The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally.
The Respondent is Domain privacy of Hong Kong, China / Matthias Mebes, 1a World Ltd of Leeds, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"). 2. The Domain Name and Registrar
The disputed domain name is registered with Nicenic International Group Co., Limited (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 3, 2017. On October 4, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 10, 2017, 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 October 10, 2017 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 October 11, 2017.
On October 11, 2017, the Respondent sent an email communication to the Center. On the same day, the Center sent an email to the Parties regarding possible settlement. On October 13, 2017, the Complainant submitted a request of suspension. On the same day, the Center notified the Parties that the proceeding will be suspended until November 12, 2017. On November 1, 2017, the Complainant requested to re-institute the proceeding.
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 November 2, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 22, 2017. The Respondent did not submit any response.
The Center appointed Tuukka Airaksinen as the sole panelist in this matter on December 6, 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 one of the world's largest healthcare groups in the field of pharmaceuticals and diagnostics. The Complainant's mark VALIUM is registered worldwide, including the International Registration No. 250784 with priority from October 20, 1961.
The disputed domain name was registered on September 15, 2017. At the time of the filing of the Complaint, the disputed domain name resolved to an online pharmacy website which promotes and sells (among others) VALIUM drugs. Currently, the disputed domain name does not resolve to an active website. 5. Parties' Contentions A. Complainant
The disputed domain name is confusingly similar to the Complainant's trademark because it incorporates the Complainant's trademark in its entirety. The addition of the descriptive word "review" does not distinguish the disputed domain name from the trademark VALIUM.
The Respondent has no connection or affiliation with the Complainant and has not received any license or consent to use the Complainant's trademark. The disputed domain name implies that its pharmaceutical products are related or similar to those of the Complainant and therefore the Respondent is trading on the Complainant's goodwill.
At the time of the registration of the disputed domain name, the respondent had knowledge of the Complainant's well-known mark VALIUM. The disputed domain name is directed to an online pharmacy website in order to attract Internet users seeking the Complainant's VALIUM product. Therefore, the Respondent is using the disputed domain name to capitalize on the Complainant's reputation and goodwill in its well-known mark. B. Respondent
In his email to the Center of October 11, 2017 the Respondent indicated that the disputed domain name is now offline, asking what else can be done, but writing that he cannot give it back. 6. Discussion and Findings
In order to obtain the transfer of a domain name, a complainant must prove the three elements of paragraph 4(a) of the Policy, regardless of whether the respondent files a response to the complaint. The first element is that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. The second element, a complainant must prove is that the respondent has no rights or legitimate interests in respect of the domain name. The third element, a complainant must establish is that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires that the Complainant establishes that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. Consequently, the Complainant must prove that it has rights to a trademark, and that the disputed domain name is identical or confusingly similar to this trademark.
The disputed domain name incorporates the Complainant's trademark VALIUM in its entirety in addition with the word "review", which is a descriptive term. The disputed domain name hence gives the impression that the Respondent is offering goods or services that relate to the reviewing of the Complainant's VALIUM goods.
The addition of such a descriptive term is not in itself sufficient to remove the confusing similarity between the disputed domain name and the Complainant's trademark VALIUM.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant's respective trademark and hence the first element of the Policy has been fulfilled. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires that the Complainant establish that the Respondent has no rights or legitimate interests to the disputed domain name.
The consensus view among UDRP panels is that once a complainant has made a prima facie showing the absence of the respondent's rights or legitimate interests in a disputed domain name the burden of production shifts to the respondent to come forward with evidence of such rights or legitimate interests. If the respondent fails to do so, the complainant is deemed to have satisfied the second element of the Policy. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270 and section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0").
The Complainant has credibly submitted that the Respondent is not a licensee of the Complainant, nor has been otherwise allowed by the Complainant to use the Complainant's trademark in a domain name or otherwise. The Complainant has also credibly submitted that the Respondent has no rights or legitimate interests to the disputed domain name.
Accordingly, the Panel finds that the Complainant has made a prima facie case that has not been rebutted by the Respondent. In light of the Panel's findings below, the Panel finds that there are no other circumstances which provide the Respondent with any rights or legitimate interests in the disputed domain name. Therefore, the Panel finds that the second element of the Policy is fulfilled. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the Complainant establishes that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy provides that the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
"(i) circumstances indicating that [the respondent has] registered or has acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent's] documented out-of-pocket costs directly related to the domain name; or
(ii) [the respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business or competitor; or
(iv) by using the domain name, [the respondent has] intentionally 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 mark as to the source, sponsorship, affiliation, or endorsement of [the respondent's] website or location or of a product or service on [the respondent's] website or location."
The Panel accepts that the Complainant's trademark VALIUM is a well-known trademark and as such it is inconceivable that the Respondent would not have been aware of it when registering the disputed domain name. The fact that the Respondent has added a descriptive word to the Complainants trademark means that the Respondent was in fact targeting the Complainant's trademark when registering the disputed domain name.
The disputed domain name was directed to an online pharmacy website offering pharmaceutical products at the time of the filing of the Complaint. Therefore, the Complainant's trademark was used to attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's trademark. The change of the use of the disputed domain name by the Respondent after the filing of the Complaint does not prevent a finding of bad faith use.
Hence the Panel finds that the disputed domain name was registered and is being used in bad faith. Therefore, the Panel finds that the third element of the Policy is fulfilled.
For the sake of good order, the Panel considers that the Respondent's response did not contain any material or other arguments or evidence that could have influenced the Panel's findings above. 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.
Tuukka Airaksinen
Sole Panelist
Date: December 20, 2017
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