Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally.
Respondent is Sandra V Alvarez R of Los Lagos, Chile. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Domains Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 9, 2015. On April 9, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on April 16, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 6, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 7, 2015.
The Center appointed Lawrence K. Nodine as the sole panelist in this matter on May 19, 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
Complainant is a Swiss company that, together with its affiliated companies, forms a healthcare group in the field of pharmaceuticals and diagnostics that has global operations in over 100 companies. Complainant owns rights in the mark VALIUM, which refers to a sedative and anxiolytic drug belonging to the benzodiazepine family. This drug has enabled Complainant to build a world-wide reputation in psychotropic medications.
Complainant holds International Registration No. 250784 dated December 20, 1961 for the VALIUM mark in International Classes 01, 03 and 05 designating over 40 countries.
Complainant’s VALIUM trademark has been mentioned in numerous articles and publications around the world, including a New York Times article which termed the drug “an American cultural icon”.
The disputed domain name was registered on February 20, 2015 and resolves to a website that purports to promote the sale of “generic Valium” and links to an online pharmacy where “generic Valium” can be purchased. 5. Parties’ Contentions A. Complainant
Complainant alleges that it has trademark rights in the VALIUM mark as evidenced by its worldwide registrations, that the VALIUM mark has become well-known and notorious, that the disputed domain name is confusingly similar to the VALIUM mark, and that the letter “e” and the verb “buy” do not sufficiently distinguish the disputed domain name from VALIUM.
Complainant states that Respondent has no rights or legitimate interests in the disputed domain name, has no rights in the VALIUM trademark, and was not granted any license, permission or authorization to use VALIUM in the disputed domain name.
Regarding bad faith registration and use, Complainant states that its priority date for the VALIUM mark is December 20, 1961 and that the VALIUM mark has become well-known and notorious, such that Respondent registered the disputed domain name with knowledge of Complainant’s registered VALIUM trademark. Complainant alleges that Respondent is using the disputed domain name in bad faith because it is “intentionally attempt[ing] (for commercial purpose) to attract Internet users to the Respondent’s websites, by creating a likelihood of confusion with the Complainant’s well-known mark as to the source, affiliation or endorsement” of Respondent’s website or products thereon.
Complainant also references two prior WIPO UDRP decisions, which resulted in the transfer of the domain names and , both of which were registered by the subject Respondent, to Complainant on September 26, 2014 and February 13, 2015 respectively. B. Respondent
Respondent did not respond to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel finds that Complainant has many trademark registrations reflecting its trademarks rights in the VALIUM mark. The Panel further finds that the disputed domain name is confusingly similar to the VALIUM mark because it incorporates the entirety of the trademark with the addition of only the terms “e” and “buy”, which do not sufficiently differentiate the disputed domain name from the VALIUM mark and clearly intend to reference the VALIUM mark.
The Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The evidence of record supports Complainant’s unrebutted allegations that Respondent is not authorized to use the VALIUM mark and is not sponsored by or affiliated with Complainant in any way. Further, the Panel accepts that the disputed domain name was registered with the intention of referencing Complainant’s mark in order to promote a generic version of Complainant’s branded pharmaceutical. Respondent’s use of VALIUM in the disputed domain name is impermissible because it may be confusing as to the actual source of the goods. Roche Products Limited v. PrivacyP/Stas Chernov,WIPO Case No. D2011-2096. Additionally, Respondent uses the terms “Valium” and “generic Valium” throughout the webpage to market and sell “Valium Online Without Prescription”. This is misleading, as Respondent is not marketing or selling Valium, but the generic version of this drug, which is called “diazepam”. F. Hoffman-La Roche AG v. Fundacion Private Whois,WIPO Case No. D2012-1596. It is clear that Respondent’s use of “valium” in the disputed domain name and website and of “generic Valium” on the website is not a bona fide use. Complainant has made a prima facie showing that Respondent has no rights or legitimate interests in the disputed domain name; the Respondent, by virtue of its default, has failed to rebut that showing.
The Panel finds that Complainant has carried its burden and satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Respondent did not contest Complainant’s allegations of bad faith registration and use. It is highly unlikely that Respondent was unaware of Complainant’s trademark rights when Respondent registered the disputed domain name on February 20, 2015, since Complainant had trademark registrations in the VALIUM mark for more than 53 years prior to the registration of the disputed domain name, and has used the VALIUM mark extensively worldwide. Additionally, based on the results of the two prior WIPO UDRP cases between the same Complainant and Respondent regarding the domain names and , decided on September 26, 2014 and February 13, 2015 respectively, both prior to Respondent’s registration of the present disputed domain name, it is apparent that Respondent was aware of Complainant’s rights and its own lack of rights. F. Hoffman-La Rocha AG v. Sandra V. Alvarez R,WIPO Case No. D2014-1427; F. Hoffman-La Rocha AG v. Sandra V. Alvarez R,WIPO Case No. D2014-2186.
There is also evidence of bad faith use. Respondent is using the disputed domain name to direct Internet traffic to a for-profit on-line pharmacy that sells pharmaceuticals that directly compete with Complainant. This is bad faith use. F. Hoffman-La Roche AG v. Maniamin James,WIPO Case No. D2012-2312 (bad faith use to misdirect consumers to online pharmacy supplying a generic version of Complainant’s drug). 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 Complainant.
Lawrence K. Nodine
Sole Panelist
Date: June 2, 2015
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