WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Roche Products Inc. v. T T
Case No. D2008-0668
1. The Parties
The Complainant is Roche Products Inc. of Hamilton, Bermuda, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, represented by Lathrop & Gage L.C., United States of America.
The Respondent is TT of Maine, United States of America.
2. The Domain Name and Registrar
The disputed domain name <valiumoffer.com> (the “Domain Name”) is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 29, 2008. On April 29, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Domain Name. On April 29, 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”).
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 May 2, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was May 22, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 25, 2008.
The Center appointed Ian Lowe as the sole panelist in this matter on June 3, 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 and its affiliate companies comprise one of the leading manufacturers of pharmaceutical and diagnostic products in the world. VALIUM is registered as a trademark in numerous countries worldwide.
The Domain Name appears, from the Registrar-confirmed WhoIs data, to have been created on April 16, 2007.
5. Parties’ Contentions
A summary of the contentions made by the Complainant is as follows:
a) The Complainant’s trademark VALIUM is registered in respect of a pharmaceutical psychotherapeutic agent in a multitude of countries worldwide including the United States of America (“United States”) under Reg. No. 725,548. It has been in use since 1961.
b) The mark VALIUM has been extensively promoted in print advertisement in medical journals, promotional materials, packaging, medical informational materials, television advertising and direct mailings. Sales of the VALIUM pharmaceutical preparation have exceeded hundreds of millions of dollars in the United States since 1961.
c) Advertising and promotion for Roche’s VALIUM psychotherapeutic agent using the mark VALIUM has been widely circulated by the Complainant in the United States. The VALIUM product has acquired fame and celebrity, symbolizing the goodwill that Roche has created in the United States and throughout the world. As a result, the Domain Name clearly alludes to the Complainant.
d) The Domain Name contains Roche’s entire VALIUM trademark. Numerous ICANN Panel decisions have established that the addition of words or letters to a mark used in a domain name does not alter the fact that the domain name is confusingly similar to the mark. 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. Thus, the Domain Name is identical or confusingly similar to Complainant’s VALIUM trademark within the meaning of the Policy, paragraph 4(a)(i).
e) The Respondent has no rights or legitimate interests in the name “valiumoffer.com”. “Valium” is not a word and has no valid use other than in connection with Complainant’s trademark. Complainant has not authorized the Respondent to use its trademark VALIUM or to incorporate the trademark into any domain name or trade name. In fact, Respondent’s use of the disputed domain name and the infringing trade name, “valiumoffer.com”, indicates that the Domain Name and trade name are being used because of the goodwill created by Complainant in the VALIUM trademark.
g) The Respondent’s use of the Domain Name is purely disreputable. The Domain Name resolves to a web page that directs Internet users to various web sites including “www.bestmedvalues.com” which offers VALIUM, as well as a competitive generic diazepam product, online for purchase. This causes confusion to purchasers and detriment to Roche, the trademark owner.
h) The Respondent is not using the Domain Name in connection with a bona fide offering of goods or services. Respondent is using the Domain Name to divert Internet users seeking the Complainant’s web site or the VALIUM drug to an unrelated web site which provides a “prescription only” psychotherapeutic pharmaceutical product and a competitive generic version to the public.
i) The Respondent’s bad faith in registering and using the domain name is demonstrated by numerous facts. The Respondent’s true purpose in registering the Domain Name, which incorporates the Complainant’s VALIUM mark in its entirety, is to capitalize on the reputation of the Complainant’s VALIUM mark. It seeks to divert Internet users seeking the Complainant’s web site to the Respondent’s own web site which uses the VALIUM mark in its trade name and domain name to solicit orders for the Complainant’s product and various competitive diazepam products without any permission from Roche, the trademark owner.
j) The Respondent has supplied false contact information which in itself is evidence of bad faith.
k) Under these circumstances, the only reasonable conclusion is that Respondent was aware of the VALIUM trademark, and seeks to divert Internet users to web sites for its own commercial gain, all to the confusion of the public and detriment of Roche, the trademark owner.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name 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 interest in respect of the Domain Name; and
(iii) the Domain Name has been registered in bad faith and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant makes unchallenged submissions that VALIUM (the “Mark”) is protected by numerous trademark registrations around the world and points to the widespread global use of the trademark over many years by it and by its parent and affiliate companies. The only evidence of trademark registrations it produces, however, is, first, an undated entry in the United States Patent Office of the registration of VALIUM in Class 18 by Hoffman-La Roche Inc. on December 26, 1961. Second, it produces evidence that the Complainant has a United States design trademark registration No. 1,314,271 in respect of a stylized letter “V” punched through the centre of a tablet filed on Jan 15, 1985 that it has used since 1984.
The evidence submitted by the Complainant as to its rights in the trademark VALIUM is limited and not wholly satisfactory. Nevertheless, the uncontroverted evidence of the Complainant is that its parent or affiliate companies own trademark registrations in respect of the Mark and that the Complainant is entitled to use the name in the United States in respect of the Complainant’s group product, Valium. The Panel does therefore find that the Complainant has rights to the trademark VALIUM for the purposes of the Policy.
The Domain Name comprises the entirety of the mark VALIUM together with the non-distinctive element “offer”. Accordingly, the Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Respondent has not replied to the Complainant’s contentions and has not therefore displaced the assertion on the part of the Complainant that the Respondent does not and cannot have any rights or legitimate interests in the Domain Name. The Domain Name was registered over 40 years after the Mark had been registered and become world-famous in the pharmaceuticals field. The Complainant group has exclusive rights for VALIUM and no licence, permission, authorization or consent was granted to use VALIUM in the Domain Name. The Panel finds that the Respondent has no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
In view of the notoriety of the Mark, it is inconceivable that the Respondent was unaware of the Complainant’s rights in the Mark at the time the Domain Name was registered. The unchallenged evidence of the Complainant is that the Domain name is being used to take advantage of the notoriety of the VALIUM mark to attract Internet users to the website operated by or on behalf of the Respondent for commercial gain.
As stated in L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623 “such exploitation of the reputation of trademarks to obtain click-through commissions from the diversion of internet users is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous decisions.”
According to the WhoIs record, the name and address of the registrant of the Domain Name is “t t of t, t, Maine 55555, United States of America”. The use by the Respondent of self-evidently false name and address contact details is further evidence of bad faith.
In the circumstances the Panel finds that the Domain Name was registered and is being used 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 <valiumoffer.com> be transferred to the Complainant.
Dated: June 10, 2008