WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. romeo daniel
Case No. D2007-1873
1. The Parties
The Complainant is F. Hoffmann-La Roche AG, of Switzerland, internally represented.
The Respondent is romeo daniel, of Romania.
2. The Domain Name and Registrar
The disputed domain name <ordervalium.org> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 17, 2007. On December 18, 2007, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain name at issue. On December 18, 2008, 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”).
On December 19, 2007, the Respondent sent an email communication to the Complainant enquiring how he could transfer the disputed domain name to the Complainant. On January 14, 2008, the Respondent sent an email communication to the Center indicating agreement to transfer the disputed domain name to the Complainant.
On December 19, 2007, the Complainant submitted a request for suspension of proceedings in view of a possible settlement. The Center notified the Parties of the suspension of proceedings on December 19, 2007. On January 11, 2008, the Center received a request from the Complainant for the re-institution of proceedings. The proceedings were re-instituted on January 11, 2008.
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 January 14, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was February 3, 2008. No formal response was filed by the Respondent.
The Center appointed Debrett G. Lyons as the sole panelist in this matter on February 11, 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 trademark VALIUM is registered in a great many countries. By way of example only, International Registration Number R250784 dates from October 20, 1961.
The trademark VALIUM is used in respect of a sedative drug belonging to the benzodiazepine family.
The Respondent registered the disputed domain name <ordervalium.org> on December 2, 2007.
The domain name diverted Internet users to a parking website of the Internet Service Provider, Go Daddy, with links to commercial websites offering pharmaceuticals and other products. The domain name now resolves to a “Domain Default page” with no relevant content.
The Complainant petitions the Panel to transfer the domain name to it.
5. Parties’ Contentions
The Complainant submits that the disputed domain name is confusingly similar to the trademark VALIUM since it incorporate the whole of the trademark and adds only the descriptive word, “order”, which does nothing to 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 trademark VALIUM. It alleges that there is no evidence of the Respondent’s use of, or demonstrable preparations to use, the domain name or any corresponding name in connection with a bona fide offering of goods or services. The Respondent is not commonly known by the domain name and the Complainant has found nothing to indicate that the Respondent is making a legitimate non-commercial or fair use of the domain name. 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 name was registered and is being used in bad faith. In particular, the Complainant argues that the Respondent would have known of the Complainant’s trademark at the time it registered the disputed domain name and its subsequent use of the domain name 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 trademark. It also accuses the Respondent of “passive holding” of the domain name in bad faith.
However, the Respondent did not submit a formal response or otherwise to the Complainant’s contentions. As noted above under paragraph 3, the Respondent sent informal email communications to both the Complainant and the Center regarding transfer of the disputed domain name to the Complainant.
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 formal 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 name is confusingly similar to a trademark in which the Complainant has rights particularly absent contest by the Respondent, the Panel accepts that the registered trademark for VALIUM is valid and subsisting. The Complainant therefore has rights in the trademark.
For the purpose of comparison of the domain name with the trademark, the gTLD, “.org”, can be ignored as trivial. The disputed domain name incorporates the whole of the Complainant’s trademark and merely prefixes the descriptive word, “order”. The simple addition of that word does not dispel the likelihood of confusion as was decided in the recent UDRP decision of this Panel in F. Hoffmann-La Roche AG v. sagacloud network, WIPO Case No. D2007-1849 (considering, amongst others, the disputed domain name, <ordervaliumonline.org>). 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 trademark.
The Panel finds the disputed domain name to be confusingly similar to the Complainant’s trademark. Accordingly 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 name or that the Respondent has made demonstrable preparations to use the domain name 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 name.
The Panel finds that the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name and that the Respondent has not discharged the burden of rebuttal which fell to it as a result: 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, but the Complainant will generally need to establish both to the Panel’s satisfaction in order to succeed, 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 name 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 of the domain name in bad faith since, on the balance of the evidence, there is every likelihood that the Respondent knew the Complainant’s business and its trademark before it registered the disputed domain name and then used the domain name in bad faith by parking it at a location intended to drive ‘pay-per-click’ revenue through hits on commercial links, many promoting third party pharmaceutical products.
There is a residual point to address. Sometime after notification of the Complaint, the website was changed and now resolves to a “Domain Default page”. That type of so-called “passive holding” has long been decided as use in bad faith under the Policy in circumstances such as these where the trademark is well-known, there is no Response and there is no conceivable legitimate reason for the respondent’s actions (see Telstra v. Nuclear Marshmallows, WIPO Case No. D2000-0003, and the many decisions which have followed it).
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 name, <ordervalium.org>, be transferred to the Complainant.
Debrett G. Lyons
Dated: February 25, 2008