WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. Nikolina Angelova
Case No. D2007-1091
1. The Parties
The Complainant is F. Hoffmann-La Roche AG, of Basel, Switzerland, represented internally.
The Respondent is Nikolina Angelova, Sofia, Bulgaria.
2. The Domain Names and Registrars
The disputed domain names are <valium-mastercard.info> and <xenical-mastercard.info>, which are both registered with Directi Internet Solutions d/b/a PublicDomainRegistry.Com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 24, 2007. On July 24, 2007, the Center transmitted by email to Directi Internet Solutions d/b/a PublicDomainRegistry.Com a request for registrar verification in connection with the domain names at issue. On July 31, 2007, Directi Internet Solutions d/b/a PublicDomainRegistry.Com 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”), 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 August 6, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was August 26, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 28, 2007.
The Center appointed Joseph Dalby as the sole panelist in this matter on September 7, 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 a healthcare manufacturer and distributor of products circulating on the market of in excess of 100 countries. It produces and sells a sedative and anxiolytic drug under the name and brand of Valium, which is prescribed and used to treat psychotropic conditions. It also produces and sells oral prescription weight loss medication under the name and brand of Xenical, and this is prescribed and used to help obese people lose weight and keep this weight off.
Both brand names VALIUM and XENICAL are registered as trademarks in numerous jurisdictions.
The Respondent has not entered a Response in this Proceeding. According to WHOIS database search results produced by the Complainant, and confirmed by the Registrar of the disputed domain names, the Respondent is Nikolina Angelova, a private individual established in Sofia, Bulgaria. Other than the registration information, no further details are provided.
These domain names were registered by PublicDomainRegistry.com, an India based Registrar, pursuant to its registration agreement. The Registrar confirms that the UDRP applies to the registration of the disputed domain names.
5. Parties’ Contentions
The Complainant contends that the disputed domain names are, respectively, confusingly similar on their face to its trademarks VALIUM and XENICAL. In evidence the Complainant states that the mark VALIUM is a protected trademark that is extremely well-known. In support it has submitted several trademark certificates, and it is duly noted that amongst these is an International Trademark dated October 20, 1961 with the Registration No. R250784 for VALIUM, and an International Trademark dated October 22, 1998 with the Registration No. 699154 for XENICAL. Both registrations respectively predate the registration of the disputed domain names. Further the Complainant avers particularly that the notoriety of the VALIUM trademark will increase the risk of confusion.
The Complainant adds that no license, permission or authorization has been granted to the Respondent to use either trademark or to register or use the disputed domain names. It avers further that the Respondent has used the disputed domain names for commercial gain, by attempting to capitalize on the fame of the Complainant’s trademarks. It produces in evidence printed screen shots of web pages resolving to the respective disputed domain names. The Complainant explains that the domain names are used as forwarding addresses to redirect Internet users to a search engine where links to third parties are displayed, at which point products and services are offered. The Complainant submits that this was the Respondent’s only reason in registering and using the disputed domain names, and that this is itself evidence of both its final allegation of bad faith (in registration and use of the disputed domain names) and the risk of confusion between trademark and domain names.
The Respondent did not reply to the Complainant’s contentions. In particular, it has not submitted evidence of any the scenarios in paragraph 4(c) of the Policy.
6. Discussion and Findings
The Panel’s findings and observations apply equally to each disputed domain name, except where the exceptions are expressly reserved or noted herein.
The Panel has inspected the registration agreement for the disputed domain names that is produced by the Complainant and corresponds to the copy available on the Registrars website (at “www. publicdomainregistry.com”). Clause 2(6) of this Agreement provides that Registrants shall comply with all terms and conditions, polices, etc. laid down by ICANN, which of course will include the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and proceedings commenced thereunder.
The Respondent has been given an adequate opportunity to deal with the allegations against it. So it is thus noted that the Respondent has not offered any contentions in rebuttal of the claims and contentions made by the Complainant.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has exclusive rights and interests in law in established and valid trademarks in the name and style of VALIUM and XENICAL respectively, and that these marks have been reproduced within the disputed domain names.
It is also duly noted that each of the disputed domain names incorporate a grammatical mark (a hyphen) and the word “mastercard”, in which the Complainant does not claim any exclusive rights, but which the Panel believes to be a generally known and registered trademark of a third party. The Complainant makes no submission about the effect or inclusion of the additional grammatical and trademarks.
The Panel finds that neither the hyphen nor the trademark term materially alters the character and substance of the either disputed domain name such as to distinguish it from the registered trademark relied upon, or to render it any less identical or confusingly similar. See also Abertis Infraestructuras, S.A. v. Syed Hussain (PDAPB), WIPO Case No. D2006-1007. The Panel observes it is sufficient to establish a prima facie case within the UDRP if the trademark relied upon is reproduced within the disputed domain and is searchable on the Internet in the form that is registered. For the purposes of the proceeding, the fact that additional terms are included in the disputed domain name becomes immaterial in that regard.
Furthermore, given that hyphens within domain names are customarily used to mark a space in text, this only serves to reinforce the contention that the trademark and domain name are confusingly similar.
Accordingly, the Panel finds that the domain names in question are confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
Taking the Complaint in its entirety and the use of the disputed domain names (as explained under the next heading of this decision), the Complainant has satisfactorily demonstrated a prima facie case that the Respondent has no rights to or legitimate interests in the domain name. In default of the Respondent adducing any evidence to establish that the Respondent has been a representative or licensee of the Complainant, or that it is otherwise authorized to use the Complainant’s mark, the Panel therefore finds based on the record that the Respondent does not have any rights of legitimate interests in the disputed domain.
C. Registered and Used in Bad Faith
The Panel finds that the disputed domain names are, respectively, confusingly similar to the Complainant’s mark, and that they are being used inter alia to post a number of (what appear to be) links to other products and services offered by third parties. Given that the Respondent has failed to adduce any evidence of rights or legitimate interests in the disputed domain names the Panel finds this is suggestive of bad faith.
The Panel finds that the trademark VALIUM is sufficiently well-known that in any normal circumstance a consumer would associate products and services marketed under the mark had or would have been produced or provided by or with the authorization of the trademark holder, namely the Complainant. Accordingly, the Panel is satisfied that it is reasonable to conclude that the Respondent knew or ought to have known that she required authorization or license to reproduce the trademark in the domain name in question, and that therefore use of the trademark would create confusion on part of consumers. The Panel therefore finds that the domain name in question was registered in bad faith.
With regard to the trademark XENICAL, whilst this is less well-known than VALIUM, the Panel finds that within its own specialist market a consumer would associate products and services marketed under the XENICAL mark had or would have been produced or provided by or with the authorization of the trademark holder, namely the Complainant.
The Complainant complains that the disputed domain names are being used in bad faith because the websites resolving respectively to the disputed domain names are intentionally trying to attract users for a commercial purpose. Reviewing the web pages that have been produced, the Panel accepts this Complaint without reservation. Passing-off via the Internet is characterized by the diversion of click traffic away from a trademark holder’s authorized web presence towards websites that claim some, but have no, legitimacy to the goodwill and reputation of a trademark holder – and in any event there is some attempt to compete with the Complainant’s core business. In both cases, the content and purpose of the websites resolving to each of the disputed domain names is evidence of the state of knowledge and belief on the part of the Respondent as to the ownership and notoriety of the Complainant’s trademarks. What is particularly unacceptable in the present case is the “get-up” of the sites, consisting as they do of an attempt by the Respondent, or its agents, to legitimize the product offerings with information and advice about the therapeutic benefits of the trademarked products.
Accordingly, the Panel finds that the disputed domain names are being used in bad faith.
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 names, <valium-mastercard.info> and <xenical-mastercard.info> be transferred to the Complainant.
Dated: September 21, 2007