The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally.
The Respondent is Zoi N Mandoza, Private Person of Maldive. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with T, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 16, 2014. On December 17, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 19, 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”).
On December 19, 2014, the Center transmitted an email to the parties in both English and Chinese regarding the language of the proceedings. On December 19, 2014, the Complainant submitted its request that English be the language of the proceedings. The Respondent did not submit any comments within the specified due date.
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 December 29, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 18, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 19, 2015.
The Center appointed Linda Chang as the sole panelist in this matter on January 27, 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 is one of the world’s leading healthcare groups in the fields of pharmaceuticals and diagnostics, and has global operations in more than 100 countries.
The Complainant is the owner of the VALIUM trademark. It has an International Registration No. 250784 for the VALIUM mark, with priority date of October 20, 1961. The mark VALIUM designates a sedative and anxiolytic drug.
The Domain Name was registered on June 19, 2014. At the time of filing the Complaint, it was used for an online pharmacy offering Valium drugs. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name is confusingly similar to its VALIUM trademark. The mark VALIUM is well known and notorious and the notoriety will increase the likelihood of confusion.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. No license, permission or authorization respectively consent was ever granted to the Respondent to use VALIUM in the Domain Name.
The Complainant finally contends that the Domain Name was registered and is being used in bad faith. The Respondent had knowledge of the well-known product/mark VALIUM at the time of the registration and registered the Domain Name in bad faith. The Respondent used the associated website of the Domain Name as online pharmacy and intentionally attempted for commercial purpose to attract Internet users to the websites, by creating a likelihood of confusion with the Complainant’s well-known mark as to the source, affiliation and endorsement of the Respondent’s website or of the products or services posted on or linked to the Respondent’s website. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Language of the Proceedings
The Registrar confirmed the language of the Registration Agreement is Chinese and English. The Complainant filed its Complaint in English and requested for English to be the language of the proceedings for the following reasons:
(a) The Complainant sent a cease and desist letter to the Respondent in English, and the Respondent did not give any feedback that the letter was not comprehensible and should be resent in Chinese;
(b) The website associated with the Domain Name is completely in English; and
(c) English is commonly known as “connecting” language and very often used also in China in business.
The Panel notices the website to which the Domain Name resolved at the time this Complaint was filed was fully displayed in English. The Panel further notices that the Respondent has been given a fair opportunity to object to the use of English as the language of the proceedings but it did not do so.
Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceedings by taking into consideration all relevant circumstances, to ensure fairness of both parties in the language selection. The Panel views that using English as language of the proceedings would not be prejudicial to the Respondent in its ability to articulate the arguments for the case, while if the proceedings are to be conducted in Chinese, additional expense and delay would likely be incurred if the Complaint is requested to be translated into Chinese.
The Panel thus decides that the language of the proceedings shall be English and the decision will be rendered in English. 7. Discussion and Findings A. Identical or Confusingly Similar
The Panel recognizes that the Complainant has registered trademark rights in the VALIUM mark. The Complainant is the owner of International Registration No. 250784 VALIUM trademark, with priority date of as early as October 20, 1961.
The Domain Name consists of “valium”, which is identical to the Complainant’s VALIUM trademark. The Panel views that the addition of pure descriptive words “i” and “want” could not avoid a finding of confusing similarity, but instead, would increase the likelihood of confusion between the Domain Name and the Complainant’s trademark, since Valium is well-known sedative and anxiolytic drug worldwide.
As an addition of the suffixes such as “.com” being the generic Top-Level Domain does not typically function as a distinguishing factor, the Panel accordingly finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy and the Domain Name is confusingly similar to the Complainant’s VALIUM trademark. B. Rights or Legitimate Interests
There is no indication that the Respondent demonstrated, before notice to it of the dispute, use of or demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services. In fact, the Respondent was once using the Domain Name as online pharmacy without authorization and disclosing its real relationship with the Complainant. The Panel finds that the Respondent’s use of the Domain Name to divert Internet users to an unauthorized website is not a bona fide use within the meaning of paragraph 4(c)(i) of the Policy.
In the circumstances where the Complainant possesses exclusive trademark rights while the Respondent seems to have no trademark rights in VALIUM and the Complainant claims it has never granted any license, permission or authorization to the Respondent to use VALIUM in the Domain Name, the Panel is satisfied that the Respondent does not have rights or legitimate interests in respect of the Domain Name under paragraph 4(c) of the Policy.
It is well-established by UDRP precedents that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent. See International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio,WIPO Case No. D2002-0683. The Respondent however has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the Domain Name.
The Panel thus concludes that the Respondent has no rights or legitimate interests in respect of the Domain Name. C. Registered and Used in Bad Faith
The Complainant and its VALIUM trademark enjoy a high reputation worldwide. The Panel finds it quite unlikely that the Respondent had no actual notice of the Complainant’s VALIUM trademark at the time of the registration of the Domain Name, given the notoriety of the mark and that the word “valium” has no additional meanings other than as the Complainant’s trademark. More importantly, the Respondent was using the Domain Name to offer Valium drugs. The Panel concludes that the Respondent was well aware of the VALIUM mark at the time of the registration and such awareness suggests opportunistic bad faith registration. See Deutsche Bank AG v. Diego-Arturo Bruckner,WIPO Case No. D2000-0277.
The Complainant has introduced sufficient evidence to demonstrate that the Respondent is using the Domain Name in bad faith, including using the Domain Name to host an online pharmacy to offer Valium drugs. The Panel holds that the Respondent, by using the Domain Name, is trying to profit from the diversion of Internet users by confusion between the Domain Name and the Complainant. The Respondent’s purpose of registering the Domain Name is to trade on the fame of the Complainant’s famous VALIUM trademark, in order to attract, for commercial gain, Internet users to the corresponding website under the Domain Name, by creating a likelihood of confusion with the Complainant and the VALIUM trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of a product or service on the Respondent’s website.
Based on the above facts and reasons, the Panel finally concludes that the Respondent registered and is using the Domain Name in bad faith. 8. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, , be transferred to the Complainant.
Linda Chang
Sole Panelist
Date: February 17, 2015
Full & Egal Universal Law Academy