The Complainant is F. Hoffmann-La Roche AG, Basel, Switzerland, internally represented.
The Respondent is Fred Baker, Private Person, Mahe, Seychelles. 2. The Domain Names and Registrar
The disputed domain names , ,
and are registered with Registrar of Domain Names REG.RU LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 31, 2015. On March 31, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 1, 2015, 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 April 2, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 22, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 24, 2015.
The Center appointed Peter Burgstaller as the sole panelist in this matter on May 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 one of the world’s leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics. The Complainant’s mark VALIUM is protected as a registered trademark in several countries with trademark protection in Switzerland since 1961 (Annex 3 to the Complaint), and it is widely known throughout the world.
The Respondent registered the disputed domain names on December 22, 2014 (Annex 1 to the Complaint). 5. Parties’ Contentions A. Complainant
The disputed domain names are confusingly similar to the famous and well known mark VALIUM over which the Complainant has had rights since 1961. To add the prefixes and suffixes “buy” and “online” to the mark VALIUM does not make the disputed domain names distinctive form the mark VALIUM.
The Respondent has no rights or legitimate interests in respect of the disputed domain names and the Respondent has registered and is using the disputed domain names in bad faith by addressing or redirecting/forwarding to a website where Internet users are allowed to purchase pharmaceuticals online.
For these reasons the Complainant requests the disputed domain names to be transferred. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests with respect to the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
The disputed domain names incorporate the Complainant’s famous mark VALIUM. Even though the disputed domain names include other words, it is the Panel’s view that adding descriptive or non-distinctive signs (e.g. “online” and “buy”) does not avoid the likelihood of confusion. The fame and notoriety of the mark VALIUM moreover increase the likelihood of confusion.
In fact it is the Panel’s conviction that using the words “buy” and “online” together with the mark VALIUM rather strengthens the impression that the disputed domain names are in some way connected to the Complainant or at least “free ride” on the fame/publicity of the Complainant’s trademark VALIUM (see e.g. Telstra Corporation Limited v. Peter Lombardo, Marino Sussich and Ray Landers,WIPO Case No. D2000-1511, et al; Dixons Group Plc v. Mr. Abu Abdullaah,WIPO Case No. D2000-1406, ; Ryder Cup Europe LLP v. R / Andrew Seaforth,WIPO Case No. D2010-0688, ; Sanofi-aventis, AVENTISUB II Inc. v. MuruganNadar / Rajesh Singh,WIPO Case No. D2010-1959, ; Société des Produits Nestlé S.A. v. MrT LLC,WIPO Case No. D2012-1356 et al; Allianz SE v. Roy Lee / Traffic-D,WIPO Case No. D2012-1459 et al, Swarovski Aktiengesellschaft v. mei xudong,WIPO Case No. D2013-0150 or Swarovski Aktiengesellschaft v. ‘’,WIPO Case No. D2013-0335 ).
It has also long been held that suffixes such as a country code or generic Top-Level Domain (“gTLD”) cannot typically negate confusing similarity where it otherwise exists, as it does in the present case.
The Panel therefore finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
However, by virtue of paragraph 4(c) of the Policy, it is open to a respondent to establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
If the Respondent proves any of these elements or anything else that shows it has a right or legitimate interest in the disputed domain names, the Complainant will have failed to discharge its onus and the Complaint will fail with respect to the disputed domain names.
However, in the present case the Respondent failed to submit a Response. It is well established that, as it is put in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second edition (“WIPO Overview 2.0”), paragraph 2.1, “complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegation or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP”.
Considering all of the evidence in the Complaint (especially with regard to the Annexes presented by the Complainant) and the Complainant’s contentions that the Respondent has no rights or legitimate interests in the disputed domain names, that the Respondent has no connection or affiliation with the Complainant and the Respondent has not received any license or consent, express or implied, to use the Complainant’s trademark VALIUM in a domain name or in any other manner lead the Panel to the conclusion that the Complainant has made out an undisputed prima facie case so that the conditions set out in paragraph 4(a)(ii) of the Policy have been met by the Complainant. C. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, if the following circumstances, in particular but without limitation, are found by the Panel to be present, it shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from using the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s web site or location.
As stated in many decisions rendered under the Policy (Robert Ellenbogen v. Mike Pearson,WIPO Case No. D2000-0001, ) both conditions, registered and used in bad faith, are cumulative, consequently, the Complainant must show that:
- the disputed domain names were registered by the Respondent in bad faith, and
- the disputed domain names are being used by the Respondent in bad faith. Registered in bad faith
To this Panel it is incontestable that the Respondent has registered the disputed domain names in bad faith because solely the fact of adding the words “buy” and “online” shows that the Respondent must have been aware of the fame and distinctiveness of the trademark VALIUM. When registering the disputed domain names, it is unlikely that the Respondent would have chosen these names unless seeking to create an impression of association with the Complainant’s fame and reputation – the sign VALIUM is not a descriptive or generic term.
The act of adding words like “buy” and “online” to domain names which incorporate a famous mark like in the present case is evidence of bad faith registration per se (see AT&T Corp. v. LaPorte Holdings, Inc.,WIPO Case No. D2004-1088, ; Société des Produits Nestlé S.A. v. MrT LLC,WIPO Case No. D2012-1356 et al). Used in bad faith
In order to meet paragraph 4(a)(iii) of the Policy the Complainant must also prove that the disputed domains name are being used in bad faith.
In the present case the Respondent has already directed one of the disputed domain names to an online pharmacy selling Valium. Given that the same Respondent is the registrant of all the disputed domain names, and the commercial nature of all the disputed domain names, the panel finds that the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likehood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website (Annex 6 to the Complaint). .
It is therefore the Panel’s conviction that the disputed domain names were registered and are being used in bad faith by the Respondent and the conditions set out in paragraph 4(a)(iii) of the Policy have been met by the Complainant. 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 names , , and be transferred to the Complainant.
Peter Burgstaller
Sole Panelist
Date: May 22, 2015
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