WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. Digi Real Estate Foundation
Case No. D2007-0372
1. The Parties
The Complainant is F. Hoffmann-La Roche AG, Basel, Switzerland, represented by F. Hoffmann-La Roche AG, Switzerland.
The Respondent is Digi Real Estate Foundation, Panama City, Panama.
2. The Domain Name and Registrar
The disputed domain name <ordervaliumonline.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 13, 2007. On March 15, 2007, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On March 15, 2007, eNom 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, billing, and technical contact. The Center verified that 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 March 26, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was April 15, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 16, 2007.
The Center appointed Michael J. Spence as the sole panelist in this matter on April 27, 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, in its own assessment, “one of the world’s leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics and having global operation in more than 100 countries”. The Complainant is the registered proprietor of the trade mark VALIUM worldwide, which it uses to designate a sedative and anxiolytic drug. The trademark is extremely well known.
Under the disputed domain name, the Respondent operates a website that is a search engine composed of sponsored links. The website presents the Internet user with a series of links to websites at which it is alleged to be possible to purchase the both Complainant’s product and its generic competitors. The website also contains links to websites selling other products.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to its trademark as the domain name incorporates the trademark in its entirety, and the addition of the descriptive words “order” and “online” does not sufficiently distinguish the domain name from the trade mark. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the domain name because it is misleadingly diverting Internet users to a search engine and thereby attempting illegitimately to trade on the “fame [of the mark] for commercial gain and profit”. Finally, the Complainant contends that the Respondent’s registration of the name was in bad faith as it was undertaken intentionally to mislead consumers and to attract them to other websites “making them believe that the websites behind those links are associated or recommended by Complainant.”
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant rightly cites Lilly ICOS LLC v. John Hopking/Neo net Ltd., WIPO Case No. D2005-0694 to establish that “generally, a user of a mark may not avoid likely confusion by appropriating another’s entire mark [as the Respondent has done in this case] and adding descriptive or non-distinctive matter to it”. This will particularly be the case where, as here, the mark is inherently distinctive and very well-known. Nevertheless, whether “the trademark and the disputed domain name are confusingly similar depends on many factors, including the relative distinctiveness of the trademark and the non-trademark elements of the domain name, and whether the non-trademark elements detract from or contradict the function of the trademark as an indication of origin” (Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti, WIPO Case No. D2005-0037). In Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti the Panel found that the word “buy” was insufficient to distinguish the Complainant’s well-known and distinctive pharmaceutical trade mark LANTUS from the disputed domain name <buylantus.com>. The words “order” and “online” may be taken to perform a similar function to the word “buy” in the disputed domain name in Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti. It is at least plausible that some Internet users in each case might have been misled into believing that there is some connection between the Complainant and Respondent. For this reason, the disputed domain name <ordervaliumonline.com> may be said to be confusingly similar to the Complainant’s trademark. This result is also consistent with the decision of the Panel on analogous facts in Lilly ICOS LLC v. Tudor Burden d/b/a BM Marketing/Burden Marketing, WIPO Case No. D2005-0313.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy in relation to the disputed domain name.
B. Rights or Legitimate Interests
It is for the Complainant to establish, at least prima facie that the Respondent has no rights or legitimate interests in the disputed names (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). In this case, the Respondent has been making use of the disputed domain name, which use may in appropriate cases be argued to give rise to some legitimate interest. For example if the Respondent’s use of the Complainant’s trademark was merely ‘nominative’: that is used to link only to sites that sold the Complainant’s genuine own product marketed under the trademark. However, this does not appear to be the case in the present circumstances, as the disputed domain name apparently contains links to numerous pharmacy related sites, only some of which refer to VALIUM.
The Complainant contends that this use does not give rise to a legitimate interest in the disputed name. It cites Fox News Network, LLC v. Warren Reid, WIPO Case No. D2002-1085 in which it was said that “using the Domain Name to mislead users by diverting them to a search engine does not appear to be use in connection with a bona fide offering of goods or services and therefore legitimate”. Similarly, in Sigikid H. Scharrer & Koch GmbH & Co., MyBear Marketing-und Vertriebs GmbH, Mr. Thomas Dufner v. Bestinfo, WIPO Case No. D2004-0990 it was said that “the sole diversion of Internet traffic by Respondent to other, unrelated websites, does not represent a use of the Domain Name in connection with a bona fide offering of goods and services.” On precisely analogous facts in Lilly ICOS LLC v. Tudor Burden d/b/a BM Marketing/Burden Marketing, WIPO Case No. D2005-0313 it was established that the use of a domain name containing a trademark, while it might be permissible if the use was merely nominative, would not be so if the websites to which the search engine gave links also sold generic versions of the Complainant’s product, as they do in this case. Moreover, some of the links contained on the Respondent’s site are to different types of goods altogether.
On balance, therefore, the Panel accepts the Complainant’s contention that the Respondent has no rights or legitimate interests in respect of the domain name because it is misleadingly diverting Internet users to a search engine and thereby attempting illegitimately to trade on the “fame [of the mark] for commercial gain and profit”. The Panel therefore finds that the Complainant has established the second element of paragraph 4(a) of the Policy in relation to the disputed domain name.
C. Registered and Used in Bad Faith
Given the inherent distinctiveness and strong reputation of the Complainant’s trademark, there can be little doubt that the Respondent should have anticipated that some Internet users would be confused by the disputed domain name. Further, in operating its search engine and providing various links to a range of pharmacy related sites it is probable that “Respondent is deriving economic benefit from this practice, either by attracting users to Respondent’s website, where goods and services are offered, or by the receipt of compensation from the owners of other websites for delivering users to those sites” (Yahoo! Inc. and GeoCities v. Data Art Corp., DataArt Enterprises, Inc., Stonybrook Investments, Global Net 2000, Inc., Powerclick, Inc., and Yahoo Search, Inc., WIPO Case No. D2000-0587). The supply of pharmaceuticals, given its potential public health implications, requires the highest standards of transparency in trading. To profit from causing confusion in an area of activity of such public importance must constitute bad faith, as indeed was found to be the case in Lilly ICOS LLC v. Tudor Burden d/b/a BM Marketing/Burden Marketing WIPO Case No. D2005-0313.
The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) of the Policy in relation to the disputed domain name.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <ordervaliumonline.com> be transferred to the Complainant.
Michael J. Spence
Dated: May 13, 2007