WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

F. Hoffmann-La Roche AG v. Alex Podzorov

Case No. D2007-1403

 

1. The Parties

The Complainant is F. Hoffmann-La Roche AG, Switzerland, represented internally.

The Respondent is Alex Podzorov, Russian Federation.

 

2. The Domain Name and Registrar

The disputed domain name <buy-cheap-valium.com> (the “Disputed Domain Name”) is registered with EstDomains, Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 20, 2007. On September 24, 2007, the Center transmitted by email to EstDomains, Inc. a request for registrar verification in connection with the domain name at issue. On September 24, 2007, EstDomains, Inc. transmitted by email to the Center its verification response. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 9, 2007 by e-mail and facsimile. The Center received the Amendment to the Complaint in hard copy on October 11, 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 October 16, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was November 5, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 6, 2007.

The Center appointed Michael D. Cover as the sole panelist in this matter on November 15, 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 Disputed Domain Name is <buy-cheap-valium.com>. The Complainant, together with its affiliated companies is one the world’s leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics, with operations in more than 100 countries. The Complainant’s trademark, VALIUM, is protected in over one hundred countries throughout the world. An example is International Registration No. R250784 VALIUM, which is based on a Swiss registration going back to October 20, 1961.

The Complainant uses the trademark to designate a sedative and anxiolytic drug belonging to the benzodiazepine family and has built a worldwide reputation in psychotropic medications for the product sold under the VALIUM trademark. The product sold under the trademark VALIUM became the best selling drug in the United States.

The Complainant’s use and registration of the trademark VALIUM predate the registration of the Disputed Domain Name, which was dated August 14, 2007.

Nothing is known about the Respondent, not least as the Respondent has not filed a response. The Disputed Domain Name links to a website with sponsored links, including “Valium Pharmacy”.

 

5. Parties’ Contentions

A. Complainant

The Complainant submits that the Disputed Domain Name is confusingly similar to its well-known trademark VALIUM. It submits that the addition of the descriptive words “buy” and “cheap” does not sufficiently distinguish the Disputed Domain Name from the Complainant’s trademark. It points to Lilly ICOS LLC v. John Hopking/Neo net Ltd., WIPO Case No. D2005-0694 to support its contention that a user of a mark may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter.

With regard to the Respondent having no rights or legitimate interests in respect of the Disputed Domain Name, the Complainant asserts its exclusive right to the trademark VALIUM and also relies on the fact that no licence or permission has been granted to the Respondent to use VALIUM in the Disputed Domain Name.

The Complainant points to the Disputed Domain Name linking to a website composed of sponsored links. It maintains that the Respondent’s only possible reason for registering and using the Disputed Domain Name is to benefit from the reputation of the trademark VALIUM.

Finally, the Complainant states that the Disputed Domain Name was registered and is being used in bad faith. It asserts that the Respondent must have had knowledge of the Complainant’s well-known trademark at the date of registration of the Disputed Domain Name and that the Respondent is using the Disputed Domain Name to divert Internet users to other websites, making them believe that the websites behind the links are associated with or recommended by the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

A. Identical or Confusingly Similar

The Disputed Domain Name contains the whole of the Complainant’s well-known trademark VALIUM. It is well-established that the addition of descriptive words does not distinguish the Disputed Domain Name from the Complainant’s trademark. The Panel accordingly finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark VALIUM.

B. Rights or Legitimate Interests

The Complainant has to prove a negative under this heading. However, it is able to show a prima facie case, in that it has not granted any permission or licence to the Respondent. It goes further, by pointing to the sponsored links already set out in this decision.

The Respondent has not filed a Response. It has therefore been unable to show use or demonstrable preparations for use of the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services. Nor has it been able to show that it has been commonly known by the Disputed Domain Name.

The final heading of the non-exhaustive list of circumstances is that the Respondent is making legitimate non-commercial or fair use of the Disputed Domain Name, without intent for commercial gain to divert consumers or to tarnish the Complainant’s trademark. Not only has the Respondent not filed a Response but the Complainant is able to point to the sponsored links already set out in this decision.

For all these reasons, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

C. Registered and Used in Bad Faith

The Panel finds that it was inconceivable that the Respondent did not know of the well-known trademark of the Complainant at the time that the Disputed Domain Name was registered in August 2007. There had been extensive use over many years – the drug was approved in 1963 – and the first trademark registration was in 1961.

L’Oral, Biotherm, Lancme Perfums et Beaut & Cie v. Unasi, Inc, WIPO Case No. D2005-0623 shows that exploitation of the reputation of trademarks through click-throughs is a common example of use in bad faith as identified in many previous decisions under paragraph 4(b)(iv) of the Policy. The Panel finds that the Respondent has, by using the Disputed Domain Name, intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark VALIUM as to the source, sponsorship, affiliation or endorsement of that website or of a product on that website.

The Panel accordingly finds that the Disputed Domain Name was registered and is being used in bad faith.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name, <buy-cheap-valium.com> be transferred to the Complainant.


Michael D. Cover
Sole Panelist

Dated: November 29, 2007