WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Roche Products Inc. v. Ashley Moonan
Case No. D2008-0917
1. The Parties
Complainant is Roche Products Inc., Nutley, New Jersey, United States of America, represented by Lathrop & Gage L.C., United States of America.
Respondent is Ashley Moonan, Sunset Beach, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <freevalium.com> is registered with GoDaddy.com, Inc..
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 17, 2008. On June 17, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain name at issue. On June 17, 2008, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on June 23, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was July 13, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 14, 2008.
The Center appointed Paul E. Mason as the sole panelist in this matter on July 18, 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
Complainant is a United States subsidiary of the Swiss pharmaceutical company F. Hoffmann-LaRoche AG. Complainant and its affiliated companies, is one of the major pharmaceutical products manufacturers in the world. The trademark VALIUM, which belongs to the parent company and its affiliates, has been registered in a large number of countries. It is a trademark for a pharmaceutical psychotherapeutic drug. In the United States, this trademark has been in use since 1961 and has a related design trademark registered with the United States Patent and Trademark Office in 1984.
5. Parties’ Contentions
On the first UDRP element – confusing similarity of Respondent’s domain name to the Complainant’s trademark – Complainant points out that the domain name incorporates its trademark in its entirety. Adding a prefix does not lessen the confusion caused to web visitors and consumers, especially because of the mark’s worldwide fame and celebrity.
On the second UDRP element – legitimate rights or interests of Respondent in the domain name – Complainant asserts that it and its affiliate companies have the exclusive rights to the VALIUM trademark, and have not licensed or otherwise authorized Respondent to use it.
On the third UDRP element – bad faith registration and bad faith use of the domain name – Complainant claims that Respondent must have registered the domain name in bad faith because “freevalium” itself is not a word, and the word “valium” is so distinctive and notorious that it would be unthinkable to assume that Respondent did not know of its use as a commercial trademark when registering the domain name.
Complainant contends that Respondent has also used the domain name in bad faith by having the related website “parked” by the Registrar but containing links to several other websites such as “www.buymedsquick.com” which offer a generic product equivalent to valium for sale using an online pharmacy system. It is presumed that Respondent has been receiving per-click fees for this referral service. To prove this, Complainant has supplied snapshots of these websites as Exhibits 8 and 9 to the Complaint. Complainant then cites a series of WIPO UDRP decisions to the effect that offering such competing lines of sale constitute bad faith use of the domain name and cannot constitute a bona fide offering of goods and services using the domain name.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds the domain name to be confusingly similar to Complainant’s trademark.
Adding the prefix “free” does not prevent confusion, it simply implies some kind of give-away of the product online, which is not the case.
B. Rights or Legitimate Interests
Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the domain name. Respondent has not rebutted Complainant’s contentions.
The Panel has seen no evidence of any right or legitimate interest by Respondent in the domain name.
C. Registered and Used in Bad Faith
The Panel agrees that the domain name was registered in bad faith. The prefix “free” in front of “valium” buttresses the point. It shows a certain amount of bad faith by Respondent in trying to lure customers by dangling a “free” sign in front of web visitors.
The Panel also finds that the domain name was used in bad faith, by leading to one or more websites advertising competing products to those of Complainant for sale. This is the essence of bad faith use of a domain name as described in the UDRP and a myriad of UDRP cases.
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 <freevalium.com> be transferred to Complainant.
Paul E. Mason
Dated: July 30, 2008