WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. Imran Aziz
Case No. D2007-1355
1. The Parties
The Complainant is F. Hoffmann-La Roche AG, of Basel, Switzerland, represented internally.
The Respondent is Imran Aziz, of Lancashire, United Kingdom of Great Britain and Northern Ireland, represented pro se.
2. The Disputed Domain Name and Registrar
The disputed domain name <valiumuk.com> is registered with In2net Network Inc. (the “Registrar”).
3. Procedural History
The Complaint was brought pursuant to the Uniform Domain Name Dispute Resolution Policy (the “Policy”), which was adopted by the Internet Corporation for Assigned Names and Numbers (“ICANN”) on August 26, 1999, and approved on October 24, 1999, and in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) as approved on October 24, 1999, and the World Intellectual Property Organization Supplemental Rules for Uniform Domain Name Dispute Resolution Policy in effect as of December 1, 1999, (the “Supplemental Rules”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) in email form on September 11, 2007, and in hard copy form, along with accompanying Annexes 1-8, on September 14, 2007.
Pursuant to paragraph 4(d) of the Policy, the Complainant selected the Center as the ICANN approved administrative dispute resolution service provider to administer this proceeding. Through the Complaint, the Complainant requested a single-member panel.
After receiving the original Complaint, the Center, in accordance with paragraph 5 of the Supplemental Rules, verified that the Complaint complied with the formal requirements of the Rules and the Supplemental Rules. In that regard, on September 17, 2007, the Center requested confirmation from the Registrar as to whether the Registrar received a copy of the Complaint from the Complainant and to confirm contact and registrant information set forth in the Complaint relative to the disputed domain name. The Center also requested the Registrar to specify, for the domain name: (a) whether the Policy applies to that name, (b) whether the registrant has submitted, in its registration agreement, to the jurisdiction at the location of the principal office of the registrar for court adjudication of disputes concerning or arising from the use of that name, (c) the language of the registration agreement, and (d) whether that name will remain “locked” during the proceeding.
Subsequently, on September 21, 2007, the Registrar provided its response to the Center through which the Registrar specified name and contact information pertinent to the disputed domain name to the extent present in its WhoIS database, and confirmed that the Respondent is listed as the registrant for that name. The response also confirmed that: (a) In2net Network Inc., Inc. is the registrar, (b) the Respondent submitted to the jurisdiction as the location of the principal office of the Registrar for court adjudication and (c) the registration agreement is in English; and indicated that the name will remain locked during the pendency of this proceeding.
In response to an email communication from the Center and dated September 24, 2007 advising the Complainant of a change in the registrant from that noted in the Complaint, the Complainant amended the Complaint accordingly. Hereinafter, the term “Complaint” will refer to the Complaint, as amended.
The Center verified that the Complaint satisfied the formal requirements of the Policy, the Rules and the Supplemental Rules.
On September 26, 2007, the Center formally notified the Respondent, by email letter, of the filing of the Complaint, including an indication that the Center was forwarding a complete copy of the Complaint to the Respondent, together with all its Exhibits, by both courier and email. The Complaint and its accompanying documents, and all subsequent communications associated therewith, were provided in the preferred manners and to the addresses as mandated by paragraphs 2(a), 2(b) and 4(a) of the Rules.
Hence, the notification to the Respondent having occurred on September 26, 2007, under paragraph 4(c) of the Rules, this administrative proceeding is deemed to have commenced on that date.
Having reviewed the Complaint and all the correspondence, including that between the Center and the Registrar, the Panel agrees with the determination of the Center that the Complaint and its handling met the requirements of the Rules and the Supplemental Rules.
The Respondent was then provided with a 20 calendar day period, expiring on October 16, 2007, to file its Response with the Center and serve a copy of the Response on the Complainant.
On October 1, 2007, the Center timely received a Response from the Respondent.
Accordingly, pursuant to the Rules and Supplemental Rules, by email letter dated October 13, 2007, the Center contacted the undersigned, Mr. Peter L. Michaelson, requesting his service as a Sole Panelist for this dispute. Subsequently, on October 15, 2007, Mr. Michaelson accepted and returned, by facsimile to the Center, a fully executed Statement of Acceptance and Declaration of Impartiality and Independence. The Panel finds that it was properly constituted. The Center, through an email letter dated October 18, 2007, notified the Parties of the appointment of Mr. Michaelson as Sole Panelist.
Based on the deadline set forth in paragraph 15 of the Rules, a decision was to be issued by the Panel to the Center on or before November 1, 2007. However, owing to unexpected time conflicts experienced by the Panel - which constituted unforeseen circumstances, the Center, at the Panel’s request, extended the due date to November 15, 2007.
This dispute concerns one domain name, specifically: <valiumuk.com>.
The language of this proceeding is English.
4. Factual Background
As indicated in the WhoIs registration record provided in Annex 1 to the Complaint, the Respondent registered the disputed domain name on August 6, 2007.
A. The Complainant’s VALIUM marks
The Complainant owns numerous trademark registrations in more than 100 countries throughout the world for the mark VALIUM. The Complainant has provided, in Annex 3 to the Complaint, a copy of its international registration for this mark. Pertinent details of the registration are as follows:
International registration 2R 250 784
Registered: December 20, 1961 with priority to October 20, 1961
Last Renewal: January 17, 2002
This mark was registered for use in connection with various products including, in international class 5, pharmaceutical drugs and preparations.
B. The Complainant
The Complainant, together with its affiliated companies, is one of the world’s leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics and has global operations in more than 100 countries.
The mark VALIUM designates a sedative and anxiolytic drug, belonging to the benzodiazepine family, from which the Complainant established a world-wide reputation in psychotropic medications. As indicated in the news article (a copy of which appears in Annex 5 to the Complaint) “A Host of Anxiety Drugs, Begat by Valium”, The New York Times, February 22, 2005, the Complainant’s mark VALIUM is extremely well-known and notorious.
C. The Respondent
The Respondent provides an online pharmacy. Through the Respondent’s website (hard copy printouts of various pages of which appear in Annex 8 to the Complaint), Internet users can make purchases of not only of the Complainant’s drug VALIUM but also various third-party drugs, all, if need be, without a prescription.
5. Parties’ Contentions
(i) Identical or Confusingly Similar
The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s VALIUM marks.
Specifically, the Complainant contends that addition of the geographic descriptor “uk”, as a suffix, to the mark VALIUM to form the domain name does not sufficiently distinguish the name from the mark.
Hence, the Complainant believes that it has satisfied the confusing similarity/identicality requirement in paragraph 4(a)(i) of the Policy.
(ii) Rights or Legitimate Interests
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy.
The Respondent’s only reason in registering and using the domain name is to benefit from the reputation of the Complainant’s mark and illegitimately trade on its fame for commercial gain and profit, which ostensibly does not constitute a bona fide offering of goods and services. Hence, the Respondent fails to qualify under paragraph 4(c)(i) of the Policy.
Further, the Complainant has neither granted the Respondent a license nor provided the Respondent with either permission or authorization to use the mark VALIUM in a domain name. Hence, given the Complainant’s exclusive rights in the mark, the Respondent can never become commonly known by the name or mark VALIUM. Thus, the Respondent can not qualify under paragraph 4(c)(ii) of the Policy.
(iii) Registered and Used in Bad Faith
The Complainant contends that the Respondent registered and is now using the disputed domain name in bad faith under paragraph 4(a)(iii) of the Policy.
Given that the disputed domain name was registered on August 6, 2007 - approximately 40 years after the Complainant first registered its mark VALIUM, the Respondent clearly had knowledge of that mark when the Respondent registered the name, hence reflecting bad faith registration.
As to bad faith use, the Respondent, through its website, is intentionally misleading and attracting Internet users by creating a likelihood of confusion in their minds with respect to the Complainant’s mark VALIUM and as to whether that site or its products is somehow associated or affiliated with, or endorsed by the Complainant, when it is not, and thus is exploiting that confusion for its own pecuniary gain through sales of goods advertised on that site.
Thus, the Respondent’s use of the disputed domain name constitutes bad faith use in violation of paragraph 4(b)(iv) of the Policy.
(i) Identical or Confusingly Similar
The Respondent takes the position that, inasmuch as “valiumuk” is one word with its letters representing “value(val) in(i) universal(u) medications(m) uk (united kingdom)”, the disputed domain name which contains this word is not confusingly similar to the Complainant’s VALIUM marks.
(ii) Rights or Legitimate Interests
The Respondent contends that it has rights in the disputed domain name simply because it purchased that name in good faith.
Further in that regard, the Respondent states: “We would like to point out the Roche has only purchased the name valium and does not own every letter in the alphabet. If they felt that valiumuk belonged to them they had ample time to purchase valiumuk. It appears that the name valium was registered in 1961 so this would have given them forty five years to make their decision.”
(iii) Registered and Used in Bad Faith
Here, the Respondent argues that, although it knew that the term “VALIUM” existed when it registered the disputed domain name, it registered that name in good faith. It did so for the simple reason that, as a legitimate online pharmacy, to it the name meant more than just a product but encompassed a service, i.e., “value(val) in(i) universal(u) medications(m) uk(united kingdom)”.
The Respondent states that it operates its online pharmacy in good faith. In that regard and to avoid abuse, it advises each of its UK customers to speak to his own UK physician or pharmacist and obtain a valid prescription from either of them for any desired drug. The Respondent imports its drugs into the UK from its location in the Far East. It only permits each customer to order a given prescription drug every six months and provide a prescription for each order such that the Respondent, in turn, can present the prescription to UK Customs whenever a UK Customs Officer requires it do so. If a valid prescription can not be produced for any prescription drug entering the UK, then UK Customs Officers will likely seize that drug at its port of entry.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s VALIUM marks.
From a simple comparison of the name to the marks, no doubt exists that the disputed domain name is, for all practical purposes, confusingly similar to the VALIUM marks. The only differences between the name and the mark VALIUM is the addition, as a suffix, of the geographic descriptor “uk”, and the appending of a gTLD (generic top level domain) “.com” to the mark – with the latter being totally irrelevant in assessing confusing similarity or identicality under paragraph 4(a) of the Policy and thus ignored.
It is now very well-established in UDRP precedent, including numerous decisions previously rendered by this Panel, that minor variations, such as adding short letter or number groups or even generic words to a mark, are each insufficient in and of itself, when used in forming a domain name that results from modifying the mark, to confer requisite and sufficient distinctiveness to that name to avoid user confusion. Adding the geographic descriptor, “uk”, is clearly such a minor variation. See, e.g., National Football League v. Peter Blucher d/b/a BluTech Tickets, WIPO Case No. D2007-1064 (September 24, 2007); Toilets.com, Inc. v. Rons Porta Johns, WIPO Case No. D2007-0952 (August 27, 2007); Associated Bank Corp. v. Texas International Property Associates, WIPO Case No. D2007-0334 (June 28, 2007); Gerber Childrenswear Inc. v. David Webb, WIPO Case No. D2007-0317 (April 24, 2007); SPX Corp. v. Hevun Diversified Corp., NAF Case No. FA791657 (November 13, 2006); Google Inc. v. Burns, NAF Case No. FA 726096 (August 16, 2006); The Cheesecake Factory Inc. and The Cheesecake Factory Assets Co., LLC v. Say Cheesecake, WIPO Case No. D2005-0766 (September 12, 2005); Napster, Inc. v. Vinscani, WIPO Case No. D2005-0531 (July 19, 2005); Caesars Entertainment Inc. v. Nova Internet Inc., WIPO Case No. D2005-0411 (June 22, 2005); Lockheed Martin Corporation v. The Skunkworx Custom Cycle, WIPO Case No. D2004-0824 (January 18, 2005); Lockheed Martin Corp. v. Deborah Teramani, WIPO Case No. D2004-0836 (December 1, 2004); and National Collegiate Athletic Assoc. v. Dusty Brown, WIPO Case No. D2004-0491 (August 30, 2004); Lane-Labs USA, Inc. v. Powell Productions, NAF Case No. FA 155896 (July 1, 2003); and particularly Cable News Network LP, LLP v. Elie Khouri d/b/a Channel News Network et al., NAF Case No. FA 117876 (December 16, 2002).
Such confusion, should it occur, would undoubtedly cause Internet users intending to access the Complainant’s website, but who were to reach the Respondent’s site instead, to think that an affiliation of some sort exists between the Complainant and the Respondent, when, in fact, no such relationship would exist at all. See, e.g., Google Inc. v. Jennifer Burns, NAF Case No. FA 726096 (August 16, 2006); Cheesecake Factory, Napster, Caesars Entertainment, Lockheed v. Skunkworx, and Lockheed v. Teramani, all cited supra; see also Register.com, Inc. v. Reile, NAF Case No. FA 208576 (January 27, 2004); Caesars World, Inc. and Park Place Entertainment Corp. v. Japan Nippon, WIPO Case No. D2003-0615 (September 30, 2003); Leiner Health Services Corp. v. ESJ Nutritional Products, NAF Case No, FA 173362 (September 16, 2003); American Family Life Assurance Company of Columbus v. defaultdata.com aka Brian Wick, NAF Case No. FA 123896 (October 14, 2002); AT&T Corp. v. Abreu, WIPO Case No. D2002-0605 (Sept. 11, 2002); L.F.P., Inc. v. B and J Properties, NAF Case No. FA 109697 (May 30, 2002); Peter Frampton v. Frampton Enterprises, Inc., WIPO Case No. D2002-0141 (April 17, 2002); Spence-Chapin Services to Families and Children v. Stanley Wynman, NAF Case No. FA 100492 (December 10, 2001); Meijer, Inc. v. Porksandwich Web Services, NAF Case No. FA 97186 (July 6, 2001); MPL Communications, Limited et al v. 1WebAddress.com, NAF Case No. FA 97092 (June 4, 2001); American Home Products Corporation v. Malgioglio, WIPO Case No. D2000-1602 (February 19, 2001); Surface Protection Industries, Inc. v. The Webposters a/k/a Mark’s Paint Store, Inc., WIPO Case No. D2000-1613 (February 5, 2001); Dollar Financial Group, Inc. v. VQM NET, NAF Case No. FA 96101 (January 25, 2001); eBAY Inc. v. G L Liadis Computing, Ltd. and John L. Liadis d/b/a G L Liadis Computing Ltd., WIPO Case No. D2000-1463 (January 10, 2001); Treeforms, Inc. v. Cayne Industrial Sales Corp., NAF Case No. FA 95856 (December 18, 2000); Pep Boys Manny, Moe and Jack of CA v. E-Commerce Today, Ltd., e Resolution Case No. AF-0145 (May 3, 2000).
Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s VALIUM marks as to cause confusion; hence, the Complainant has satisfied its burden under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Respondent has not provided any basis that, under the circumstances here, would legitimize a claim to the disputed domain name under paragraph 4(c) of the Policy.
No evidence exists of record that the Complainant has ever authorized the Respondent to utilize its mark VALIUM or any mark confusingly similar thereto in conjunction with the goods which the Complainant uses that mark, nor does the Complainant apparently have any relationship or association whatsoever with the Respondent. As such, any use to which the Respondent were to put the mark VALIUM or one confusingly similar thereto in connection with the identical or similar goods to those currently provided by the Complainant would violate the exclusive trademark rights now residing in the Complainant. See, e.g., National Football League, Toilets.com, Inc., and Associated Bank, all cited supra; GoDaddy.com, Inc., v. GoDaddysDomain.com, Clark Signs, Graham Clark, WIPO Case No. D2007-0303 (May 7, 2007); Citgo Petroleum Corporation v. Richard Antinore, WIPO Case No. D2006-1576 (March 14, 2007); New Destiny Internet Group, LLC and Xplor Media, Inc. v. SouthNetworks, WIPO Case No. D2005-0884 (October 14, 2005); The Cheesecake Factory Inc., Napster and Caesars Entertainment, Inc., all cited supra; Pelmorex Communications Inc. v. weathernetwork, WIPO Case No. D2004-0898 (December 28, 2004); Sybase, Inc. v. Analytical Systems, WIPO Case No. D2004-0360 (June 24, 2004); Caesars World, Inc. and Park Place Entertainment Corporation v. Japan Nippon, WIPO Case No. D2003-0615 (September 30, 2003); Leiner Health Services Corp. v. ESJ Nutritional Products, NAF Case No. FA 173362 (September 16, 2003); AT&T Corp. v. Roman Abreu d/b/a Smartalk Wireless, cited supra; MPL Communications, Limited et al v. 1WebAddress.com, NAF Case No. FA 97092 (June 4, 2001); America Online, Inc. v. Xianfeng Fu, WIPO Case No. D2000-1374 (December 11, 2000); and Treeforms, cited supra. Consequently, the Respondent could not legally acquire any public association between it and the mark VALIUM or one similar thereto, at least for the goods rendered by the Complainant, or those similar thereto.
Further, there is absolutely no evidence of record that the Respondent has ever been commonly known by the domain name. Nor could the Respondent in this case ever become so known, in light of the Complainant’s extensive and exclusive trademark rights, dating back approximately 40 years prior to the date (August 6, 2007) on which the Respondent registered the name, without infringing on the exclusive trademark rights of the Complainant. See, Treeforms, Inc., cited supra.
Hence, based on the evidence before the Panel, the Respondent does not fall within paragraph 4(c)(ii) of the Policy.
Moreover, since the Respondent’s use of the name, which infringes the Complainant’s trademark rights, does not in this Panel’s view constitute a bona fide use and is unquestionably commercial in nature, the Respondent’s conduct does not fall within paragraphs 4(c)(i) or 4(c)(iii) of the Policy either.
Accordingly, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name within paragraph 4(a)(ii) and 4(c) of the Policy.
C. Registered and Used in Bad Faith
The Panel believes that the Respondent’s actions constitute bad faith registration and use of the disputed domain name.
The Respondent, by its own admission, was aware of the Complainant and its mark VALIUM when the Respondent registered the disputed domain name. Yet, in spite of that knowledge, the Respondent intentionally chose and registered the name to opportunistically exploit its potential to generate user confusion for the Respondent’s eventual pecuniary benefit and to the Complainant’s ultimate detriment.
In light of current naming conventions on the Internet for domain names used in reaching websites concerning products that incorporate well-known marks and/or corporate names, this Panel believes that it is well within reason here to expect Internet users in the UK, who seek information from the Complainant concerning its drug VALIUM, to readily form a domain name composed of the term “VALIUM” followed by the geographic designation “UK” to which a ubiquitous gTLD “.com” would then be added, hence yielding the disputed domain name <valiumuk.com>. Having done so, those users would reasonably expect, upon entering the resulting name into their browsers, to be taken to the Complainant’s website or one associated with the Complainant. However, without any advance warning, they would reach the Respondent’s site instead through which the Respondent would solicit sales for the Complainant’s drug, to the Complainant’s detriment. Yet, nothing exists on the Respondent’s website which would lead any such Internet user to reasonably infer other than that a connection, affiliation, endorsement or relationship of some sort likely exists between that website and/or the products it offers for sale and the Complainant – when, in actuality, none exists. Thus, the Respondent’s use of the name is highly likely to confuse, if not actually deceive, those Internet users. See National Football League, Toilets.com, Inc. and Associated Bank, all cited supra; Christian Dior Couture v. Alex Roché, WIPO Case No. DTV2007-0004 (June 15, 2007) and Gerber Childrenswear, cited supra.
Hence, the Panel concludes that the Respondent violated paragraph 4(a)(iii) of the Policy and specifically paragraph 4(b)(iv) thereof.
Thus, the Panel concludes that the Complainant has provided sufficient proof of its allegations, with respect to the disputed domain name, to establish a case under paragraph 4(a) of the Policy upon which the relief it now seeks can be granted.
Accordingly, under paragraphs 4(i) of the Policy and 15 of the Rules, the Panel grants the relief sought by the Complainant.
The disputed domain name, <valiumuk.com>, is ordered transferred to the Complainant.
Peter L. Michaelson
Dated: November 15, 2007