempts to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of its website.
For the above-cited reasons, the Panel finds that the disputed domain name was registered and used in bad faith; therefore, the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case. 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.
Andrea Dawson
Sole Panelist
Date: January 12, 2015
1 The content of these communications were: "I don't understand what is going on, or what you people want? please leave me alone and stop emailing me, I have no time for games.", "What on earth did you do?" and "What is all this rubbish? you answer me now!".
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