WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. sagacloud network
Case No. D2007-1849
1. The Parties
The Complainant is F. Hoffmann-La Roche AG, of Switzerland, internally represented.
The Respondent is sagacloud network of Romania.
2. The Domain Names and Registrars
The disputed domain names <genericvalium.org>, <ordervaliumonline.org>, <valiumbuy.org>, <xanaxvalium.org> are registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 13, 2007. On December 14, 2007, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain names at issue. On December 14, 2007, GoDaddy.com, Inc. 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 December 19, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was January 8, 2008. On January 7, 2008, the Respondent sent an email communication to the Complainant indicating his intention to transfer the disputed domain name to the Complainant. On January 9, 2008 the Complainant made a request to the Center for the suspension of proceedings. The Center notified the Parties of the suspension on January 9, 2008. On January 24, 2008 the Complainant made a request to the Center for the re-institution of the proceedings. The proceedings were subsequently re-commenced on January 24, 2008. No formal Response was submitted by the Respondent.
The Center appointed Debrett G. Lyons as the sole panelist in this matter on January 29, 2008. 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 long established pharmaceutical company which now has a global business. The Complainant’s trade mark VALIUM is registered in a great many countries. By way of example only, International Registration No. R250784 dates from October 20, 1961.
The trade mark VALIUM is used in respect of a sedative drug belonging to the benzodiazepine family.
The Respondent registered the disputed domain name <genericvalium.org> on November 29, 2007 and registered the disputed domain names <ordervaliumonline.org>, <xanaxvalium.org> and <valiumbuy.org>, all on December 1, 2007.
The domain names divert Internet users to parking websites of the Internet Service Provider, Go Daddy, with links to commercial websites offering pharmaceuticals and health related products.
The Complainant petitions the Panel to transfer the domain names to it.
5. Parties’ Contentions
The Complainant submits that the disputed domain names are each confusingly similar to the trade mark VALIUM since they incorporate the whole of the trade mark and, in essence, add only descriptive or non-distinctive additional words or another trade mark, none of which reduce the risk of confusion. The Complainant refers the Panel to prior UDRP decisions which will be referred to later where necessary.
The Complainant argues that the Respondent has no rights or legitimate interest in the domain names. It states that the Respondent has no authority or permission to use the trade mark VALIUM. It alleges that there is no evidence of the Respondent’s use of, or demonstrable preparations to use, the domain names or names corresponding thereto in connection with a bona fide offering of goods or services. The Respondent is not commonly known by any of the domain names and the Complainant has found nothing to indicate that the Respondent is making a legitimate non-commercial or fair use of the domain names. In that latter regard, the Complainant reminds the Panel of what was said in the case of F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451:
“the use of the domain name as a parking website is not a bona fide non-commercial use pursuant to paragraph 4(c)(iii) of the Policy, even if the content on the parking website available at the disputed domain name is not developed by the Respondent but provided by the Internet Service Provider Go Daddy”
The Complainant submits that the disputed domain names were registered and are being used in bad faith. In particular, the Complainant argues that the Respondent would have known of the Complainant’s trade mark at the time it registered the disputed domain names and its subsequent use of the domain names shows that it is attempting, for commercial gain, to attract Internet users to an online location by creating a likelihood of confusion with the Complainant’s trade mark.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
It is the responsibility of the Panel to consider whether the requirements of the Policy have been met, regardless of the fact the Respondent failed to submit a reply. According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Having considered the Complainant’s case and the available evidence, the Panel finds the following:
A. Identical or Confusingly Similar
The Panel has no hesitation in finding that the disputed domain names are each confusingly similar to a trade mark in which the Complainant has rights.
Absent contest by the Respondent, the Panel accepts that the registered trade marks for VALIUM are valid and subsisting. The Complainant therefore has rights in the trade mark.
For the purpose of comparison of the domain names with the mark, the gTLD, “.org”, can be ignored as trivial. Each disputed domain name incorporates the whole of the Complainant’s trade mark. In three of the four domain names, the added terms like “- buy” or “order - online” or “generic -” are clearly descriptive and do nothing to avoid confusion. In the case of Merrell Pharmaceuticals Inc., Aventis Pharma SA. v. Filips Kostins, WIPO Case No. D2004-0943, it was said that the mere addition of the generic terms “buy” and “generic” was not sufficient to avoid confusion between domain name and trade mark. More generally, in Lilly ICOS LLC v. John Hopking / Neo net Ltd., WIPO Case No. D2005-0694, it was said that “generally, a user of a mark may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it”. That same thinking has been expressed by panelists in numerous other similar fact cases under the Policy, a great many of them involving popular selling pharmaceutical products, where a respondent has added descriptive or otherwise non-distinctive words to a complainant’s trade mark.
The disputed domain name, <xanaxvalium.org>, is slightly different, nonetheless, as was said in Hoffmann-La Roche Inc. v. #1 Viagra Propecia Xenical & More Online Pharmacy, WIPO Case No. D2003-0793, “[R]espondent’s inclusion of other third party trademarks in its domain name does not change this result. UDRP panels have consistently found a likelihood of confusion under these circumstances”.
The Panel finds all four disputed domain names to be confusingly similar to the Complainant’s trade mark, and that the Complainant has met the first requirement of the Policy.
B. Rights or Legitimate Interests
There is nothing to establish that the Respondent is known by the disputed domain names or that the Respondent has made demonstrable preparations to use either of the domain names in connection with a bona fide offering of goods or services: Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903
There is no suggestion that the Respondent is making legitimate non-commercial or fair use of the disputed domain names.
The Panel finds that the Respondent has not discharged the burden of proof which fell to it: see Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 .
The Panel therefore finds that the Complainant has satisfied what was required of it under Paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out the circumstances which shall be evidence of the registration and use of a domain name in bad faith. These sets of circumstances are not exhaustive and other instances of bad faith might be in evidence. However what is noteworthy about paragraphs 4(b)(i) – (iv) is that they have generally been interpreted by panels as requiring both registration and use in bad faith. Sometimes, there will be evidence of registration in bad faith or use in bad faith and the panelist will need to find both since the requirements of paragraph 4(a)(iii) of the Policy are conjunctive.
It is therefore logical to first test the facts against these given circumstances.
Paragraph 4(b)(iv) states:
by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
The Panel is of the view that the use of the disputed domain names falls squarely within paragraph (b)(iv) above. In the absence of evidence of any contrary intention, the inference can be drawn that the intention of the website was to intercept Internet users and misdirect them to a site for commercial gain: L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623.
The Panel further finds, separately, registration and use in bad faith since, on the balance of the evidence, there is every likelihood that the Respondent knew the Complainant’s business and its trade mark before it registered the disputed domain names and then used the names in bad faith by parking them at a location intended to drive pay-per-click revenue through hits on commercial links, many promoting third party pharmaceutical products.
The Panel therefore finds that the Complainant has also established this third limb of its case.
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, <genericvalium.org>, <ordervaliumonline.org>, <valiumbuy.org> and <xanaxvalium.org> be transferred to the Complainant.
Debrett G. Lyons
Dated: February 12, 2008