WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. Gustavo Guardo
Case No. D2007-1550
1. The Parties
The Complainant is F. Hoffmann-La Roche, Basel, Switzerland.
The Respondent is Gustavo Guardo, San Jose, Costa Rica.
2. The Domain Name and Registrar
The disputed domain name <valium-online-pharmacy.com> is registered with eNom, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) pursuant to the Uniform Domain Name Dispute Resolution Policy (the “Policy”) implemented by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 19, 2007, and under the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) implemented by ICANN on the same date. The electronic copy of the Complaint was received by the Center by email on October 19, 2007, and in hard copy on October 24, 2007.
On October 22, 2007, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the domain name at issue.
On the same day (October 22, 2007), eNom, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
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 26, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was November 15, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 16, 2007.
The Center appointed Dr. Colin Yee Cheng Ong as sole panelist in this matter on November 21, 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.
The language of the proceedings before this Administrative Panel is the English language.
4. Factual Background
The Panel has looked at the Complainant’s submissions and indices containing various attached printouts from various websites as well as newspaper cuttings from the New York Times and the New Yorker showing use of the trade name Valium.
The Panel concludes that the Complainant owns valid and subsisting rights as well as trademark registrations. The VALIUM mark had been registered with International Registration No. R250784 since December 20, 2001, and has the Priority date for the mark VALIUM of October 20, 1961.
5. Parties’ Contentions
The Complainant contends that:
The Complainant is together with its affiliated companies one of the world’s leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics having global operations in more than 100 countries. The Complainant’s mark VALIUM is protected as a trademark in a multitude of countries worldwide. The mark VALIUM designates a sedative and anxiolytic drug belonging to the benzodiazepine family, which enabled the Complainant to build a world-wide reputation in psychotropic medications. For the mark VALIUM the Complainant holds registrations in over hundred countries on a world-wide basis.
The Complainant contends that the Domain Name of the Respondent is confusingly similar to the Complainant’s mark as it incorporates the mark VALIUM in its entirety. The Complainant contends that the Respondent does not have rights or legitimate interests in the Domain Name and that is was registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions. The Respondent does not appear to have used the domain name as the address of an active web site.
6. Discussion and Findings
The Panel finds that the proceedings have been conducted in accordance with the Rules and the Policy. Having gone through the series of communications as set out above under the section on procedural history, the Panel concludes that the Center has notified the Respondent of this proceeding and has discharged its responsibility under paragraph 2(a) of the Rules. The Panel finds that the proceedings have been conducted in accordance with the Rules and the Policy. According to Paragraph 14 (a) of the Rules, where there is a failure by the respondent to provide a response to the allegations of the complainant, as in the present case, the Panel is directed to make a decision on the administrative proceedings on the basis of the complaint and in accordance with Paragraph 14 (b), the Panel shall “draw such inferences there from as it considers appropriate.”
The Respondent has been accorded with the opportunity to provide submissions and evidence to dispute the claims of the Complainant. If the Respondent chooses not to present any such evidence, an inference may be made that such evidence would not have been favorable to the Respondent, or that he accepts the claims of the Complainant, or even that he does not wish to respond or defend his perceived interest in the domain name. In such case of silence by the Respondent, the proceedings shall then continue and Complainant shall have to prove the three elements that are required by the Policy without opposition but the Complainant’s own ability to explain them. (See: PRL USA Holdings, Inc. v. Yan Shif, WIPO Case No. D2006-0700 and Caterpillar Inc. v. Spiral Matrix/ Kentech, Inc WIPO Case No. D2006-0808).
The Panel should not decide in the Complainant’s favor solely because of the reason of the Respondent’s default (See: Oxygen Media Corporation v. Spiral Matrix, WIPO Case No. D2006-0521 and Lamps Plus, Inc. v. Cai Yu WIPO Case No. D2007-1061). Under paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements of its case:
(i) The Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The Respondent’s domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules, this Panel must “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, a complainant must prove that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.
In line with such provision, the Complainant must prove two limbs - that it enjoys the trademark right; and that the disputed domain name is identical with or confusingly similar to its trademark or service mark.
The Panel found the media write ups on the Complainant’s mark and trade name VALIUM as sufficient to further justify the Complainant’s trademark rights in that mark.
In particular, the Panel draws inferences from the various newspaper releases including the Seattle Times, New York Post and National Enquirer as evidence of prior use of the Complainant’s mark and trade name VALIUM. Goodwill to a particular trademark right is ordinarily acquired after long and extensive use of the name in question in relation to a business. Goodwill can also be generated very quickly in this modern era by way of mass advertising and promotion. See Oxygen Media Corporation v. Spiral Matrix ( WIPO Case No. D2006-0521 and GOVIA Limited v. Keith Painter WIPO Case No. D2002-0199).
The test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the domain name is used or other marketing and use factors, usually considered in trademark infringement (See Ebay Inc. v. Wangming, WIPO Case No. D2006-1107 and Sanofi-Aventis v. Elizabeth Riegel and Andrew Riegel WIPO Case No. D2005-1045).
The Panel finds that the Complainant has been successful in proving these two aspects. First, the Complainant enjoys trademark rights over the trade mark VALIUM through both its trademark registration as well as its extensive usage of the mark. Secondly, the disputed domain name, which wholly incorporates Complainant’s trademark VALIUM is confusingly similar to the Complainant’s trademark VALIUM.
It is well established that the specific top level of a domain name such as “.com”, “.org” or “.net” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (See eBay Inc. v. Akram Mehmood WIPO Case No. DAE2007-0001).
As the Respondent has submitted no evidence on this point, the Panel has to respect the trademark as inherently distinctive.
The Panel thus finds that the domain name <valium-online-pharmacy.com> is identical to the VALIUM mark in which Complainant has rights and that Complainant has established the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
According to paragraph 4(a)(ii) of the Policy, the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the contested domain name.
The Policy requires the Complainant to prove that the Respondent has no right or legitimate interest in the disputed domain name. However, it is the prevailing consensus view among Panelists that where a complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show one of the three circumstances under Paragraph 4(c) of the Policy, then the respondent may lack a legitimate interest in the domain name.
The Complainant asserted that it has exclusive rights for VALIUM and no licence/permission/authorization respectively consent was granted to use VALIUM in the Domain Name <valium-online-pharmacy.com>. The Complainant also contended that it is obvious that the Respondent uses the domain for commercial gain and with the purpose of capitalizing on the fame of the Complainant’s mark VALIUM and that the Respondent’s only reason in registering and using the contested Domain Name is to benefit from the reputation of the trademark VALIUM and illegitimately trade on its fame for commercial gain and profit.
The Panel concludes that the Respondent is neither affiliated with the Complainant, nor has the Complainant granted the Respondent the right or permission to use its VALIUM trademark.
As previously held by other WIPO Panels, “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant” (See eBay Inc. v. Akram Mehmood WIPO Case No. DAE2007-0001).
The Panel thus finds that Complainant has made a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name which is confusingly similar to the Complainant’s mark.
The Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the domain name.
There is no evidence on the record of this proceeding to suggest that the Respondent has been commonly known by the disputed domain name, or that Respondent has made a non-commercial or fair use of the disputed domain name.
Under these circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the domain name and that the requirement of paragraph 4(a)(ii) is also satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exhaustive list of what constitutes bad faith registration and one of the circumstances evidencing registration and use of a domain name in bad faith is that, by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, internet users to the respondent’s web site or other on-line locations, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the respondent’s web site or location or of a product or service on the respondent’s web site or location (Policy, Paragraph 4(b)(iv)). (See PRL USA Holdings, Inc. v. Yan Shif, WIPO Case No. D2006-0700 and Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co, WIPO Case No. D2000-0163 (“The domain name is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith.”)).
Registration of a domain name that is confusingly similar or identical to a famous trademark by any entity, which has no relationship to that mark, is itself sufficient evidence of bad faith registration and use. (See Centurion Bank of Punjab Limited v. West Coast Consulting, LLC, WIPO Case No. D2005-1319).
In addition, the Complainant attempted to contact Respondent using the contact information listed in Whois and received no response. Finally, the Respondent also failed to respond to the Complaint in this matter. Accordingly, under these facts and circumstances, the panel finds that the domain name was registered and is being used in bad faith. (See eBay Inc. v. Akram Mehmood WIPO Case No. DAE 2007-0001).
Accordingly, the Panel concludes that the Respondent registered and used the domain name <valium-online-pharmacy.com> in bad faith and that also the requirement of paragraph 4(a)(iii) of the Policy has also been met.
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-online-pharmacy.com> be transferred to the Complainant.
Dr. Colin Yee Cheng Ong
Dated: December 13, 2007