The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, internally represented.
The Respondent is John Mercier of Arroyo Grande, California, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with eNom, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 3, 2018. On May 3, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 4, 2018, 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 May 7, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 27, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 28, 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 March 21, 2018 and offers pharmaceutical products, including the Complainant’s, for sale. 5. Parties’ Contentions A. Complainant
The Complainant submits that the Domain Name is confusingly similar to the Trade Mark as it incorporates the term “valium” in its entirety, while the addition of the descriptive terms “order” and “online” does not sufficiently distinguish the Domain Name from the Trade Mark.
According to the Complainant, it has exclusive and prior rights in the Trade Mark, which precede the Respondent’s registration of the Domain Name, while 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 Complainant adds that the Domain Name resolves to an online pharmacy which promotes and sells drugs under the Trade Mark and that, by falsely implying that its pharmaceutical products are related or similar to those of the Complainant, the Respondent is using the Domain Name with the purpose of trading on the Complainant’s goodwill. Furthermore, the Complainant points out, the Respondent did not reply to the Complainant’s cease and desist letter sent and hence has not availed itself of the opportunity to present any case of legitimate interest that he might have. Therefore, the Complainant concludes that the Respondent has no right or legitimate interest in the Domain Name.
The Complainant submits that the Domain Name was registered in bad faith, as there is no doubt that at the time of the registration, inter alia, on March 21, 2018, the Respondent had knowledge of the Trade Mark.
Furthermore, the Complainant points to UDRP decisions in which it has been held that registration of a domain name that is confusingly similar or identical to a famous trade mark by any entity, which has no relationship to that mark, is itself sufficient evidence of bad faith registration and use.
In addition, the Complainant submits, the Domain Name is being used in bad faith as it contains the Trade Mark and directs to an online pharmacy webpage in order to attract Internet users seeking the Complainant’s Valium product. 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 Marks
The Domain Name is confusingly similar to the Trade Mark as it incorporates the mark VALIUM in its entirety. The addition of the descriptive words “order” and “online” does not avoid a finding of confusing similarity (see also 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 (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 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 website is an online pharmacy, offering pharmaceutical products;
- 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 where products of competitors of the Complainant can be ordered and on which the Trade Mark is used to sell a generic pharmaceutical 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: 20 June 2018
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