The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally.
The Respondent is Aleksey I Martynenko of Kharkov, Ukraine. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with ELB Group Inc (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 17, 2017. On March 17, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 19, 2017, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 25, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 15, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 16, 2017.
The Center appointed Gareth Dickson as the sole panelist in this matter on May 30, 2017. 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 the registered proprietor of International trade mark number 250784 for VALIUM, which was registered on December 20, 1961 (the “Trade Mark”). The Trade Mark is registered for, inter alia, medicaments and chemical products for medicine and hygiene.
The Domain Name was registered on November 7, 2016. The postal address appearing on the WhoIs for the Domain Name is incomplete or wrong, such that the Respondent cannot be reached by post.
The Domain Name directs users to an online pharmacy where visitors are offered various quantities of “pills”. These pills are described there as “Valium anti-anxiety medication”, “Generic Valium (Diazepam) 10 mg” and “Generic Valium (Diazepam) 5 mg”.
Five paragraphs of text on the website accessed via the Domain Name purport to give visitors information about Valium. 5. Parties’ Contentions A. Complainant
The Complainant argues that the Domain Name is confusingly similar to the Trade Mark since: the Domain Name incorporates the Trade Mark in its entirety; and the string “5mg” merely refers to the dose of the active ingredient in VALIUM tablets (diazepam) without distinguishing the Domain Name from the Trade Mark. The Complainant argues that the notoriety of VALIUM as a trade mark, evidenced by newspaper and magazine articles, increases the likelihood of confusion.
The Complainant states that the Respondent has no connection or affiliation with the Complainant and has not received any license or consent to use VALIUM in the Domain Name. The Complainant also states that the Respondent’s use of the Domain Name to resolve to an online pharmacy which “promotes and sells VALIUM drugs” is for the purpose of trading on the Complainant’s goodwill.
Finally, the Complainant asserts that the Domain Name was registered in bad faith because the Respondent had knowledge of the Trade Mark, which it says is a famous trade mark, when registering the Domain Name; and that the Domain Name is being used in bad faith because the Respondent has used the Trade Mark to attract users to the Respondent’s website for commercial gain by creating a likelihood of confusion as to the source, affiliation and endorsement of that website or the products or services offered there. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under Paragraph 4(a) of the Policy, the Complainant bears the burden of proving that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
These criteria are cumulative. The failure of the Complainant to prove any one of them means the Complaint must be denied. A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark.
The Domain Name contains an identical reproduction of the Trade Mark followed by the characters “5mg”. It is registered with the generic top-level domain suffix “.net”. In the Panel’s view the incorporation of “5mg” in the Domain Name does not distinguish the Domain Name from the Trade Mark in any way: it will be understood by Internet users to be a reference to dosing instructions applicable to certain VALIUM tablets (which is in fact how it is used on the Respondent’s website) and will be disregarded. The addition of “.net” in a domain name will also be ignored by Internet users. The Panel therefore finds that the Domain Name is confusingly similar to the Trade Mark.
Accordingly, the Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights. B. Rights or Legitimate Interests
The Panel accepts the Complainant’s statement that it has not licensed or given any other authorization or permission to the Respondent to use the Trade Mark in the Domain Name.
The Panel notes, however, that the Complainant states that the Respondent is promoting and selling “VALIUM drugs”. This raises the possibility that the Respondent is using the Complainant’s VALIUM trade mark to sell genuine VALIUM products, which use can, in some circumstances, amount to a bona fide offering of goods or services under the Domain Name sufficient to establish rights or legitimate interests in respect of a domain name.
The leading decision on whether a respondent’s sale of a complainant’s goods can be bona fide is Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 (“Oki Data”). That decision sets out four requirements which must be met before a contested use of a domain name can be held to be bona fide. These requirements may be stated briefly as follows:
- The Respondent must actually be offering the goods or services at issue.
- The Respondent must use the site to sell only the trade marked goods; bait and switch is not permitted.
- The site must accurately disclose the registrant’s relationship with the trade mark owner.
- The Respondent must not try to corner the market in all domain names, thus depriving the trade mark owner of reflecting its own mark in a domain name.
The Respondent’s website states that it offers “Generic Valium”. The Panel understands this to mean that, whether or not it also offers genuine VALIUM drugs in some pages of its website, the Respondent is using the Domain Name to offer drugs which are not genuine VALIUM drugs. Furthermore, the Respondent has not disclosed that it has no relationship with the Complainant. As such, the Respondent cannot benefit from the decision in Oki Data.
In the absence of any authorization for its use of the Trade Mark in the Domain Name, and with the Respondent having failed to provide any basis for the Panel to find that it has rights or legitimate interests in respect of the Domain Name, whether under Oki Data or otherwise, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. C. Registered and Used in Bad Faith
The Panel accepts the Complainant’s argument that the Respondent is using the Domain Name in bad faith. Such bad faith use is evidenced by a number of factors. First, the Domain Name incorporates the Trade Mark in its entirety and contains minimal additional elements, none of which distinguish the Domain Name from the Trade Mark; thereby giving the false impression that the website to which the Domain Name directs users is authorized or connected to the Complainant. Secondly, the Respondent uses the Domain Name to attract Internet users to a website that advertises generic diazepam products in competition to products sold by the Complainant under the Trade Mark. Such uses are plainly incompatible with the Complainant’s exclusive right to use the Trade Mark to advertise and sell goods protected by that Trade Mark. The Respondent must have known of the Trade Mark when choosing and registering the Domain Name, yet has persisted in using the Domain Name in this way. Accordingly, its use of the Domain Name is in bad faith.
There is also sufficient evidence of the Respondent’s bad faith use of the Domain Name in the Complaint to infer that the Respondent’s registration of the Domain Name must also have been in bad faith. This evidence includes the registration of a word with no meaning independent of the Trade Mark, but with whose owner the Respondent has no relationship. The Respondent has submitted no evidence to refute the inference of bad faith raised by these facts.
Accordingly, the Panel finds that the Domain Name has been 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 Domain Name be transferred to the Complainant.
Gareth Dickson
Sole Panelist
Date: June 13, 2017
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