The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, internally represented.
The Respondent is Jatin Jani of Houston, Texas, of United States of America (“United States”). 2. The Domain Names and Registrar
The disputed domain names and are registered with 1API GmbH (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 14, 2019. On February 14, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 14, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 22, 2019 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 Complaint on February 22, 2019.
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 February 26, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 18, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 19, 2019.
The Center appointed Tobias Malte Müller as the sole panelist in this matter on April 1, 2019. 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 a Switzerland based company in the fields of pharmaceuticals who sells amongst others a sedative and anxiolytic drug under the brand “VALIUM”.
The trademark VALIUM is protected for the Complainant as a registered trademark in a multitude of countries worldwide including International Registration No. 250784 (registered on December 20, 1961; priority date as of October 20, 1961; renewed on December 20, 2011) registered amongst others for goods in classes 1, 3 and 5.
According to the Registrar’s verification response, the Respondent registered the disputed domain names on February 3, 2019 () respectively on January 9, 2019 ().
The Panel further notes that the disputed domain names resolve both to the same online pharmacy promoting and selling amongst others VALIUM drugs.
Finally, on February 5, 2019 the Complainant sent an email to the Registrar highlighting the trademark rights and requesting transfer of the disputed domain names. 5. Parties’ Contentions A. Complainant
The Complainant contends to be one of the world’s leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics, having global operations in more than 100 countries. The Complainant sells amongst others psychotropic medications such as VALIUM, a sedative and anxiolytic drug belonging to the benzodiazepine family.
The Complainant further contends that the disputed domain names are confusingly similar to its VALIUM trademark. In particular, the trademark VALIUM is wholly and identically incorporated in the disputed domain names. In creating the disputed domain names, the Respondent has merely added the descriptive elements “USA”, which is a geographic reference to the United States of America, and “diazepam”, which is an international nonproprietary name (INN).
The Complainant further submits that the Respondent has no rights or legitimate interests in the disputed domain names. In particular, the Respondent has no connection or affiliation with the Complainant and has not received any license or consent to use the Complainant’s mark VALIUM. According to the Complainant, the Respondent, by redirecting the disputed domain names to an online pharmacy website which offers VALIUM products, the Respondent is falsely implying that its pharmaceutical products are related or similar to those of the Complainant and is using the disputed domain names with the purpose of capitalizing on the reputation of the Complainant's mark VALIUM.
Finally, the Complainant contends that the Respondent registered and uses the disputed domain names in bad faith. In its view, the Respondent may generate unjustified revenues and therefore is illegitimately capitalizing on the VALIUM trademark fame. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Paragraph 3(c) of the UDRP Rules provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder. In the case at hand, the Panel is satisfied that the complaint may relate to the two disputed domain names, since the complaint is brought against the same respondent who is the holder of both. It is therefore equitable and procedurally efficient to permit the consolidation.
Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements in order to obtain an order that the disputed domain names should be transferred or cancelled:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Panel is satisfied that the registrant of record for the disputed domain names is the Respondent and will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied. A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must first of all establish rights in a trademark or service mark and secondly establish that the disputed domain names are identical or confusingly similar to a trademark in which the Complainant has rights.
The Complainant has provided evidence that it is the registered owner of trademark registration VALIUM International Registration No. IR 250784 (priority date as of October 20, 1961; renewed on December 20, 2011) registered for goods 1, 3 and 5.
Many UDRP panels have found that a disputed domain name is confusingly similar to a complainant’s trademark where the disputed domain name incorporates the complainant’s trademark in its entirety (e.g., F. Hoffmann-La Roche AG v. Jason Barnes, ecnopt,WIPO Case No. D2015-1305; Compagnie Générale des Etablissements Michelin v. Christian Viola,WIPO Case No. D2012-2102; Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack,WIPO Case No. D2015-0070; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies,WIPO Case No. D2015-0812; Rhino Entertainment Company v. DomainS, Inc.,WIPO Case No. D2006-0968; SurePayroll, Inc. v. Texas International Property Associates,WIPO Case No. D2007-0464). This Panel shares this view and notes that the Complainant’s registered trademark VALIUM is fully included in both disputed domain names.
Finally, it is the view of this Panel that the combination of the trademark VALIUM with the elements “USA” and “-diazepam” does not avoid the confusing similarity between the disputed domain names and the Complainant’s trademarks. In fact, the term “USA” is the country abbreviation for the United States of America, where the Respondent is domiciled and will be understood as a mere geographic term. Furthermore, the term “diazepam” is an international non-proprietary name (INN) and as such descriptive for the products commercialized under the trademark VALIUM.
Hence, this Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademark pursuant to the Policy, paragraph 4(a)(i). Policy paragraph 4(a)(i) is satisfied. B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must secondly establish that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests to the disputed domain names. In the Panel’s view, based on the undisputed allegations stated above, the Complainant has made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that the Respondent lacks rights or legitimate interests in the disputed domain names:
According to the Complaint, which has remained unchallenged, the Complainant has not authorized the Respondent’s use of the trademark VALIUM, e.g., by registering the disputed domain names comprising said mark entirely.
Furthermore, the Panel notes that there is no evidence showing that the Respondent might be commonly known by the disputed domain names in the sense of paragraph 4(c)(ii) of the Policy.
Finally, it results from the Complainant’s undisputed allegations that the disputed domain names are connected to an online pharmacy promoting and selling amongst others VALIUM drugs. The Panel assesses this use as being commercial, so that it cannot be considered a legitimate, noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue pursuant to paragraph 4(c)(iii) of the Policy. Furthermore, such use cannot be qualified a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the Policy. In fact, this Panel joins the view of previous panels holding that a registrant has no legitimate interest in a domain name that is similar to a pharmaceutical manufacturer’s mark and that is being used to direct consumers to an online pharmacy (e.g. see PfizerInc. v. Seocho and Vladimir Snezko,WIPO Case No. D2001-1199; AVENTIS Pharma S.A. and Merrell Pharmaceuticals Inc. v. Rx USA,WIPO Case No. D2002-0290). See section 2.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Previous UDRP panels have found that once the Panel finds a prima facie case is made by a complainant, the burden of production under the second element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. Since the Respondent in the case at hand failed to come forward with any allegations or evidence, this Panel finds, in the circumstances of this case, that the Respondent has no rights or legitimate interests in the disputed domain names.
The Complainant has therefore satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the disputed domain names have been registered and are being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain names’ registration and use in bad faith.
One of these circumstances is that the respondent by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location or of a product or service on its website or location (paragraph 4(b)(iv) of the Policy).
It is the view of this Panel that these circumstances are met in the case at hand.
It results from the Complainant’s documented allegations that the disputed domain names are connected to an online pharmacy. For the Panel, it is therefore evident that the Respondent positively knew the Complainant’s marks. Consequently, and in the absence of any evidence to the contrary, the Panel is convinced that the Respondent also knew that the disputed domain names included the Complainant’s trademark when it registered the disputed domain names. Registration of the disputed domain names which contains a third party’s mark, in awareness of said mark and in the absence of rights or legitimate interests amounts to registration in bad faith (see e.g., KOC Holding A.S. v. VistaPrint Technologies Ltd,WIPO Case No. D2015-1910; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies,WIPO Case No. D2015-0812; The Chancellor, Masters and Scholars of the University of Oxford v. Almutasem Alshaikhissa,WIPO Case No. D2014-2100; and Deutsche Lufthansa AG v. Mustermann Max, Muster AG,WIPO Case No. D2015-1320).
The finding of bad faith registration and use is supported by the further circumstances resulting from the case at hand which are (i) the Respondent’s failure to submit a response; (ii) his failure to provide any evidence of actual or contemplated good-faith use, (iii) the implausibility of any good faith use to which the domain names may be put, and (iv) the Respondent concealing its identity behind a privacy shield.
In the light of the above the Panel finds that the disputed domain names have been registered and are being used in bad faith pursuant to paragraph 4(a)(iii) of the Policy. 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 names and be transferred to the Complainant.
Tobias Malte Müller
Sole Panelist
Date: April 15, 2019
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