The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, internally represented.
The Respondent is Thomas Donald Stenzel, med2shop of Sunland Park, Arkansas, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Shinjiru MSC Sdn Bhd (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 13, 2015. On July 13, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 16, 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 July 17, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 6, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 7, 2015.
The Center appointed Adam Samuel as the sole panelist in this matter on August 14, 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 a pharmaceutical company. It owns an international trademark number 250784 for VALIUM which was registered on December 20, 1961. The disputed domain name was first registered on February 22, 2015. 5. Parties' Contentions A. Complainant
These are the Complainant's contentions with which the Panel may or may not agree.
VALIUM is a well-known trade mark through its long and extensive use. The disputed domain name consists of the Complainant's trademark VALIUM, the descriptive words "buy" and "online" and the geographical term "usa". Hyphens are added between "buy" and "valium" and between "valium" and "onlineusa". The addition of such generic elements as well as the two hyphens does not sufficiently distinguish the disputed domain name from VALIUM to prevent the disputed domain name from being confusingly similar to the Complainant's trademark.
The Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the Complainant's mark VALIUM. The Respondent's use of the disputed domain name falsely implies that its pharmaceutical products are related or similar to those of the Complainant.
The Respondent is using the domain name to redirect Internet users to an on-line pharmacy. A registrant has no legitimate interest in a disputed domain name that is similar to a pharmaceutical manufacturer's mark and that is being used to direct consumers to an on-line pharmacy. The Respondent did not reply to the Complainant's cease and desist letter and has not availed itself generally of the opportunity to present any arguments about legitimate interests that it might have.
The disputed domain name was registered in bad faith. There is no doubt that the Respondent clearly knew of the VALIUM mark because the Respondent's registration of the disputed domain name, on February 22, 2015, occurred well after the Complainant's registration of the mark, VALIUM.
The disputed domain name is being used in bad faith. The Respondent has deliberately chosen a domain name with a connection to the Complainant's well-known mark in order to mislead consumers, by creating a likelihood of confusion as to the source, affiliation and endorsement of the Respondent's websites or of the products or services posted on or linked to the Respondent's website.
It is obvious that the Respondent is intending to profit from the Complainant's reputation and goodwill in its trademark. Bad faith use is established when the Respondent is using the disputed domain name as a forwarding address to a for-profit on-line pharmacy. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Under the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which it has rights; and
(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's trademark is a highly distinctive and well-known worldwide. It has no independent or normal language meaning. The disputed domain name consists of the descriptive words "buy" and "online" and the geographical term "usa" and hyphens between "buy" and "valium" and between "valium" and "onlineusa". The addition of generic words, hyphens and geographical terms to a distinctive trademark does not prevent the disputed domain name from being confusingly similar to the Complainant's trademark.
For these reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant's trademark. B. Rights or Legitimate Interests
The Respondent is not called "Valium" or anything similar. There is no evidence that the Complainant has ever authorized the Respondent to use its trademarks. For these reasons, and in the absence of any response on this point, notably one contradicting the Complainant's claim that the Respondent has never been connected to it in any way, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
The Respondent clearly knew of the VALIUM mark when he registered the disputed domain name on February 22, 2015, well after the Complainant's registration of the mark VALIUM and many years after the product concerned became widely known. The name of the disputed domain name makes it clear that the Respondent knew about the Complainant's products and wanted to sell them in the United States of America. The website to which the disputed domain name resolves purports to sell the Complainant's products without a prescription. The Respondent is using the Complainant's trademark in order to sell the Complainant's products, when it must know that the Complainant has rights in the name concerned that he is infringing. The Respondent is seeking to profit from the Complainant's reputation in its trademark. This is all evidence of use in bad faith.
For these reasons, the Panel concludes that the disputed domain name was registered and is being used in bad faith. 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.
Adam Samuel
Sole Panelist
Date: August 16, 2015
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