The Complainant is F. Hoffmann-La Roche AG, Switzerland, internally represented.
The Respondent is Registration Private, Domains By Proxy, LLC, United States of America (“United States”) / Amir Haddad, United States, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 6, 2019. On June 6, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 7, 2019, 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 June 12, 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 the Complaint on June 12, 2019. The Center received informal email communications from the Respondent on June 12, 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 June 18, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 8, 2019. The Center received informal email communications from the Respondent on June 18, 2019 and on June 19, 2019. On June 19, 2019, the Center sent a communication to the Parties regarding possible settlement. On June 19, 2019, the Complainant requested suspension, and the proceeding was suspended until July 19, 2019 for settlement discussions. On June 20, 2019, the Complainant requested reinstitution, and the proceeding was reinstituted as of June 20, 2019. The Center received informal email communications from the Respondent on June 20, 2019, on June 24, 2019, and on June 30, 2019. On July 3, 2019, the Center notified the Parties that would proceed to panel appointment.
The Center appointed Shwetasree Majumder as the sole panelist in this matter on July 19, 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, F. Hoffmann-La Roche AG, is a company duly organized under the laws of Switzerland.
The Complainant claims that it has built up a world-wide reputation in psychotropic medications through its use of its trademark VALIUM which designates a sedative and anxiolytic drug belonging to the benzodiazepine family.
The Complainant holds registrations for the trademark VALIUM on a world-wide basis in over 100 countries. The Complainant also has an international registration for the trademark VALIUM under International Registration No. 250784 with registration date for the trademark being December 20, 1961. A copy of the said international registration certificate has been attached as Annex 3 of the Complaint.
The Respondent has registered the disputed domain name on October 5, 2018 according to the concerned Registrar’s WhoIs records. The WhoIs search results for the disputed domain name is attached as Annex 1 to the Complaint. The disputed domain name after a few seconds redirects Internet users to a website hosted on the domain name , an online pharmacy that promotes and sells, among others, anti-depressant and anxiety drugs like the Complainant’s product under the trademark VALIUM.
Documents illustrating the fact that the disputed domain name redirects to a website hosted on the domain name is attached as Annex 6 and 6.1 to the Complaint. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademark VALIUM as it incorporates the said trademark in entirety. The Complainant also states that the addition of the figures “911” does not sufficiently distinguish the disputed domain name from the Complainant’s trademark. The Complainant places reliance on the previous UDRP decision of Hoffmann-La Roche Inc. v. Hightech Industries, Andrew Browne,WIPO Case No. D2010-0240to argue that the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered trademark.
The Complainant asserts that its trademark VALIUM is “ well-known” and has furnished newspaper articles from The Wall Street Journal, The New Yorker and The Star Ledger in support of its said submissions. Extracts of said newspaper articles have been attached as Annex 5 to the Complaint. The Complainant states that given the well-known nature of its trademark VALIUM, there is an increased likelihood of confusion between the Complainant’s trademark and the disputed domain name.
The Complainant contends that its use and registration of the trademark VALIUM predates the Respondent’s registration of the disputed domain name.
Therefore, the Complainant submits that the disputed domain name is confusingly similar to the trademark VALIUM of the Complainant.
The Complainant states that it has exclusive rights in the trademark VALIUM and that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant submits that it has not granted any license, permission, authorization or consent to the Respondent to use its trademark VALIUM as a part of the disputed domain name; .
The Complainant further contends the Respondent is using the disputed domain name for commercial gain and for the purpose of capitalizing on the fame of the Complainant’s trademark VALIUM. It has been pointed by the Complainant that the disputed domain name within a few seconds redirects Internet users to an online
pharmacy hosted on the domain name that promotes and sells among others anti-depressant and anxiety drugs like the Complainant’s product under the trademark VALIUM.
The Complainant cites the UDRP decision of Pfizer Inc. v. jg a/k/a Josh Green,WIPO Case No. D2004-0784 to argue 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.
The Complainant states that on May 27, 2019, sent a cease and desist letter to the Respondent via email advising the Respondent about its rights in the trademark VALIUM and objecting to its infringing use as a part of the disputed domain name . The Complainant contends that the Respondent did not reply to the Complainant’s cease and desist letter and hence has not availed itself of the opportunity to present any case of having any legitimate interest or right in the disputed domain name. Copy of the Complainant’s cease and desist letter dated May 27, 2019 has been attached as Annex 8 to the Complaint.
The Complainant submits that the disputed domain name was registered on October 5, 2018 and that the Respondent had knowledge of the Complainant’s well-known mark VALIUM at the time of registration of the disputed domain name. The Complainant places reliance on the UDRP Panel Decision of F. Hoffmann-La Roche AG v. Gustavo Guardo,WIPO Case No. D2007-1550and states that the registration of a domain name that is confusingly similar or identical to a famous trademark by any entity, which has no relationship to that mark, is itself sufficient evidence of bad faith registration and use.
The Complainant asserts that the Respondent has registered the disputed domain name is being used by the Respondent in bad faith. The Complainant contends that the Respondent’s choice of the disputed domain name is not a coincidence.
The Complainant points out that the disputed domain name contains the word VALIUM and has been registered by the Respondent to attract Internet users seeking the Complainant’s product under the trademark VALIUM, so that they can thereafter be diverted to an online pharmacy hosted on the domain promoting and selling anti-depressant and anxiety drugs.
The Complainant contends that bad faith on the part of the Respondent is established when the Respondent uses the disputed domain name as a forwarding address to a for-profit online pharmacy. The Complainant submits that the Respondent is deliberately using the disputed domain name to capitalize on the Complainant’s reputation and goodwill in its well-known trademark by creating a misimpression as to the source, affiliation or endorsement of the Respondent’s domain name, website, products, and services with that of the Complainant. B. Respondent
The Respondent has not formally replied to the Complainant’s contentions. However, the Panel notes that there has been correspondence between the Respondent and the Center as well as with the Complainant.
In its email dated June 12, 2019, the Respondent claimed to be the owner of the disputed domain name as he had paid for the same. The Respondent threatened to make public that the Complainant, being a big corporation was bullying him out of the disputed domain name. The Respondent mentioned that if the Complainant wanted to purchase the disputed domain name, it would have to purchase the same from him and that he wanted a “Million Dollars”for the same.
The Respondent in its email dated June 18, 2019 has admitted that the Complainant owns the trademark VALIUM but also states there is no trademark for VALIUM 911 subsisting in favour of the Complainant. The Respondent further claims that the disputed domain name is not confusingly similar to the Complainant’s trademark VALIUM as it contains an additional three digits 911 which adds distinctiveness to the disputed domain name. The Respondent once again states that if the Complainant wanted the disputed domain name, it ought to purchase same from him and that he was willing to do the Complainant a favour by selling his rights in the said domain name.
Vide another email dated June 18, 2019, the Respondent states that he was ready to explore the possibility of a settlement. In the said email, the Respondent indicated that while he was willing to settle the said issue, he also reserved his right to negotiate the sale of the disputed domain name with a law firm whose advise he had sought.
Following the said correspondence, the Panel notes that the said proceedings were suspended till July 19, 2019. The Complainant thereafter sent a standard settlement form to the Respondent, seeking the transfer of the disputed domain name in its favour on June 19, 2019. The Respond rejected the settlement proposal vide its emails dated June 19, 2019 and June 20, 2019 as he was unwilling to give up the disputed domain name without monetary compensation. As the negotiations between the Parties had failed, at the Complainant’s request the proceedings were reinstituted by the Center on June 20, 2019.
The Respondent vide another email dated June 20, 2019 stated that the reason why the disputed domain name redirects to the website hosted on the domain name is website optimization. He claimed that neither site hosted on either of the domain names was making any money nor was there any diversion of Internet traffic either from one to another.
The Respondent pointed out that he was not selling or insinuating to sell the Complainant’s product under the trademark VALIUM or using the said trademark in any other manner to generate income and therefore was not violating any existing laws or rules. The Respondent further went on to allege that the Complainant’s product under the trademark VALIUM was a harmful drug and that it was evaluating undertaking steps to inform the public regarding the dangers associated with the same.
The Respondent once again expressed his desire to sell to the Complainant, the disputed domain name along with four other similar domain names, namely: , , , and .
In its last set of correspondence comprising emails dated June 24, 2019 and June 30, 2019, the Respondent continued to make demands of monetary compensation in lieu of the disputed domain name and also threatened to register a fresh domain name with the word “Valium”, upon the Complainant’s failure to purchase the disputed domain name. 6. Discussion and Findings
The Panel finds that the proceedings have been conducted in accordance with the Rules and the Policy. Having gone through the series of communications as set out above under the Section on procedural history, the Panel concludes that the Center has notified the Respondent of this proceeding and has discharged its responsibility under paragraph 2(a) of the Rules. The Panel finds that the proceedings have been conducted in accordance with the Rules and the Policy. According to Paragraph 14(a) of the Rules, where there is a failure by the Respondent to provide a response to the allegations of the Complainant, as in the present case, the Panel in accordance with Paragraph 14(b) shall “draw such inferences therefrom as it considers appropriate”.
The Respondent, despite being accorded an opportunity, furnished no formal response, and the deadline for the same expired on July 9, 2019. Taking into consideration the Respondent’s default, the Panel can infer that the Complainant’s allegations are true.
The Panel notes that in the entire correspondence exchanged between the Respondent and the Center as well as the Complainant, the Respondent made no attempt to respond directly to the allegations of the Complaint or articulate any legitimate reason for his registration of the disputed domain name or even to counter the charge that the Respondent had registered the said domain name in bad faith. See, Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009.
Nonetheless, the following three requirements stipulated under paragraph 4(a) of the Policy have to be met for this Panel to transfer the disputed domain name to the Complainant:
I. the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
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.
In the absence of a formal response by the Respondent, the Panel relies on the contents of the various emails written by the Respondent to the Complainant, in relation to questions II and III. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. A trademark registration provides a clear indication that the rights in the mark belong to its respective owner.
The Panel finds that the Complainant has provided satisfactory evidence of its rights in the trademark VALIUM by furnishing an International Registration No. 250784 for the same with registration date for the trademark being December 20, 1961. The Panel notes that the Complainant has also placed on record newspaper articles from The Wall Street Journal, The New Yorker and The Star Ledger in support of its submission that its trademark is well-known in various jurisdictions, including the United States where the Respondent is located.
The Panel observes that the trademark VALIUM is well known in the field of pharmaceutical products. See, F. Hoffmann-la Roche AG v. Popo,WIPO Case No. D2008-0423; F. Hoffmann-La Roche AG v. TMNET, Anton Gorodov,WIPO Case No. D2008-0995; F. Hoffmann-La Roche AG v. DNS Administrator/Turvill Consultants Ltd-RD,WIPO Case No. D2006-0047; and F. Hoffmann-La Roche AG v. George Stiegman,WIPO Case No. D2008-1572.
The Panel thereby finds that the Complainant has successfully established its rights in the trademark VALIUM and that the trademark has been registered since at least 1961 which predates the date of registration of the disputed domain name on October 5, 2018.
The Panel also takes note that the disputed domain name , wholly incorporates the Complainant’s registered and well-known trademark VALIUM in entirety. Previous UDRP decisions have recognized that incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to a registered trademark. See,Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525,and Go D, Inc. v. Shoneye’s Enterprise,WIPO Case No. D2007-1090.
Previous UDRP Panel decisions have upheld that addition of numbers to a Complainant’s well-known trademark does not not eliminate the confusing similarity between the disputed domain name and the Complainant’s trademark. See, Intesa Sanpaolo S.p.A. v. Ekkert Ida,WIPO Case No. D2018-2207.
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), section 1.11, also states that generic Top-Level Domain (“gTLD”) indicators (e.g. com, .info, net, .org) are a standard registration requirement and have to be disregarded under the first element in the confusing similarity test.
In this regard the Panel also notes the UDRP decision in PepsiCo, Inc. v. Amilcar Perez Lista d/b/a Cybersor,WIPO Case No. D2003-0174, where the panel found that the domain names and were confusingly similar to the Complainant’s trademark PEPSI. The Panel noted that “The addition of the letters ‘x’ and ‘xxx’ and of the suffix ‘com’, which is the only difference between the domain names and and the trademark PEPSI, is an irrelevant distinction, which does not change the likelihood of confusion.” By applying the same analogy, the Panel also noted that given that the numbers 911 are associated with emergency services, their presence as a suffix to the Complainant’s pharmaceutical trademark VALIUM in the disputed domain name, does not prevent a finding of confusing similarity.
In the said backdrop, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s registered and well-known trademark, VALIUM. The Panel accordingly finds that the requirement of paragraph 4(a)(i) of the Policy stands duly satisfied. B. Rights or Legitimate Interests
The second element under paragraph 4(a) of the Policy requires the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Panel notes that the Complainant has already submitted evidence that it holds exclusive rights in the trademark VALIUM by virtue of its International Registration No. 250784 (registered on December 20, 1961) and common law use (long, continuous extensive use promotion and publicity), rights in which have accrued in the Complainant’s favour long prior to the Respondent’s registration of the disputed domain name, on October 5, 2018.
The Panel also observes that newspaper articles featuring the Complainant’s trademark VALIUM have been extensively featured and covered in several reputed newspapers, having wide circulation in the United States where the Respondent is located.
The Panel is therefore satisfied that the Complainant has made out a prima facie case that the Respondent possesses no rights or legitimate interests in the disputed domain name consequently the burden of production on this element shifts onto the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. The Panel notes that the Respondent has failed to produce any countervailing evidence of any rights or legitimate interests in the disputed domain name and opines that the the Complainant can be deemed to have satisfied the second element under paragraph 4(a)(ii) of the Policy. See, Section 2.1 of the WIPO Overview 3.0.
As the Respondent was duly notified of the Complaint and has chosen not to rebut it on merits, the Panel draws an adverse inference against the Respondent with respect to the allegations made by the Complainant, from the silence of the Respondent. See, Alcoholics Anonymous World Services, Inc., v. Lauren Raymond, WIPO Case No. D2000-0007.
The Panel observes that the Complainant has exclusive rights in the trademark VALIUM and has never licensed, authorized or consented to the Respondent’s use of the said trademark as a part of the disputed domain name.
The Panel also takes note of the fact that the Respondent has not made a bona fide offering of goods or services or a noncommercial use of the disputed domain name and has not demonstrated any effort to use the disputed domain name for legitimate purposes. The Panel observes that the disputed domain name redirects to an online pharmacy, hosted on the domain name promoting and selling anti-depressant and anxiety drugs.
Previous UDRP panels have held that the redirection of Internet users to an online pharmacy is a demonstration of the Respondent’s lack of a legitimate interest in the disputed domain name. See, Hoffmann-La Roche, Inc. Vs. Samuel Teodorek,WIPO Case No. D2007-1814. The Panel also agrees with the reliance placed by the Complainant on Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784 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.
The Panel determines that the Respondent has registered the disputed domain name to capitalize upon the fame and reputation of the Complainant’s trademark VALIUM to bait Internet users into accessing the disputed domain name so as to attract traffic to the website hosted on the domain name for the purposes of making commercial gains.
The Panel holds that rights or legitimate interests cannot be created in a disputed domain name where the user of the domain name at issue would not have chosen such a name, unless he was seeking to create an impression of association with the complainant. See, eBay Inc. v. Akram Mehmood,WIPO Case No. DAE2007-0001.
There is no evidence on the record of this proceeding to suggest that the Respondent has been commonly known by the disputed domain name, or that the Respondent has made a noncommercial or fair use of the disputed domain name. The Respondent chose not to reply to the Complainant’s cease and desist letter dated May 27, 2019 and hence has not availed itself of the opportunity to present a case of any legitimate interest that it might have in the disputed domain name. See, Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse, WIPO Case No. D2000-1221.
On the contrary, in its correspondence with the Complainant, the Respondent claims that the reason why the disputed domain name redirects to the website hosted on the domain name is website optimization. He claimed that neither site hosted on either of the domain names was making any money nor was there any intentional diversion of Internet traffic from one to the other. If that were indeed the case then it further supports the finding that the Respondent does not own any rights or legitimate interests in the disputed domain name. The Respondent’s attempt to sell a large number of Valium-formative domain names including the disputed domain name to the Complainant further demonstrates the absence of any legitimate interest on the part of the Respondent, in the same.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Complainant must show that the Respondent has registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy further provides circumstances that may prove bad faith under paragraph 4(a)(iii).
Firstly, the disputed domain name incorporates the trademark in its entirety and contains minimal additional elements, none of which distinguish the disputed domain name from the Complainant’s trademark thereby giving a false impression that the website to which the disputed domain name redirects Internet users to is authorized or connected to the Complainant.
The Panel notes that according to section 3.1.4 of the WIPO Overview 3.0, the mere registration of a domain name that is identical or confusingly similar to a famous or widely known trademark by an unaffiliated entity can itself create a presumption of bad faith.
The disputed domain name was registered on October 5, 2018, almost 60 years after the Complainant’s trademark VALIUM was registered. The Complainant has further used the said trademark for decades in various jurisdictions, including the United States. The Panel finds that the Complainant has placed on record sufficient evidence that its trademark is well known, certainly in the United States, where the Respondent is located. There is little doubt in the mind of the Panel that the Respondent knew of the Complainant and its product under the trademark VALIUM, prior to registering the disputed domain name. See, SembCorp Industries Limited v. Hu Huan Xin,WIPO Case No. D2001-1092.
Secondly in line with the opinions of previous UDRP panels (see also F. Hoffmann-La Roche AG v. TMNET, Anton Gorodov, supra), it seems that the Respondent’s use of the Complainant’s trademarks in the disputed domain name resulted in diverting Internet users to an online pharmacy , which created a likelihood of confusion between the Complainant and the said online pharmacy.
The deliberate diversion of Internet users constitutes bad faith, by creating confusion that takes advantage of the Complainant’s goodwill. It is well-established in UDRP decisions that such confusion and the resulting misdirection of Internet traffic is independently sufficient to establish bad faith. (See Sony Ericsson Mobile Communications International AB, Telefonaktiebolaget LM Ericsson, Sony Corporation v. Party Night Inc.,WIPO Case No. D2002-1128.)
The Panel draws from the correspondence exchanged between the Respondent and the Center as well as the Complainant that the Respondent has registered the disputed domain name in order to prevent the Complainant from using its trademark VALIUM in a corresponding domain name and that the Respondent has engaged in a pattern of such conduct, having also registered other domain names namely , , , and incorporating the Complainant’s registered trademark VALIUM.
It is evident to the Panel from the contents of the said correspondence that the Respondent was well aware of the rights of the Complainant in the trademark VALIUM and registered the same in bad faith to extort astronomical prices from the Complainant for the said domain names. The Respondent in its email correspondence also threatens the Complainant that it will start websites that allegedly warn the public about the ill effects of its drug being sold under the trademark VALIUM and asserts that he will register other domain names involving the said trademark of the Complainant. The conduct of the Respondent is a classic example of cybersquatting.
Lastly the Respondent, at the time of filing of the Complaint, had employed a privacy service to hide his identity. The Panel finds that the Respondent’s use of a privacy or proxy service which may be used to block or intentionally delay disclosure of the identity of the actual underlying registrant supports an inference of bad faith. The said view to be consistent with previous UDRP decisions, see BME, LLC. v. Gregory Ricks / Gee Whiz Domains Privacy Service,WIPO Case No. D2008-0882, and WIPO Overview 3.0, section 3.6.
Accordingly, having regard to the circumstances of this particular case, the Panel holds that the Complainant has discharged the burden of proof under 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 name be transferred to the Complainant.
Shwetasree Majumder
Sole Panelist
Date: August 12, 2019
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