WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. Eugene and PrivacyProtect.org
Case No. D2007-1882
1. The Parties
The Complainant is F. Hoffmann-La Roche AG, of Basel, Switzerland, represented internally.
The Respondent is Eugene, of Moscow, Russian Federation and PrivacyProtect.org. PrivacyProtect.org appears to be a privacy or proxy registration service provider, whose name appeared as registrant of the disputed domain name only after the Complaint was filed.
2. The Domain Names and Registrars
The disputed domain names <valium-bazer.com> and <xenical-bazer.com> are registered with EstDomains, Inc.
3. Procedural History
The Complaint (identifying the Respondent as “Eugene”, and providing Whois printouts indicating the registrant of the domain names as “Eugene”) was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 18, 2007. On December 21, 2007, the Center transmitted by email to EstDomains, Inc. a request for registrar verification in connection with the domain names at issue. On December 21, 2008, EstDomains, Inc. transmitted by email to the Center its verification response indicating registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. Specifically, the Registrar identified the registrant as “PrivacyProtect.org”. The Center sent an email communication to the Complainant on January 14, 2008 providing registrant and contact information disclosed by the registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant submitted an amendment to the Complaint adding “PrivacyProtect.org” as named Respondent.
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 January 16, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was February 5, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 6, 2008.
The Center appointed Debrett Gordon Lyons as the sole panelist in this matter on February 15, 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 marks VALIUM and XENICAL are registered in a great many countries. By way of example only, International Registration No. 250784 for VALIUM dates from October 20, 1961. The trade mark VALIUM is used in respect of a sedative drug belonging to the benzodiazepine family. International Registration Nos. 612908 and 699154 for XENICAL date from August 5, 1993. The trade mark XENICAL is used in respect of an oral prescription weight loss medication.
The Respondent registered the disputed domain names <valium-bazer.com> and <xenical-bazer.com> on November 9, 2007.
The domain names resolve to websites with multiple links to online websites offering the sale of, or information about, “Valium” and “Xenical” and other pharmaceuticals.
The Complainant petitions the Panel to transfer the domain names to it.
5. Parties’ Contentions
The Complainant submits that the disputed domain names, <valium-bazer.com> and <xenical-bazer.com>, are confusingly similar to the trade marks VALIUM and XENICAL, respectively. The submission is largely unelaborated and nothing is said of the additional element, “-bazer”, common to each domain name.
The Complainant argues that the Respondent has no rights or legitimate interests in the domain names. It states that the Respondent has no authority or permission to use the trade marks. 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 either 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.
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 names are 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 names; and
(iii) the domain names have been registered and are 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
Particularly, absent contest by the Respondent, the Panel accepts that the Complainant’s registered trade marks VALIUM and XENICAL are valid and subsisting. The Complainant therefore has rights in the trade marks.
For the purpose of comparison of the domain names with the mark, the gTLD, “.com”, can be ignored as trivial. The disputed domain names incorporate the whole of one or other of the Complainant’s trade marks and add the element, “-bazer”. As previously noted, the Complainant had nothing to say about that additional element or how it might influence the overall comparison of the trade marks with the domain names.
The Panel takes it own cognizance of the fact that, in English, the word “bazaar” can be alternatively spelt, “bazar”, in keeping with its Persian etymology. Moreover, the English word “bazaar” corresponds with the word “bazar” (Бαзар) in Russian, the Respondent’s place of residence and, presumably, language. Confusion is inevitable if the element “bazer” is likely to be seen as “bazar” since the domain names, as wholes, would be understood as indicating online locations where the Complainant’s products bearing the trade marks might be purchased, perhaps at a discounted cost (see, for example, Sanofi-Aventis v. Mack Tack, WIPO Case No. D2005-0717). On the other hand, if the word “bazer” is perceived as meaningless and fanciful, then it could be a factor detracting from the likelihood of confusion.
The Panel adopts the conservative view that the word should be regarded as invented and therefore distinctive when viewed by Internet users. Nonetheless, the question remains as to whether the domain names are confusingly similar to the Complainant’s trade marks and that assessment must rests on the comparative distinctiveness of those trade marks.
The Complainant has provided evidence of the renown of its VALIUM trade mark which the Panel accepts as proof of its high level of acquired distinctiveness. It has said nothing of the XENICAL trade mark other than it is registered in many countries and that the earliest registrations are from 1993.
From its own restricted enquiries, the Panel notes the Complainant’s dedicated website, “www.xenical.com”, the domain name <xenical.com> having been registered to the Complainant since April 17, 1997 - and from a “Google” search of the trade mark XENICAL almost 35 million hits. The Panel is prepared to infer from those facts that the trade mark is well known to the public.
A great many cases under the Policy have involved popular selling pharmaceutical products, where a respondent has registered a domain name which added descriptive or otherwise non-distinctive words to a complainant’s well known trade mark. The consensus position of former panels has been that confusion is the likely result. Moreover, confusion has been found in cases where the complainant’s trade mark has been combined with other distinctive matter, such as another trade mark (see, for example, 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”).
Against that backdrop, the Respondent has failed to give any account of its choice of the disputed domain names or of any possible significance attaching to the word “bazer” which might counter the likelihood of confusion with the Complainant. Accordingly, the likely perception of the domain names would be that of the Complainant’s well known trade mark together with a suffixed, meaningless word.
The Panel finds the disputed domain names to be confusingly similar to the Complainant’s respective trade marks. 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 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, see 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 Complainant has made out a prima facie case that the Respondent lacks rights and legitimate interests in the domain names 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. In any event, the Complainant will need to satisfy the panelist that both since the requirements of paragraph 4(a)(iii) of the Policy have been met, as these 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 within paragraph (b)(iv) above. 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. It then used the names in bad faith by creating websites likely to attract Internet users to locations promoting the sale of third party pharmaceutical products and in all likelihood gained commercially from “pay-per-click” revenue generated through hits on those third party commercial links, see L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623.
The apparent use of a privacy or proxy registration service to conceal the identity of the registrant after filing of the Complaint appears calculated to disrupt the proceedings and is in any event consistent with a finding of bad faith.
The Panel therefore finds that the Complainant has also established this third element 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, <valium-bazer.com> and <xenical-bazer.com> be transferred to the Complainant.
Debrett G. Lyons
Dated: February 29, 2008