The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally.
The Respondent is Wuxi Yilian LLC of Fujian, China / Sergey Frolov of Moscow, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with CNOBIN Information Technology Limited (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 27, 2018. On April 27, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 2, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 2, 2018 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 May 2, 2018.
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 May 3, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 24, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 25, 2018.
The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on June 6, 2018. 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 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 more than 100 countries. The Complainant has built up a world-wide reputation in psychotropic medications through the VALIUM trade mark which designates a sedative and anxiolytic drug belonging to the benzodiazepine family.
The Complainant is the owner of the trade mark VALIUM which is registered in a number of countries worldwide including:
- International trade mark registration No. 250784, registered as of December 20, 1961, renewed until December 20, 2021 (the “Trade Mark”).
The Domain Name has been registered on April 5, 2018 and resolves to a website which, as the Panel has verified, inter alia, contains the following text:
“Valium is a serious drug and that it should not be taken without a prescription. You can buy Valium generic from online stores, but it is not a safe option for several reasons. For the first, generic Diazepam is not clinically tested and therefore might not be completely safe. The major reason that it is not safe is that Diazepam is a very strong drug and in order for it to work optimally, you must follow the strict directions of a doctor that prescribed it. Dosages are very vital and taking too much of this drug can lead to serious problems, and in many cases, the results can be fatal.” 5. Parties’ Contentions A. Complainant
The Complainant submits that the Domain Name is confusingly similar to the Trade Mark as it is composed of the Trade Mark in its entirety and of the descriptive words “buy” and “online” as well as of a hyphen, which additional elements do not sufficiently distinguish the Domain Name from the Trade Mark, but, rather, lead the public to believe that the Complainant is somehow connected to the Domain Name. Furthermore, the Complainant states that the Trade Mark is a well-known trade mark through its long and extensive use, while the notoriety will increase the likelihood of confusion.
As a result, the Complainant concludes, the Domain Name is confusingly similar to the Trade Mark, making it possible for customers to believe that the Domain Name is related to the Complainant.
According to the Complainant, it has exclusive rights in the Trade Mark, and no license, permission, authorization or consent was granted to use the Trade Mark in the Domain Name. Furthermore, the Complainant points out, the Respondent uses the Domain Name for commercial gain and with the purpose of capitalizing on the fame of the Trade Mark.
In addition, the Complainant states, the Respondent did not reply to the Complainant’s cease and desist letter and thus has not taken the opportunity to present a case of legitimate interests that it might have. Therefore, the Complainant concludes that the Respondent has no right or legitimate interests in the Domain Name.
The Complainant submits that the Domain Name was registered in bad faith, as the Respondent could not ignore the Trade Mark and its notoriety because the Respondent’s registration of the Domain Name is well after the registration of the Trade Mark. According to the Complainant, the Domain Name is being used in bad faith since when viewing the website to which the Domain Name resolves it is clear that the Respondent has intentionally attempted (for commercial purpose) to attract Internet users to the Respondent’s website, by creating a likelihood of confusion with the Trade Mark as to the source, affiliation and endorsement of the Respondent’s website or of the products or services posted on or linked to the Respondent’s website. In particular, the Complainant brings forward, referring to previous UDRP WIPO decisions, the Respondent is using the Domain Name as a forwarding address to a for-profit online pharmacy. The Complainant adds that as a result, the Respondent is deliberately using the Domain Name with a connection to the Trade Mark in order to mislead the consumers and confuse them by making them believe that the 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 A. Identical or Confusingly Similar
The Complainant has shown that it has registered rights in the Trade Mark.
The Domain Name is confusingly similar to the Trade Mark as it incorporates the mark VALIUM in its entirety. The addition of the dictionary words “buy” and “online” does not avoid a finding of confusing similarity (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8; see also, inter alia, TPI Holdings, Inc. v. Carmen Armengol,WIPO Case No. D2009-0361, and Philip Morris USA Inc. v. 1&1 Internet Limited / Mehjabeen Neesa,WIPO Case No. D2017-1451).
The generic Top-Level Domain (“gTLD”) “.net” is typically disregarded under the confusing similarity test, since it is a technical registration requirement (see WIPO Overview 3.0, section 1.2).
Therefore, the Panel finds that the Domain Name is confusingly similar to the Trade Mark in which the Complainant has rights. B. Rights or Legitimate Interests
The Complainant has to make out at least a prima facie case that the Respondent does not have rights or legitimate interests in the Domain name (see WIPO Overview 3.0, section 2.1).
Based on the evidence and the undisputed submissions of the Complainant, the Panel concludes that the Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the Trade Mark. The Respondent presently uses, as the Panel has verified, the Domain Name for a website which describes the effects of the Complainant’s Valium product and at least one product of a competitor of the Complainant. On the website, a packaging of the Complainant’s product with the Trade Mark is used to provide information on a generic pharmaceutical referred to as “Valium generic”. In addition, the price of this product can be checked by clicking on a button, which leads to an online pharmacy where pharmaceuticals can be ordered including products of competitors of the Complainant and on which the Trade Mark is used to sell a generic pharmaceutical. This does not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use.
In view of the above, the Panel concludes that the Complainant has established that the Respondent has no rights or legitimate interests in the Domain Name. C. Registered and Used in Bad Faith
Based on the information and the evidence provided by the Complainant, the Panel finds that at the time of registration of the Domain Name the Respondent was or should have been aware of the Trade Marks, since:
- the Respondent’s registration of the Domain Name occurred more than fifty-six years after the registration of the Trade Mark;
- the Trade Mark is famous throughout the world;
- the element “valium” of which the Trade Mark consists, is incorporated in its entirety in the Domain Name, and does not appear to be a dictionary word, nor a name of which it is likely that a registrant would spontaneously or accidentally think of;
- the Domain Name resolves to a website which links to an online pharmacy, offering pharmaceutical products, including products of competitors of the Complainant;
- the packaging of the Valium product with the Trade Mark is used for pharmaceuticals on the website to which the Domain Name resolves, including a generic pharmaceutical.
Furthermore, the Panel considers the fact that the Domain Name resolves to a website which displays a packaging containing the Trade Mark and contains a warning against ordering online pharmaceutical products like the product sold by the Complainant, while at the same time linking (by clicking the “Check Price” button) to a website where such pharmaceuticals can be ordered. The website at the Domain Name falsely suggests an affiliation with or endorsement by the Complainant. The fact that products of competitors of the Complainant can be ordered does not consitute a bone fide use, as mentioned under the second element. These facts constitute a clear indication that the Domain Name is being used to intentionally attempt to attract, for commercial gain, Internet users to the website or other online location by creating a likelihood of confusion with the Trade Mark as to the source, sponsorship, affiliation or endorsement of the website to which the Domain Name resolves, within the meaning of paragraph 4(b)(iv) of the Policy.
Therefore, the Panel concludes 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 disputed domain name be transferred to the Complainant.
Wolter Wefers Bettink
Sole Panelist
Date: June 20, 2018
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