The Complainant is F. Hoffmann-La Roche AG of Switzerland, represented internally.
The Respondent is Anton Abramof of Trinidad and Tobago. 2. The Domain Name and Registrar
The disputed domain name is registered with Dynadot, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 5, 2011. On May 5, 2011, the Center transmitted by email to Dynadot, LLC a request for registrar verification in connection with the disputed domain name. On May 7, 2011, Dynadot, LLC. 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 17, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 6, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 7, 2011. The Respondent sent a communication to the Center on June 8, 2011 regarding this matter.
The Center appointed Harini Narayanswamy as the sole panelist in this matter on June 23, 2011. 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 leading pharmaceutical group. The Complainant owns the trademark VALIUM and has used it for a number of years for its medicinal products. It owns International trademark registration No. R250784 for the VALIUM mark.
The disputed domain name was registered on February 12, 2010. 5. Parties’ Contentions A. Complainant
The Complainant states that together with its affiliate companies, it is a leading research focused health group in the field of pharmaceuticals and diagnostics and has operations in over one hundred countries.
The Complainant states its trademark VALIUM is protected in several jurisdictions and has filed a copy of its International registration Number R250784, with a priority date of October 20, 1961.
The Complainant states the VALIUM trademark designates a sedative anxiolytic drug belonging to the benzodiazepine family. The Complainant has a world reputation in psychotropic medications and holds registrations for the VALIUM trademark in over one hundred countries.
The Complainant asserts the disputed domain name is confusingly similar to its VALIUM mark as it incorporates the mark in its entirety. The addition of the generic word “buy” does not distinguish the disputed domain name from the mark as the fame of the mark is well established. To demonstrate the fame of its mark, the Complainant has filed newspapers articles referring to its trademark VALIUM.
The Complainant states the Respondent has no rights or legitimate interests in respect of disputed domain name for the reasons that: no license or permission has been given to the Respondent to use the Complainant’s mark. The Respondent uses the disputed domain name for commercial gain by capitalizing on the Complainant’s VALIUM mark and directs Internet users to an on line pharmacy. Such use is not legitimate use argues the Complainant citing the case: Pfizer Inc. v. jg a/k/a Josh Green,WIPO Case No. D2004-0784 (an online pharmacy has no rights to use the trademark of a manufacturer in its domain name).
The Complainant asserts the disputed domain name was registered and is being used in bad faith, as the Respondent ought to have known of the mark, which is well known. The disputed domain name is being used in bad faith as the Respondent uses the domain name for creating a likelihood of confusion with the Complainant’s mark as to the source, affiliation and endorsement. The Respondent has posted links to other third party sites from the website linked to the disputed domain name, and using a domain name with a well known trademark as a forwarding address to a for profit online pharmacy is recognized as bad faith use, Pfizer Inc. v. jg a/k/ a Josh Green, supra.
The Respondent may derive unjustified revenues from such opportunistic bad faith argues the Complainant. The Respondent by using the disputed domain name is intentionally misleading consumers to believe that the websites behind the links are associated or recommended by the Complainant and is illegitimately capitalizing on the fame of the VALIUM trademark. The Complainant therefore request for the transfer of the disputed domain name. B. Respondent
The Respondent did not file any formal reply to the Complainant’s contentions. The Respondent however sent an email communication dated June 8, 2011 to the Center stating:
“Hello.
I have disabled the site on a domain What else can I help you?”
No further communications from the Respondent appear in the record. 6. Discussion and Findings
To obtain the remedy of transfer of the disputed domain name, the Policy states that the Complainant has to establish three elements under paragraph 4(a).
(i) The disputed domain name is identical or confusingly similar to a 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 was registered and is being used in bad faith by the Respondent. A. Identical or Confusingly Similar
The first element under paragraph 4(a) of the Policy requires the Complainant to prove that the disputed domain name is identical or confusingly similar to a mark in which it has rights.
The Complainant undoubtedly has rights in the trademark VALIUM that is a well-known mark. The document showing International registration Number R250784, with a priority date of October 20, 1961 establishes its registered rights in the mark and several articles filed by the Complainant demonstrate the fame associated with the mark.
The Panel finds the use of the term “buy” with the VALIUM mark in the disputed domain name does not lessen confusing similarity with the mark. The Panel finds the mark is the focal point of the disputed domain name. As correctly argued by the Complainant, the use of the mark in its entirety, albeit the inclusion of the term “buy” nonetheless renders the disputed domain name confusingly similar to the Complainant’s VALIUM mark, as the mark is the crucial aspect of the disputed domain name.
The disputed domain name is therefore found confusingly similar to the trademark in which the Complainant has rights. The Panel finds the Complainant has satisfied the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The second element under paragraph 4(a) of the Policy requires the Complainant to make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name. The unchallenged submissions of the Complainant are that the Respondent has not been authorized or licensed to use its trademark and therefore the Respondent has no rights and legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides a non-exhaustive list of circumstances by which the Respondent can demonstrate rights or legitimate interests in the disputed domain name. The Respondent can establish under paragraph 4(c) of the Policy that:
(i) The Respondent has used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services;
(ii) The Respondent has been commonly known by the disputed domain name;
(iii) The Respondent is making legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or tarnish the trademark of the Complainant.
The Respondent did not file any formal response in these proceedings, except for the email communication dated June 8, 2001. The Respondent has therefore not provided any submissions or material to show rights in the disputed domain name. The material on record does not indicate that the Respondent has been known by the disputed domain name or that the Respondent is making any legitimate noncommercial fair use of the disputed domain name. Further, in the Panel’s view, the Respondent’s statement in its email, “I have disabled the site on a domain ”, can be interpreted as a tacit acceptance or admission of its lack of rights and legitimate interests.
The Panel further finds that the Respondent is using the disputed domain name to sell the Complainant’s products online without a prescription. Annexure 5 of the Complaint shows that the Respondent’s webpage displays the following: “Diazepam – Buy Valium Online” and “Click here to buy online without prescription”.
In the Panel’s view, such use of the Complainant’s mark in the disputed domain name is likely to mislead the public and Internet users that the disputed domain name refers to the Complainant’s mark, or that the Complainant has authorized the Respondent to use its mark in this manner. However as the Respondent is not connected with the Complainant or its business, yet uses the Complainant’s trademark in the disputed domain name and on the web pages linked to the disputed domain name gives a false impression to unsuspecting users. A domain name that gives a false impression to users and misleads Internet users does not confer legitimate rights. This view has been upheld in several prior UDRP decisions, see for instance, Pfizer Inc. v. Alex Schreiner/ Schreiner & Co.,WIPO Case No. D2004-0731.
For the reasons discussed the Panel is satisfied that the Complainant has made a prima facie case that the Respondent has no rights and legitimate interests in the disputed domain name which was not rebutted by the Respondent. The second element of paragraph 4(a) of the Policy is therefore satisfied. C. Registered and Used in Bad Faith
The third element under paragraph 4(a) of the Policy requires the Complainant to prove that the disputed domain name has been registered and used in bad faith.
The Panel finds the disputed domain name is being used by the Respondent for channelizing and diverting Internet users to an on line pharmacy. The facts and circumstances in the present dispute indicate that the Respondent has registered the disputed domain name knowing of the Complainant’s rights in its trademark. This is evident from the print out of the Respondent’s website filed as Annexure 5 of the Complaint, where the Respondent’s webpage displays:
“Buy Valium Online”, and “You will receive the original brand version of Valium ® manufactured by Roche. *Valium ® is a registered trademark of Roche.”
It is clear from these statement on the Respondent’s website, that the Respondent has registered the disputed domain name with full knowledge of the mark belonging to the Complainant. Given the fame associated with the Complainant’s and the Respondent being involved with an online pharmacy, this is not surprising.
It appears that the Respondent’s intention in registering the disputed domain name is for diverting potential customers of the Complainant who seek the Complainant’s product online. Such illegitimate use of the trademark in the disputed domain name, without any authorization from the Complainant is recognized as bad faith use. See F.Hoffmann-La Roche AG v. Private Whois Service,WIPO Case No. D2011-0355, and F. Hoffmann-La Roche AG v. Hristo Ibouchev, WIPO Case No. D2010-2259 (using a domain name to intentionally attract, for commercial gain, Internet users to an online pharmacy by using the complainant’s mark, without the consent of the complainant and not disclosing the relationship between the parties on the respondent’s website, is evidence of bad faith registration under the Policy, paragraph 4 (b) (iv).)
Furthermore, the registration of a domain name that uses a well-known mark may itself be considered as evidence of bad faith registration. See for instance See F. Hoffmann-La Roche AG v. Registrant [3527070]: Saeed Rahman, Flysafe,WIPO Case No. D2011-0099 () where the trademark VALIUM is recognized as a well-known mark with a world wide reputation. The Panel therefore finds the Respondent has registered the disputed domain name with the intention of attracting Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to the source or sponsorship of the disputed domain name, which is recognized as bad faith registration and use under paragraph 4(b)(iv) of the Policy. Also see F. Hoffmann-La Roche AG v. Pinetree Development, Ltd., WIPO Case No. D2006-0049.
For the reasons discussed, the Panel finds that the Complainant has successfully established that the disputed domain name was 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 domain name be transferred to the Complainant.
Harini Narayanswamy
Sole Panelist
Date: July 7, 2011
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