WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

F. Hoffmann-La Roche AG v. Vladislav Rizhkov

Case No. D2008-0809

 

1. The Parties

Complainant is F. Hoffmann-La Roche AG, Basel, Switzerland, represented internally.

Respondent is Vladislav Rizhkov, Ontario, Canada.

 

2. The Domain Name and Registrar

The disputed domain name <buyxanaxvaliumonlineflorida.com> is registered with EstDomains, Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 22, 2008. On May 23, 2008, the Center transmitted by email to EstDomains, Inc. a request for registrar verification in connection with the domain name at issue. On May 29, 2008, EstDomains, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on June 2, 2008. 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 Respondent of the Complaint, and the proceedings commenced on June 3, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was June 23, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 24, 2008.

The Center appointed Roberto Bianchi as the sole panelist in this matter on July 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 followings facts are not contested:

- Complainant and its affiliated companies are one of the world’s leading healthcare groups in the fields of pharmaceuticals and diagnostics. The group has global operations in more than 100 countries.

- Complainant holds registrations for the mark VALIUM in over one hundred countries on a worldwide basis. An example is International Registration No. R250784. Priority date for the mark VALIUM is October 20, 1961.

- The mark VALIUM designates a sedative and anxiolytic drug, which enabled the Complainant to build a worldwide reputation in psychotropic medications.

- The domain name at issue was registered on May 9, 2008.

- At the disputed domain name Respondent runs a website for advertising links to websites promoting and offering products and services of third parties, especially in Complainant’s field of business, the pharmaceutical industry.

 

5. Parties’ Contentions

A. Complainant

Complainant contends the following:

- The domain name of Respondent is confusingly similar to Complainant’s mark seeing that it incorporates this mark in its entirety. The addition of the descriptive words “buy” and “online” and the third party’s trademark “xanax” does not sufficiently distinguish the domain name from Complainant’s mark: it may suggest that Respondent’s website is a location where a consumer may buy the Valium product. The mark VALIUM is well-known and notorious. The notoriety will increase the likelihood of confusion.

- The Respondent has no rights or legitimate interests in respect of the domain name. Complainant has exclusive rights for VALIUM and no license or permission or authorization or consent was granted to use VALIUM in the domain name. Respondent uses the domain name for commercial gain and with the purpose of capitalizing on the fame of Complainant’s mark VALIUM. Therefore the domain name in question clearly alludes to Complainant.

- The Respondent’s website is a search engine composed of sponsored links, especially links redirecting Internet users to pharmacies on-line. According to Sigikid H. Scharrer & Koch GmbH & Co. KG, MyBear Marketing-und Vertriebs GmbH, Mr. Thomas Dufner v. Bestinf, WIPO Case No. D2004-0990, the sole diversion of Internet traffic by Respondent to other, unrelated websites, does not represent a use of the domain name in connection with a bona fide offering of goods and services, but serves the purpose of generating revenues, e.g. from advertised pay-per-click products. And, according to Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784, a registrant has no legitimate interest in a domain name that is similar to a pharmaceutical manufacturer’s mark and that is being used to direct consumers to an on-line pharmacy.

- The domain name was registered in bad faith since at the time of the registration Respondent had knowledge of Complainant’s well-known product/mark VALIUM. The domain name is also being used in bad faith. Respondent is intentionally attempting (for commercial purpose) to attract Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s well-known mark as to the source, affiliation and endorsement of Respondent’s website or of the products or services posted on or linked to Respondent’s website. The use of the domain name seems to be advertising links to websites promoting and/or offering third-party products and services, especially in the pharmaceutical field being the business of Complainant. Respondent, by using the disputed domain name, is intentionally misleading consumers, and is confusing them so as to attract them to other websites, making them believe that the websites behind those links are associated or recommended by Complainant. As a result, Respondent may generate unjustified revenues and therefore is illegitimately capitalizing on the VALIUM trademark fame.

B. Respondent

Respondent did not reply to Complainant’s contentions, and is in default.

 

6. Discussion and Findings

UDRP Panels must decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any applicable rules and principles of law. Under paragraph 4(a) of the Policy, a complainant must establish each of the following elements:

(i) The disputed 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 disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel is satisfied that Complainant has trademark rights in the term “Valium”.

The domain name in dispute fully incorporates the widely-known mark VALIUM, adding the common terms “buy”, “online” and “Florida”, and “Xanax”, a mark owned by a third party. The Panel believes that these additions are inapt to distinguish the domain name at issue from Complainant’s mark. See Sanofi-aventis v. Mircea Taralunga, WIPO Case No. D2008-0460 (finding that descriptive words, such as “buy” or “treatment”, do not detract from the confusing similarity between the complainant’s trademark and the disputed domain names); see also Repsol YPF S.A. v. Talk2middle Top Domain Reg, WIPO Case No. D2008-0556 (finding that the domain name was confusingly similar to the trade mark, differing only with regard to a descriptive element, the word “online”); see further Advance Magazine Publishers Inc. v. Vanilla Limited/ Domain Finance Ltd./ Minakumari Periasany, WIPO Case No. D2004-1068 (holding that the addition of a geographic modifier such as in <floridavogue.com> does not in any way remove or dilute the likely confusion that arises from the registration of the domain name). Furthermore, the inclusion of the term “Xanax”, a third party mark, in the domain name only reinforces the impression that the domain name in dispute aims at Complainant’s VALIUM mark, since both Valium and Xanax are widely-known tranquilizers produced by competing manufacturers.

Accordingly, the Panel finds that the domain name in dispute is confusingly similar to the mark VALIUM, in which Complainant has rights.

B. Rights or Legitimate Interests

Complainant contends that it has exclusive rights for the VALIUM mark and that it did not authorize Respondent to use the mark in the domain name. Complainant alleges that the domain name alludes to Complainant’s mark and that Respondent is using the domain name for commercial gain in a website with a search engine composed of sponsored links, redirecting Internet users to pharmacies on-line with the purpose of capitalizing on the fame of VALIUM mark. In absence of any evidence in favor of Respondent, these contentions of Complainant make out a prima facie case that Respondent lacks rights or legitimate interests in respect of the domain name at issue. Once a prima facie case is made, a respondent carries the burden of demonstrating rights or legitimate interests in the domain name. Otherwise, a complainant is deemed to have satisfied the Policy paragraph 4(a)(ii). See “WIPO Overview of WIPO Panel Views” at http://www.wipo.int/amc/en/domains/search/overview/index.html.

Respondent is in default, and has not provided any evidence in his own favor. As shown by Complainant, the only use of the domain name by Respondent consists of a website showing a search engine, and a list of links offering for sale the Valium, Xanax, Alprazolam, Ambien, “generic Xanax”, Viagra, Lorcet and Soma preparations. The website at the domain name at issue also includes a list of “related searches” relating to non-pharmaceutical products and services. Thus, Respondent is unfairly using Complainant’s mark for profit, which certainly is no evidence of any rights or legitimate interests in respect of the domain name.

The Panel finds that the second element of the Policy is met.

C. Registered and Used in Bad Faith

Since the content of the web site corresponding to the domain name at issue refers to or promotes sales of either the genuine Valium preparation or other tranquilizers, genuine or not, Respondent, without doubt, knew or must have known of the VALIUM widely-known mark. Accordingly, the Panel finds that Respondent in all likelihood registered the domain names in dispute with Complainant’s mark in mind, i.e. in bad faith. See Nike, Inc. v. B. B. de Boer, WIPO Case No. D2000-1397 (concluding that the domain name was registered in bad faith since the complainant’s trademark was well-known and it was very unlikely, if not nearly impossible, that the respondent was not aware that it was infringing on the complainant’s trademark rights).

As seen at Section B above, Complainant showed that the web site at the disputed domain name is capitalizing on the fame of Complainant’s VALIUM mark, presumably with the purpose of extracting some income, big or small, via “click-through” or “pay-per-click” systems. This is a circumstance of bad faith registration and use of the domain name pursuant to the Policy paragraph 4(b)(iv) (“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product or service on your web site or location.”).

As seen above, the domain name in dispute also includes the term “Xanax”, a third party mark. This is an additional factor producing confusion to Complainant’s detriment, as Xanax is a widely-known tranquilizer made by a manufacturer competing with Complainant. See Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912 (finding that the fact that the website at the disputed domain name includes links to sites offering competing products as the Complainant aggravates the likelihood of confusion).

While connecting his browser to Respondent’s website on July 24, 2008, the Panel noted that the content of the website as described above had been replaced by a legend stating, “This domain has been blocked”. In the Panel’s opinion, this recent change does not efface the former bad faith use of the domain name, but further reinforces the impression that the domain name continues to be used in bad faith by Respondent.

In sum, the Panel concludes that the third element of the Policy has been met.

 

7. Decision

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 <buyxanaxvaliumonlineflorida.com> be transferred to Complainant, without prejudice to any rights which may be asserted by the third party owner of the mark XANAX.


Roberto Bianchi
Sole Panelist

Dated: July 29, 2008