The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally.
The Respondent is Jeremiah Heisenberg of Victoria, Seychelles / Domain ID Shield Service, Domain ID Shield Service CO., Limited of Hong Kong, China. 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 January 13, 2015. On January 13, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 14, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 16, 2015 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 January 19, 2015.
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”).
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 January 20, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 9, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 16, 2015.
The Center appointed Beatrice Onica Jarka as the sole panelist in this matter on March 11, 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, together with its affiliated companies, a large healthcare group in the fields of pharmaceuticals and diagnostics, having global operations in more than 100 countries.
The Complainant’s mark VALIUM is a sedative and anxiolytic drug belonging to the benzodiazepine family, with a worldwide reputation. According to the non-contested allegations of the Complainant, VALIUM is protected as trademark in a multitude of countries worldwide. The example provided by the Complainant is international registration number R250784. Priority date of the mark VALIUM is October 20, 1961.
For the purposes of this proceeding, this Panel considers the VALIUM trademark as a famous mark. In this sense, see F. Hoffmann-La Roche AG v. NetMarketing cc,WIPO Case No. D2005-1216, where the panel determined the VALIUM mark to be “well-known and notorious”; F. Hoffmann-La Roche AG v. Ashima Kapoor,WIPO Case No. D2005-1351; and Roche Products Inc. v. Slava c/o Dynadot Privacy,WIPO Case No. D2010-1862, where the panel considered the VALIUM trademark a famous one.
The disputed domain name was created on October 20, 2014. According to the Complainant’s unrebutted contentions, the disputed domain name is used in connection with an online pharmacy where Valium may be purchased. 5. Parties’ Contentions A. Complainant
Complainant asserts that:
- The disputed domain name is confusingly similar to the Complainant’s mark as it incorporates this mark in its entirety.
- The addition of the generic terms “buy” and “online” as well as of the geographical term “USA” does not sufficiently distinguish the disputed domain name from the trademark.
- The Complainant’s mark VALIUM is well-known and notorious and this will increase the likelihood of confusion.
- The Complainant has exclusive rights for VALIUM and no license/permission/authorization respectively consent was granted to use VALIUM in the disputed domain name.
- The Respondent uses the disputed domain name for commercial gain and with the purpose of capitalizing on the fame of the Complainant’s Mark VALIUM to redirect Internet users to a pharmacy online.
- The disputed domain name was registered in bad faith since at the time of registration the Respondent had knowledge of the Complainant’s mark VALIUM.
- The disputed domain name is being used in bad faith as the Respondent has intentionally attempted for commercial purposes to attract Internet users to Respondent’s website by creating a likelihood of confusion with the Complainant’s well known mark as to the source, affiliation and endorsement of 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. Discussion and Findings A. Identical or Confusingly Similar A1. Rights in Complainant’s trademark
The Complainant has presented evidence to demonstrate that it owns registered trademark rights in VALIUM throughout the world. A2. Identity or confusing similarity with the Complainant’s trademark
The mere fact that the Respondent has added to the VALIUM mark the descriptive terms “online” and “buy” as well as of the geographical term “USA” and the suffix “.com” does not affect the essence of the matter. The disputed domain name is identical or confusingly similar to the trademark of the Complainant and, in the circumstances of this case, is by itself sufficient to establish the criterion of identity or confusing similarity for purposes of the Policy, as many UDRP panels have found in the past. See e.g., F. Hoffmann-La Roche AG v. Med2shop, Thomas Donald Stenze,WIPO Case No. D2010-1893; F. Hoffmann-La Roche AG v. NetMarketing cc,WIPO Case No. D2005-1216; Roche Products Inc. v. RX World, Nils Bor,WIPO Case No. D2010-1893 and Roche Products Inc. v. Slava c/o Dynadot Privacy,WIPO Case No. D2010-1862.
In view of the above, the Panel finds the disputed domain name is identical or confusingly similar, at least, to the Complainant’s trademark VALIUM and that the Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) has been made by the Complainant.
It cannot be contested that the Respondent has not been licensed/permitted/authorized to use the Complainant’s VALIUM mark on the Respondent’s website or to appropriate the mark for use as a domain name, and there is no indication that the Respondent has ever been commonly known by the disputed domain name.
It is to be noted that the Respondent’s website to which the disputed domain name resolves is an online pharmacy which apparently sells the Complainant’s Valium drug. No information as to any connection to the Complaint is displayed on such website. For this reason, among others, the Respondent is not making a bona fide offering of goods as a reseller or distributor of the Complainant’s trademarked goods. See Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903.
Moreover, the presumption is that the website to which the disputed domain name resolves offers Valium without a prescription. Such use of the Complainant’s trademark on the website at the disputed domain name may be considered as an act which may cause significant harm to the Complainant’s reputation and negative consequences to those taking medication which may not be appropriate to them as decided inRoche Products Inc. v. RX World, Nils Bor, Supra.
The Respondent has not submitted a Response to deny the Complainant’s assertions concerning the inappropriate nature of such use of the Complainant’s trademark or to explain why the disputed domain name was used in such a way when there is no obvious connection between the Respondent and the Complainant.
Further the Respondent does not seem to have any trademark registrations including the term “valium”.
As a conclusion on this point, the Panel holds that the Complainant has established an uncontested, prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Complainant has shown that its trademark VALIUM is a globally well-known trademark as well as used and registered long before the Respondent registered the disputed domain name. Thus, it is clear to this Panel as it was for other UDRP panels before in similar situations, that the Respondent had the Complainant’s trademark in mind when the Respondent registered the disputed domain name, which indicates a bad faith intent at registration.
Moreover, as indicated in F. Hoffmann-La Roche AG v. Whois Agent, Whois Privacy Protection Service,WIPO Case No. D2014-0496, the Panel furthermore agrees with the Complainant that the Respondent has intentionally attempted (for commercial purpose) to attract Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s trademark as to the source, affiliation and endorsement of the Respondent’s website or of the products or services posted on or linked to Respondent’s website.
Also, the Respondent is intentionally misleading consumers and confusing them by making them believe that the website to which the disputed domain name resolves and the web shop to which it links are associated or recommended by the Complainant. Indeed, as has been held by a previous UDRP panel, bad faith may be established when “Respondent is using the domain names as a forwarding address to a for-profit on-line pharmacy” (see Pfizer Inc. v. jg a/k/a Josh Green,WIPO Case No. D2004-0784). In this case, the website of the Respondent functions as such a forwarding address. The Panel therefore considers the requirement of paragraph 4(a)(iii) to be met.
Last, the Panel also notes the default of the Respondent, which, in the present circumstances, “reinforces the inference of bad faith registration and bad faith use”. The Hongkong and Shanghai Banking Corporation Limited v. Bill Lynn,WIPO Case No. D2001-0915.
As a consequence of the above, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith, and that the Complainant has satisfied 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.
Beatrice Onica Jarka
Sole Panelist
Date: March 24, 2015
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