The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, internally represented.
The Respondents are Hostmaster, NIC.UA LLC of Dnepropetrovsk, Ukraine and Svetlana Golovina of Izmail, Ukraine. 2. The Domain Names and Registrar
The disputed domain names, , , and (the "Domain Names"), are registered with PDR Ltd. d/b/a PublicDomainR (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 27, 2016, naming Hostmaster, NIC.UA LLC ("NIC.UA") as the Respondent.
The Center transmitted its request for registrar verification to the Registrar on June 28, 2016. The Registrar replied on June 29, 2016, confirming that it had received a copy of the Complaint, that the Domain Names were registered with it, that the named Respondent was the registrant, that the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP") applied, that the Domain Names were registered on April 19, 2016, and would expire on April 19, 2017, that they had been placed and would remain on Registrar Lock until expiry, and that English was used to inform the registrant of the language of the registration agreement. The Registrar also provided the full contact details held on its WhoIs database in respect of the Domain Names, which identified Hostmaster, NIC.UA as the registrant.
The Center verified that the Complaint satisfied the formal requirements of the 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 paragraphs 2 and 4 of the Rules, the Center formally notified the Respondent, NIC.UA, of the Complaint, and the proceedings commenced on July 1, 2016. In accordance with paragraph 5 of the Rules, the due date for Response was July 21, 2016. The Respondent, NIC.UA, filed a Response with the Center on July 14, 2016. This Response stated that the Domain Names were registered by the Respondent, NIC.UA, on behalf of Svetlana Golovina ("Golovina") of Izmail, Ukraine, and provided contact details for her including an email address.
The Center appointed Jonathan Turner as the sole panelist in this matter on August 2, 2016. The Panel submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules.
In view of the statements made in the Response of NIC.UA, the Panel made a Procedural Order requiring the Center to transmit copies of the Complaint, the Response and this Order to Golovina at her email address as provided by NIC.UA, and requiring her to inform the Center by August 12, 2016, whether she accepts the statement in the Response that she is the registrant of the Domain Names and her Response to the allegations made in the Complaint. No submission was received by the Center from Golovina by this date.
The Panel notes that it is the responsibility of a registrant to ensure that the correct contact details are held on the registrar's WhoIs database, and that the Center had fully complied with the requirements for notification of the Complaint to the registrant identified by the Registrar. Nevertheless, the Panel considered it right to make the Procedural Order mentioned above in order to ensure that the underlying registrant had a fair opportunity to present her case in accordance with paragraph 10(b) of the UDRP Rules.
Under paragraph 4(b) of the Rules, "[a]ny updates to the Respondent's data, such as through the result of a request by a privacy or proxy provider to reveal the underlying customer data, must be made before the two (2) business day period concludes or before the Registrar verifies the information requested and confirms the Lock to the UDRP Provider, whichever occurs first. Any modification(s) of the Respondent's data following the two (2) business day period may be addressed by the Panel in its decision."
In this case, the Respondent, NIC.UA, had been verified as the registrant by the Registrar but identified an alleged underlying registrant subsequent to the period in which any such update was required to be made under paragraph 4(b) of the Rules. In the absence of any reply by Golovina to the Procedural Order, the Panel has considered it appropriate to consider the issues in this case on the basis that the Respondent is either NIC.UA or Golovina. 4. Factual Background
The Complainant's group is a leading worldwide supplier of pharmaceuticals, including psychotropic medications sold under the marks VALIUM and KLONOPIN. The Complainant has registered VALIUM as a trademark in numerous countries and has an International Registration with priority date of October 20, 1961. The Complainant has also registered KLONOPIN as a trademark in Morocco since September 9, 1994, and its affiliated company, Hoffmann-La Roche Inc. has registered this trademark on the principal trademark register of the United States Patent and Trademark Office ("USPTO") as of November 4, 1986.
The Domain Names are directed to online pharmacy websites apparently offering for sale pharmaceuticals under the marks VALIUM (in the case of the Domain Names and ) and KLONOPIN (in the case of the Domain Names and ). There is no indication on these websites that they are not authorized by the Complainant's group.
The Complainant sent an email to the Respondent, NIC.UA, on June 14, 2016, drawing attention to its trademark rights and demanding transfer of the Domain Names. There was no reply. 5. Parties' Contentions A. Complainant
The Complainant contends that the Domain Names and are confusingly similar to the trademark VALIUM and that the Domain Names and are confusingly similar to the trademark KLONOPIN. The Complainant refers to its registered rights in these trademarks and also points out that VALIUM is a well-known trademark as a result of its long and extensive use. The Complainant maintains that the Domain Names are confusingly similar to the respective trademarks, since they consist of these marks in their entirety together with the generic terms "drugs", "buy" and "online".
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Domain Names. The Complainant points out that it has exclusive and prior rights in the trademarks VALIUM and KLONOPIN and states that the Respondent has no connection or affiliation with nor any licence or consent from the Complainant to use its trademarks. According to the Complainant, the Respondent is falsely implying that its pharmaceutical products are related or similar to those of the Complainant and is using the Domain Names with the purpose of capitalizing on the reputation of the Complainant's trademarks. The Complainant adds that the Respondent did not reply 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 Complainant also draws attention to the Respondent's concealment of its identity by a privacy service.
The Complainant alleges that the Domain Names were registered and are being used in bad faith. The Complainant emphasizes that they were registered well after the Complainant's registrations of the trademarks mentioned above, and that the Respondent must have had these trademarks in mind since the Domain Names consist of these marks together with generic terms relating to the Complainant's core business. The Complainant maintains that the Domain Names are being used in bad faith to attract Internet users, who expect to be led to a genuine website of or endorsed by the Complainant. The Complainant observes that Internet users would rely on the Respondent's websites as legitimate sources of the Complainant's VALIUM and KLONOPIN products, especially as the websites display packages bearing the Complainant's logo and standard information about these products. According to the Complainant, the failure of the Respondent to reply to the Complainant's cease-and-desist letter is a further indication of bad faith.
The Complainant requests a decision that the Domain Names be transferred to it. B. Respondent
As noted above, the Respondent, NIC.UA, states that it registered the Domain Names on behalf of Golovina. The Response of NIC.UA does not address the substantive allegations in the Complaint. No Response has been submitted by Golovina. 6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant must prove in relation to each of the Domain Names: (i) that the Domain Name is identical or confusingly similar to a mark in which it has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith. It is appropriate to consider each of these requirements in turn. A. Identical or Confusingly Similar
The Panel finds that the Complainant has registered rights in the trademarks VALIUM and KLONOPIN, as proprietor or, in the case of the USPTO registration of KLONOPIN, as a member of a group of companies using and sharing the reputation of the mark registered in the name of another member of the group. Numerous UDRP panel decisions have confirmed that a complaint can be brought under the UDRP by a member of a group of companies based on a mark of the group, even if it is registered in the name of a different company in the group: see paragraph 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
The Panel further finds that the Domain Names and are confusingly similar to the trademark VALIUM and that the Domain Names and are confusingly similar to the trademark KLONOPIN. The Domain Names consist of the respective marks in their entirety together with generic terms referring to the Complainant's products ("drugs") or the availability of the Complainant's products on the Internet ("buy" and "online"), and the generic Top-Level Domain ("gTLD") suffix, .com. Many Internet users would understand the Domain Names to refer to the Complainant's products sold under the marks VALIUM and KLONOPIN and to locate websites where they might be purchased.
The first requirement of the UDRP is satisfied. B. Rights or Legitimate Interests
It is not clear to the Panel whether the products apparently offered for sale on the websites located by the Domain Names are or are not genuine products originally supplied by the Complainant under the corresponding trademarks. However, even if they are genuine products of the Complainant, the Panel is satisfied that the Respondent (however identified) does not have rights or legitimate interests in respect of the Domain Names.
As noted in paragraph 2.3 of the WIPO Overview 2.0, many UDRP panels have followed the guidance in the Oki Data decision, as to the circumstances in which a business may be regarded as making a bona fide offering of goods or services, and hence as having a legitimate interest in the domain name in accordance with paragraph 4(c)(i) of the UDRP, when it uses a domain name corresponding to a supplier's mark to locate a website advertising the resale of that supplier's products or services.
According to that guidance, a business using such a domain name in this way may have a legitimate interest, provided that the following conditions are satisfied: that it is actually offering the products or services at issue; that the website at the domain name is used to promote only those products or services; that the website accurately and prominently discloses the true relationship between the registrant and the supplier; and that the registrant does not attempt to register all domain names that reflect the supplier's mark.
In this case, the websites located by the Domain Names do not accurately and prominently disclose the Respondent's true relationship with the Complainant. As stated above, the websites contain no indication at all of the fact that the Respondent is not connected with or authorized by the Complainant. This condition of legitimacy is not satisfied and the Respondent cannot therefore be regarded as making a bona fide offering within the meaning of paragraph 4(c)(i) of the UDRP so as to confer a right or legitimate interest in the Domain Names.
Furthermore, it is evident that neither Respondent is commonly known by any of the Domain Names and that neither Respondent is making a legitimate noncommercial or fair use of them.
In the circumstances there is no other basis on which either Respondent could claim rights or legitimate interests in the Domain Names. The second requirement of the UDRP is satisfied. C. Registered and Used in Bad Faith
The Panel finds on the evidence that Internet users are likely to be misled by the Domain Names into believing that the websites located by them are websites of the Complainant's group or are authorized by it. The likelihood of deception is reinforced by the use of the Complainant's group's logos and standard information on these websites and the absence of any statement explaining that these sites are not authorized by the Complainant's group. Furthermore, having regard to all the circumstances, the Panel considers that it was the intention of the person responsible for these websites to mislead Internet users.
Accordingly, the Panel finds that by using the Domain Names the Respondent (however identified) has intentionally attempted to attract Internet users to these websites for commercial gain by creating a likelihood of confusion with the Complainant's marks as to the source, sponsorship, affiliation or endorsement of these websites.
Under paragraph 4(b)(iv) of the UDRP this constitutes evidence that the Domain Names were registered and are being used in bad faith. There is no material on the file which would displace this presumption. In all the circumstances, the Panel finds that the Domain Names were registered and are being used in bad faith. The third requirement of the UDRP is satisfied.
The Panel concludes that all three requirements of the UDRP are satisfied. The Domain Names should be transferred to 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 Domain Names, , , , and , be transferred to the Complainant.
Jonathan Turner
Sole Panelist
Date: August 26, 2016
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