WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. Hostmaster, Domain Park Limited
Case No. D2007-1096
1. The Parties
The Complainant is F. Hoffmann-La Roche AG, of Basel, Switzerland represented by Jérôme Rhein, Switzerland.
The Respondent is Hostmaster, Domain Park Limited, Apia, Samoa.
2. The Domain Name and Registrar
The disputed domain name <valium-processing.info> is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 25, 2007. On July 27, 2007, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On July 27, 2007, Moniker Online Services, 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”), 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 3, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was August 23, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 27, 2007.
The Center appointed Joseph Dalby as the sole panelist in this matter on August 31, 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 whose products circulate 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.
The brand name of the drug is protected by the trademark VALIUM, registered in numerous jurisdictions.
The Respondent has not entered a Response in this proceeding. According to WHOIS database search results, and confirmed by the Registrar of the domain name in question, the Respondent is Hostmaster, Domain Park Limited, a company incorporated in Western Samoa. Other than the registration information, no further details are provided.
5. Parties’ Contentions
The Complaint contends that the domain name in question is confusingly similar to its trademark VALIUM. In evidence the Complainant states that the mark VALIUM is a protected trademark that is well-known. In support it has submitted several trademark certificates for VALIUM – including an International Trademark dated October 20, 1961 with the Registration No R250784 – all which predate the registration of the domain name in question. The Complainant avers that the mark’s notoriety will increase the risk of confusion.
The Complainant adds that no license, permission or authorization was granted to the Respondent to use the trademark to register or use the domain name in question. It avers further that the Respondent has used the domain name in question for commercial gain, with the purpose of capitalizing on the fame of the Complainant’s trademark. It reproduces printed screen shorts of the domain name in question that reveals a list of “sponsored links” that promote products and services of third parties. The Complainant submits that this was the Respondent’s only reason in registering and using the domain name in question, and that it is evidence of both bad faith (in registration and use of the domain name in question) and the risk of confusion between trademark and domain name.
The Respondent did not reply to the Complainant’s contentions. In particular, it has not submitted evidence of any of the scenarios in paragraph 4(c) of the Policy.
6. Discussion and Findings
The Panel has inspected the copy of the registration agreement for the domain name in question that is currently available on the Registrars website (at “www.moniker.com”). Clause 9 of this Agreement provides that Registrants shall agree to submit to proceedings commenced under the Uniform Domain Name Dispute Resolution Policy (“UDRP”).
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 an established and valid trademark by the name and style of VALIUM, and that this mark is reproduced within the domain name in question.
The domain name in question also includes a grammatical mark (a hyphen) and a generic or common term, namely “processing” – in which the Complainant does not claim any exclusive rights. The Panel finds that neither the hyphen nor the generic term materially alter the character and substance of the disputed domain name such as to distinguish it from the trademark or to render it any less identical or confusingly similar. In particular, 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 identical. Accordingly, the Panel finds that the domain name in question is identical or confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
Taking the Complaint in its entirety, 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 that the Respondent does not have any rights of legitimate interests in the disputed domain.
C. Registered and Used in Bad Faith
The Panel notes that the disputed domain name is confusingly similar to the Complainant’s mark, and that it is 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 name 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 he 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.
The Complainant complains that domain name is being used in bad faith because the website resolving to the domain name in question is intentionally trying to attract users for a commercial purpose. The website in question is populated with links that are described as “sponsored”. Even without corroboration the Panel accepts that this is admissible evidence of commercial gain in itself. However the Panel notes that only some of these third-party links appear to be relevant to the treatment of psychotropic conditions or other pharmaceutical or related therapeutic products and services. The others appear to be more related to the generic term “processing”. In theory at least, this suggests less likelihood of confusion as the non-healthcare related links do not compete with the Complainant’s business. However, the Panel rejects the notion that this amount to a defence to the Complaint; in essence, passing-off on 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.
Accordingly, the Panel finds that the domain name in question is also 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 name, <valium-processing.info> be transferred to the Complainant.
Dated: September 6, 2007