WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. Huan Home
Case No. D2007-0199
1. The Parties
The Complainant is F. Hoffmann-La Roche AG, Basel, Switzerland, represented by an internal representative.
The Respondent is Huan Home, Anhui, China.
2. The Domain Names and Registrar
The disputed domain names <bestvaliumonline.info> and <yourvaliumonline.info> are registered with EstDomains, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 12, 2007. On February 14, 2007, the Center transmitted by email to EstDomains, Inc. a request for registrar verification in connection with the domain names at issue. On February 21, 2007, EstDomains, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on February 25, 2007. 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”), 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 February 28, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was March 20, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 21, 2007.
The Center appointed Hugues G. Richard as the sole panelist in this matter on March 28, 2007. 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 group in the field of pharmaceuticals and diagnostics having global operations in more than 100 countries.
VALIUM designates a sedative and anxiolytic drug belonging to the benzodiazepine family. The Complainant has registered VALIUM as a trademark in over 100 countries worldwide. The registrations include an international registration with a priority date of December 20, 1961.
The Respondent registered the domain names <bestvaliumonline.info> and <yourvaliumonline.info> on December 28, 2006.
5. Parties’ Contentions
The Complainant contends that:
- F. Hoffmann-La Roche AG, together with its affiliated companies, is one of the world’s leading research-focused healthcare group in the fields of pharmaceuticals and diagnostics and having global operations in more than 100 countries;
- The Complainant’s mark VALIUM is protected as a trademark in a multitude of countries worldwide and reference is made to the International Registration of the mark;
- The Complainant’s mark VALIUM enabled F. Hoffmann-La Roche AG to build a worldwide reputation in psychotropic medications;
- The domain names are confusingly similar to the Complainant’s registered trademarks, as they incorporate this mark in its entirety;
- The Complainant’s mark VALIUM is well-known and notorious and the trademark’s notoriety will increase the likelihood of confusion;
- The Complainant’s use and registration of the mark VALIUM predates, the Respondent’s registration of the domain names at issue.
The Complainant contends that the domain names are confusingly similar to their trademark VALIUM.
The Complainant also contends that the Respondent has no rights or legitimate interests with respect to the domain names at issue. The Complainant has exclusive rights to the mark VALIUM. The Respondent has been granted no right to use the mark VALIUM. Further, the domain names in question clearly allude to the Complainant. Before the notice of the Complainant’s objection, on January 29, 2006, the domain name in issue was directing Internet users to a search engine composed of sponsored links.
Finally, the Complainant contends that the domain names were registered and have been used in bad faith. When the domain names were registered, the Complainant’s product/mark was well-known. It is obvious that the domain name has been used in bad faith as the Respondent tried to attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark. The domain names <bestvaliumonline.info> and <yourvaliumonline.info> misleadingly include the Complainant’s mark even though no authorization or license to use has ever been granted to the Respondent.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant is the owner of the trademark VALIUM. The domain names at issue are not identical to the trademark held by the Complainant, and the question therefore is whether there is confusing similarity.
The disputed domain names consist of the trademark VALIUM in addition to the words “best”, “your” and “online”.
In a similar WIPO UDRP decision, F. Hoffmann-La Roche AG v. Pinetree Development, Ltd, WIPO Case No. D2006-0049, the trademark was XENICAL and the domain name in dispute was <buy-xenical-cheap-online.com>. The panel was of the opinion that the disputed domain name consisted of the trademark XENICAL in addition to the words “buy”, “cheap” and “online”. According to the panel, “as the domain name contains the well-known trademark XENICAL in its entirety, and the Respondent operates an online pharmacy selling the Complainant’s pharmaceutical, the Panel finds it likely that the Respondent’s domain name will be confused with the Complainant’s trademark. The panel agrees with the Complainant that the addition of the words “buy”, “cheap” and “online” is not sufficient to render the domain name dissimilar or to prevent consumer confusion.”
Also, in the WIPO UDRP decision Sanofi-Aventis v. Alexandre Richards, WIPO Case No. D2006-0878, the trademark was AMBIEN and the domain name in dispute was <cheap-ambien-fast>. The panel was of the opinion that the terms “cheap” and “fast” were not sufficient to render the domain name dissimilar or to prevent consumer confusion, and that the confusion persisted.
In our case, the Respondent’s websites were used to direct Internet users to a search engine composed of sponsored links. Currently, the new content of the website simply makes reference to a situation of passive holding under the appearance of an “MySQL Error: File ‘./feed_sites/keywords.MYD’not found (Errcode: 2)”, as showed by the evidence submitted by the Complainant.
Nevertheless, the content of the website is not relevant in determining confusing similarity. (PC Mall, Inc. v. Pygmy Computer Systems, Inc. WIPO Case No. D2004-0437).
Hence, the Panel finds that there is confusing similarity between the Complainant’s mark VALIUM and the domain names at issue.
B. Rights or Legitimate Interests
The Respondent has not contested the Complainant’s allegation that the Respondent lacks any rights or legitimate interests in the contested domain names.
According to the panel’s decision in F. Hoffmann-La Roche AG v. Pinetree Development, Ltd, WIPO Case No. D2006-0049, it is generally difficult for the Complainant to prove that the Respondent has no rights or legitimate interests in the domain names at issue. On the other hand, it would be fairly simple for the Respondent to demonstrate that it has any right or legitimate interests pursuant to paragraph 4(c) of the Policy.
Therefore it is essential for a complainant to make out an initial prima facie case that the Respondent lacks rights or legitimate interests. Once such prima facie case is made, the Respondent carries the burden of demonstrating rights or legitimate interests in the domain names. If it fails to do so, a Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (Croatia Airlines d.d. v. Modern Empire Internet Ltd. WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o. WIPO Case No. D2004-0110).
At first glance, the Complainant has not granted the Respondent any rights to use its trademark, nor is the Respondent affiliated with the Complainant in any way.
The Panel finds all the circumstances and evidence sufficient to establish a prima facie case showing that the Respondent has no rights or legitimate interests in the domain names at issue.
Pursuant to paragraph 4(a)(ii) of the Policy, the Panel finds that the Respondent has not demonstrated any of the three circumstances that could constitute rights to or legitimate interests in the disputed domain names.
Consequently, the Panel deems that the Respondent has no rights or legitimate interest in the domain names under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel considers that, by not submitting a Response to the Complaint, the Respondent has failed to establish any circumstances that could demonstrate that the Respondent did not register and use the domain names in bad faith.
Paragraph 4(b) of the Policy sets forth four non-exclusive illustrations of situations that could reflect bad faith in the registration and use of domain names. The Panel finds that there was an attempt to attract Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s trademark, as to the source, affiliation and endorsement of the Respondent’s website or of the products or services posted on or linked to Respondent’s website.
Also, according to the decision F. Hoffmann-La Roche AG v. IT Developpers s.c. Tomaz Kraus, Lukasz Haluch, WIPO Case No. D2006-1547, “the fact that the contents of the website under the Domain Name was apparently removed after Complainant’s notification does not affect a finding of bad faith in this case”.
In addition, the mark VALIUM was used without any authorization from the Complainant.
As a result, the Panel finds that there is evidence of bad faith.
For all the reasons stated above and in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, <bestvaliumonline.info> and <yourvaliumonline.info> be transferred to the Complainant.
Hugues G. Richard
Dated: April 18, 2007