WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. Julio Alvares
Case No. D2008-0254
1. The Parties
The Complainant is F. Hoffmann-La Roche AG, of Basel, Switzerland, internally represented.
The Respondent is Julio Alvares, of Cusco, Peru.
2. The Domain Name and Registrar
The Domain Name at issue is <easybuyvalium.org>. It has been registered with Direct Information PVT. Ltd. d/b/a PublicDomainRegistry.com (hereinafter referred to as “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (hereinafter referred to as the “Center”) on February 19, 2008.
On February 19, 2008, the Center transmitted by email to Registrar a request for registrar verification in connection with the Domain Name at issue. On February 20, 2008, the Registrar 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 (hereinafter referred to as the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter referred to as the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter referred to as the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), and 4 (c) of the Supplemental Rules the Center formally notified the Respondent of the Complaint.
The respective hardcopy has been sent on February 29, 2008, by courier from Switzerland and arrived in Lima, Peru on March 4, 2008. The package then experienced an exception as by note of the courier the address seemed to be incorrect. In the end, the hardcopy of the Complaint could not be delivered. Notification of the Respondent by hardcopy therefore failed. The Panel notes, however, that the physical address
Avenue de Tervuren 119
and in particular the street “Avenue de Tervuren” does not seem to exist at all in Cusco, given the fact that the word “Avenue” is French rather than Spanish, Tervuren is a city near Brussels and the Embassy of Peru to Belgium being located at Avenue de Tervuren in Brussels. One can only speculate about reasons why an apparently false physical address has been used during domain registration.
In any event, in accordance with the Rules and with the Supplemental Rules, notification of the Respondent shall be deemed to have been made on February 29, 2008, by facsimile transmission and via the Internet subject to paragraph 4c) of the Supplemental Rules in connection with paragraphs 4(a) and 2 (f)(i) and (iii) of the Rules.
Therefore, administrative proceedings commenced on February 29, 2008.
In accordance with the Rules, paragraph 5(a), due date for Response was March 20, 2008. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on March 25, 2008.
The Center appointed Andrea Jaeger-Lenz as the sole panelist in this matter on April 4, 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
No Response being submitted by the Respondent, and in absence of exceptional circumstances, the Panel decided the dispute on the basis of the Complaint, paragraph 5(e) of the Rules, and drew such interferences from the non-compliance as it considered appropriate, paragraph 14(b).
The Complainant is, together with its affiliated companies, one of the world’s leading research focused healthcare companies in the area of pharmaceuticals and diagnostics with global operations in more than 100 countries. The Complainant offers a wide range of prescription drugs and produces inter alia the drug Valium, a sedative and anxiologic drug belonging to the benzodiazepine family. The drug Valium enabled the Complainant to build a world-wide reputation in psychotropic medications. Valium is protected inter alia by the following trademark:
VALIUM, International Trademark No. 18858, registered on October 20, 1961 and renewed on December 20, 2001, No. R250784 in Classes 1, 3 and, 5 with extensions of protection to the following countries: Algeria, Germany, Armenia, Austria, Belarus, Benelux, Bosnia Herzegovina, Bulgaria, China, Croatia, Egypt, Spain, Macedonia, Russian Federation, France, Hungary, Italy, Kazakhstan, Kyrgyzstan, Liechtenstein, Morocco, Monaco, Uzbekistan, Poland, Portugal, Moldavia, Czech Republic, Rumania, San Marino, Slovakia, Slovenia, Sudan, Tadzhikistan, Ukraine, Vietnam, Yugoslavia.
The Respondent has registered the Domain Name <easybuyvalium.org> on January 7, 2007 with the Registrar. The Respondent’s Domain Name automatically redirects the Internet user to “www.controlledpills.com/prices.php?aff_id=21700&sub=346” under which the Respondent operates an online store for generic drugs.
5. Parties’ Contentions
The Complainant contends each of the requirements as set out in paragraph 4(a) of the Policy to be given in the case. In particular, the Complainant contends that:
(i) The Domain Name is confusingly similar to a trademark in which the Complainant has rights
The Complainant contends that the Domain Name <easybuyvalium.org> is confusingly similar to its trademark VALIUM given the fact that its distinctive part is identical to the Complainant’s trademark. The addition of the descriptive words “easy” and “buy”, in the Complainant’s view would not distinguish sufficiently the Domain Name from the Complainant’s trademark. The Complainant alleges that <easybuyvalium.org> might suggest the Respondent’s website to be a location where a consumer may find products of the Complainant. In the Complainant’s view its trademark is well-known and notorious which would increase likelihood of confusion with the Respondent’s Domain Name. Finally, the Complainant contends that its use and registration of its trademark predates the Respondent’s registration of the Domain Name.
(ii) The Respondent has no rights or legitimate interest in respect of the Domain Name at issue
The Complainant establishes that the Respondent has no rights or legitimate interests with respect to the Domain Name. The Complainant contends that it has exclusive rights in the trademark VALIUM, and that no licence, permission, or authorization whatsoever was granted to the Respondent in order to use the Complainant’s trademark in the Respondent’s Domain Name. The Respondent would use the Domain Name for commercial gain with the purpose of capitalizing the fame of the Complainant’s trademark. Hence, the Domain Name would clearly allude to the Complainant’s trademark.
(iii) The Domain Name has been registered and is being used in bad faith
Third, the Complainant alleges the Domain Name to be registered and used in bad faith by the Respondent. There could not be doubt that the Respondent at the time of registration had knowledge of the Complainant’s well-known trademark. Furthermore, the Respondent would intentionally attempt for commercial purposes to attract Internet users to visit it’s website, by creating likelihood of confusion as to the source, affiliation and endorsement of the Respondent’s website or of the products or services posted or linked to the latter.
The Respondent did not submit a Response to the Complainant’s contentions.
6. Discussion and Findings
Under Paragraph 5(e) of the Rules, the Panel shall decide the dispute based upon the complaint, if a respondent does not submit a response, and in the absence of exceptional circumstances. However, as paragraph 5(e) has to be seen in context of 14(b) of the Rules, a respondent’s failure to respond does not automatically subject it to an adverse decision in the sense of a default judgment; rather, the panel in such cases must “decide the dispute based on the complaint”, and may only draw such inferences from the respondent’s default “as it considers appropriate”.
Pursuant to Paragraph 4(a) of the Policy, in order to prevail, a complainant must prove each of the following requirements:
(1) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) that the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
As a first requirement, the identity or confusing similarity between the Respondent’s Domain Name and the Complainant’s trademark needs to be established.
The Complainant has established by prima facie evidence that it has rights in the trademark VALIUM, through international registration of the mark (see factual background, supra). By its registration the Complainant’s trademark is entitled to a presumption of validity.
The Domain Name at issue, <easybuyvalium.org>, contains the Complainant’s trademark in toto, the additional descriptive words “easy” and “buy”, as well as the suffix “.org”. With respect to the latter, it is well established that a panel is to ignore a suffix in comparing a trademark to a domain name as being simply a necessary component of a domain name indicating the nature of top level domain (see e.g., Gorstew Limited v. Alexander Superman, WIPO Case, No. D2001-1103).
With regard to the additional descriptive words “easy” and “buy”, the Panel accepts the Complainant’s assertion that the mere addition of these generic terms does not necessarily avoid confusing similarity to the Complainant’s trademark. This finding is supported by several UDRP decisions, e.g. Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-1493; Lilly ICOS LLC v. John Hopking/ Neo net Ltd., WIPO Case No. D2005-0694; The Price Company v. Price Club also known as Tsung-Pei Chang, WIPO Case No. D2000-0664. As stated in Microsoft supra, “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”.
Furthermore, the generic terms are likely to create confusion as to the source of the offered products. Generally speaking, the use of a registered trademark in a domain name allows the registrant of the domain to capture traffic and divert it to its own website. Consumers tend to expect to find a company on the Internet at a domain name address comprised of the company’s name or trademark.
The Domain Name at issue may suggest, that the Respondent’s website is a location operated by the Complainant to purchase the Complainant’s products in a very easy and uncomplicated way. It is highly likely that the average customer will associate the domain of the Respondent as the source of products of the Complainant. But as matter of fact, the Respondent neither offers the Complainant’s product, nor has he any contractual relationship with the Complainant. Quite the contrary, the Respondent offers a generic product at his online pharmacy. It is also likely, that an average customer might expect the Respondent’s Domain Name – if not genuine from the Complainant – to be somewhat affiliated with the Complainant. To the average consumer, the Domain Name might give the impression that the Respondent’s website constitutes a subsidiary business of the Complainant, or that it is sponsored by the Complainant.
The Panel therefore concludes that the Respondent’s Domain Name is confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
Second, the Respondent does not have rights or legitimate interests in the Domain Name.
First of all, the Respondent is not using the Domain Name in connection with a bona fide offering of goods and services. As stated earlier, the Respondent essentially redirects Internet users to its online pharmacy by using the trademark of the Complainant. The redirection to an online pharmacy has been an issue in several UDRP Cases, see e.g., Pfizer, Inc. v. Seocho and Vladimir Snezko, WIPO Case No. D2001-1199, AVENTIS Pharma S.A. and Merrell Pharmaceuticals Inc. v. Rx USA, WIPO Case No. D2002-0290, Hoffmann-La Roche Inc. v. 1 Viagra Propecia Xenical & More Online Pharmacy, WIPO Case No. D2003-0793, Hoffmann-La Roche Inc. v. #1 Viagra Propecia Xenical & More Online Pharmacy, WIPO Case No. D2003-0793.
In AVENTIS Pharma supra, the panel found the respondent to have no legitimate interest in the domain name because selling the complainant’s goods “does not give respondent the right to register and use the mark as a domain name without consent of the holder of the trademark”.
Second, the Complainant has established prima facie evidence that it is the exclusive owner of rights in the trademark VALIUM and no licence, permission, authorization, consent whatsoever was granted to the Respondent in order to use the Complainant’s trademark in its Domain Name. Furthermore, it appears from the evidence that the Respondent as an individual or business has never been commonly known by the Domain Name.
Third, the Panel is satisfied with the Complainant’s contention that the Respondent is not making a legitimate noncommercial use of the Domain Name. The Respondent is using its Domain Name to sell generic drugs on the corresponding web site via its online drug store, which is clearly a commercial purpose.
Thence, the Panel does not find the Respondent to have rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
Finally, the Domain Name needs to have been registered and used in bad faith.
The Complainant has provided evidence that the Domain Name has been registered and is being used in bad faith by the Respondent. The Panel is convinced that the Respondent is using the Domain Name in a way to intentionally attempt to attract for commercial gain Internet users to its website, by creating a likelihood of confusion with the owner’s mark as to the source, affiliation and endorsement of the owners website or location, namely, a product on the Respondent’s website.
As stated earlier, there is likelihood of confusion between the Domain Name and the trademark of the Complainant. The Respondent’s Domain Name <easybuyvalium.org> suggests to potential customers the possible purchase of the Complainant’s product Valium on the Respondent’s website. It is therefore designed to attract Internet users who intent to purchase Valium, to the Respondent’s online pharmacy where customers can allegedly purchase a generic diazepam product, which is a product directly competing with the Complainant’s Valium.
This finding is also supported by screen-shots of the Respondent’s website. As a matter of fact, the Respondent expressly offers on its website what is purported to be “generic valium”. The Respondent tries therefore to take advantage of initial interest confusion of a customer visiting its website looking to purchase Valium. As stated elsewhere, “there is no such thing as generic Valium”. There is either Valium, a diazepam product, manufactured genuinely by the Complainant, or diazepam, a product that can be manufactured by anyone. Thus, while Valium is a diazepam product, diazepam is not Valium, unless it is manufactured by the Complainant, F.Hoffmann-La Roche AG v. Web Marketing, WIPO Case No. D2006-0005.
Essentially, as stated earlier, the Respondent’s Domain Name is designed to re-direct potential customers of the Complainant’s product to the Respondents’ online drug store. The re-direction of potential customers has been found to be a bad faith use of the domain in numerous panel decisions. As held in NetWizards, Inc. v. Spectrum Enterprises, WIPO Case No. D2000-1768 “the registration and use of a domain name to re-direct Internet users to websites of competing organizations constituted bad faith use and registration” (see also Zwack Unicum Rt. Erica J. Duna, WIPO Case No. D2000-0037; E.R. Squibb LLC. v. Roy Duke, WIPO Case No. D2003-0806; Pfizer Inc. v. Juan Gonzales, WIPO Case No. D2004-0589).
Given the above facts and following the reasoning in the cases cited above, the Panel finds that the Respondent registered and is using the domain name in bad faith.
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, <easybuyvalium.org> be transferred to the Complainant.
Dated: April 18, 2008