The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally.
The Respondent is Rx Revenue of Moscow, the Russian Federation; Wuxi Yilian LLC of Xiamen, Fujian, China. 2. The Domain Name and Registrar
The disputed domain name is registered with B, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 4, 2015. On August 4, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 7, 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 August 7, 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 August 10, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 21, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 10, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 11, 2015.
The Center appointed Johan Sjöbeck as the sole panelist in this matter on September 22, 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 has submitted evidence that it is the owner of the international trademark VALIUM with registration No. 250784 with priority since October 20, 1961.
The disputed domain name was registered on January 26, 2012. 5. Parties’ Contentions A. Complainant
The Complainant is, together with its affiliated companies, one of the world’s leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics with operations in over 100 countries. The Complainant has built up a worldwide reputation in psychotropic medications through the VALIUM trademark which designates a sedative and anxiolytic drug belonging to the benzodiazepine family. VALIUM is protected as a registered trademark in a number of countries worldwide.
The disputed domain name is composed of the Complainant’s trademark VALIUM in its entirety together with the descriptive words “buy” and “brand”. These additional common elements do not sufficiently distinguish the disputed domain name from the VALIUM trademark. Rather, they lead the public to believe that the Complainant is somehow connected to the disputed domain name. Furthermore, VALIUM is a well-known trademark through long and extensive use and the notoriety will increase the likelihood of confusion.
Since the disputed domain name is confusingly similar to the Complainant’s VALIUM trademark, customers may believe that the disputed domain name is related to the Complainant.
The Complainant has exclusive and prior rights in the trademark VALIUM which precede the Respondent’s registration of the disputed domain name. 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. Furthermore, the Respondent is using the Complainant’s famous trademark to operate an online pharmacy which sells a competing product, i.e. the generic product diazepam, rather than VALIUM. The Respondent’s website displays, under the heading “Buy Brand Valium”, a pricelist of 5 different quantities of a drug described in each case as “Diazepam, Zepose”. Such activity does not represent a legitimate noncommercial or fair use. The Respondent has not replied to the Complainant’s cease and desist letter and hence has not availed itself of the opportunity to present any case of legitimate interest that it might have.
The Respondent is using the disputed domain name to capitalize on the Complainant’s reputation and goodwill in its trademark. Internet users would reasonably rely on the Respondent’s website as a legitimate source to purchase VALIUM drugs since the online pharmacy associated to the disputed domain name provides standard information about VALIUM. As a result, the Respondent is deliberately using a domain name with a connection to the Complainant’s well-known mark VALIUM in order to mislead the consumers and confuse them by making them believe that the disputed domain name, which resolves to an online pharmacy, is recommended by the Complainant. 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 each of the following:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant is, according to the submitted evidence, the owner of the registered trademark VALIUM. The disputed domain name incorporates the Complainant’s trademark VALIUM in its entirety with the addition of the descriptive terms “buy” and “brand”. The addition of the common terms “buy” and “brand” to the VALIUM trademark does not eliminate the confusing similarity in this case.
Having the above in mind, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark VALIUM and that the Complainant has proved the requirement under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests with respect to the disputed domain name. The Respondent may establish rights or legitimate interests in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
(i) that it uses, or has made preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services prior to the dispute; or
(ii) that it is commonly known by the disputed domain name, even if it has not acquired any trademark rights; or
(iii) that it is making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Complainant’s trademark registration for VALIUM predates the Respondent’s registration of the disputed domain name .
According to the submitted evidence, the website to which the disputed domain name resolves is used to operate an online pharmacy where the generic product diazepam is offered for sale. Diazepam is a product that competes with the Complainant’s product VALIUM. Thus, the evidence in the case indicates that the Respondent is neither making a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
Although given the opportunity, the Respondent has not submitted any evidence indicating that the Respondent is the owner of any trademark rights or that it is commonly known by the disputed domain name. By not submitting Response, the Respondent has failed to invoke any circumstances which could demonstrate, pursuant to paragraph 4(c) of the Policy or otherwise, any rights or legitimate interests in respect of the disputed domain name. Thus, there is no evidence in the case that refutes the Complainant’s submissions, and the Panel concludes that the Complainant has also proved the requirement under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include without limitation:
(i) circumstances indicating the disputed domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the disputed domain name; or
(ii) circumstances indicating that the disputed domain name was registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding disputed domain name, provided there is a pattern of such conduct; or
(iii) circumstances indicating that the disputed domain name was registered primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the disputed domain name has intentionally been used in an 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 trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on that website or location.
The Complainant’s VALIUM trademark registration predates the registration of the disputed domain name . In the absence of any evidence to the contrary, the Panel agrees with the Complainant that the Respondent knew or should have known of the Complainant’s trademark VALIUM when registering the disputed domain name especially since the Respondent used the disputed domain name to sell products that directly compete with the Complainant’s product. Furthermore, the Complainant sent a cease and desist letter to the Respondent and the Respondent did not reply.
Thus, the evidence in the case before the Panel indicates that the disputed domain name has intentionally been registered and used in an attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website.
There is no evidence in the case file that refutes the Complainant’s submissions.
The Panel therefore concludes that the Complainant has proved the requirements under paragraph 4(a)(iii) of the Policy and that the disputed domain name has been registered and 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.
Johan Sjöbeck
Sole Panelist
Date: October 1, 2015
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