WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

F. Hoffmann-La Roche AG v. Samir Kumar, samirnet - domain names for sale

Case No. D2008-0919

 

1. The Parties

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

Respondent is Samir Kumar, samirnet - domain names for sale, Bangalore, Karnataka, India.

 

2. The Domain Name and Registrar

The disputed domain name <valiumeffort.com> is registered with Gal Communications (CommuniGal) Ltd. d/b/a Galcomm.

 

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 Gal Communications (CommuniGal) Ltd. d/b/a Galcomm a request for registrar verification in connection with the domain name at issue. On June 19, 2008, Gal Communications (CommuniGal) Ltd. d/b/a Galcomm 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 25, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was July 15, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on July 16, 2008.

The Center appointed Roberto Bianchi as the sole panelist in this matter on July 25, 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 following facts and circumstances are uncontested:

- Complainant and its affiliated companies are one of the world's leading groups in the fields of pharmaceuticals and diagnostics, 1operating in more than 100 countries.

- Complainant's mark VALIUM is protected as trademark in many countries worldwide; 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 belonging to the benzodiazepine family.

- The disputed domain name was registered on May 15, 2008.

- The website at the domain name at issue, under a title reading “Valiumeffort”, contains a search engine, and lists several links to pharmacological preparations from competitors of Complainant, such as “Alprazolam”, and other links to products and services unrelated to Complainant.

 

5. Parties' Contentions

A. Complainant

Complainant contends as follows:

- The domain name at issue is confusingly similar to Complainant's mark VALIUM, seeing that it incorporates this mark in its entirety.

- There is no reason why the Respondent should have any right or interest in such domain name. The Complainant has exclusive rights for the VALIUM term, and no license, permission, authorization or consent was granted to use VALIUM in the domain name. Respondent uses the domain name for commercial gain, with the purpose of capitalizing on the fame of Complainant's mark VALIUM. Therefore the domain name in question clearly alludes to Complainant. Respondent's website is a search engine with sponsored links. 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 or services. Rather, the conduct of Respondent serves the purpose of generating revenues from advertised pay-per-click products. Respondent's only reason in registering and using the contested domain name is to benefit from the reputation of the trademark VALIUM and illegitimately trade on its fame for commercial gain.

- Complainant's use and registration of the mark VALIUM predate Respondent's registration of the domain name. The mark VALIUM is well-known and notorious, which increases the likelihood of confusion of the domain name with the mark. 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 at issue is also being used in bad faith. Respondent is intentionally attempting (for commercial purpose) to attract Internet users to its 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 disputed domain name seems to be advertising links to websites promoting and/or offering products and services of third parties, especially in the pharmaceutical field being the business of Complainant. Respondent is therefore 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;

(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

Complainant has satisfactorily proved that it has trademark rights in the VALIUM mark. This mark has been fully incorporated in the domain name, with the only addition of “effort”, a common and generic term in French and English. In coincidence with many other WIPO panels, the Panel finds that the addition of a common and generic term is inapt to distinguish the domain name in dispute from Complainant's mark. See Abbott Laboratories v. United Worldwide Express Co., Ltd., WIPO Case No. D2004-0088 (finding that the addition of a descriptive and/or generic word in the domain name does not sufficiently distinguish it from complainant's mark).

The Panel concludes that the first requirement of the Policy is met.

B. Rights or Legitimate Interests

Complainant contends that it has exclusive rights in the VALIUM mark, and that it did not authorize Respondent to use the mark in the domain name. Complainant also alleges that Respondent is using the domain name for commercial gain in a website advertising links to websites promoting and/or offering products and services of third parties, especially in the pharmaceutical field which is Complainant's business, and that Respondent is illegitimately capitalizing on the VALIUM trademark fame. 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 its own favor. As contended by Complainant, the Panel, while visiting the website at the disputed domain name on August 4, 2008, noticed that the only use of the domain name consisted of a simple web page providing a search engine and links to pharmacological preparations such as “Alprazolam” made by competitors of Complainant, as well as other links to products and services unrelated to Complainant. Respondent appears thus to be unfairly using Complainant's mark for profit. This certainly is no evidence of any rights or legitimate interests in respect of the domain name, as recently found by this same Panel in F. Hoffmann-La Roche AG v. Vladislav Rizhkov, WIPO Case No. D2008-0809 (where another respondent was illegitimately using the VALIUM mark for profit).

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

C. Registered and Used in Bad Faith

Complainant's VALIUM mark is famous. See F. Hoffmann-La Roche AG v. Domain Administration Limited, WIPO Case No. D2008-0626 (finding that the VALIUM trademark is world-famous in the pharmaceuticals field). In fact, VALIUM is so famous a mark for a tranquilizer that it would be inconceivable that Respondent might have registered the mark without knowing of it. As Respondent's website at the disputed domain name displays links to “Alprazolam”, a preparation from a competing manufacturer belonging to the same family of drugs (benzodiazepine), Respondent most likely knew or must have known Complainant's product and mark VALIUM at the time of registering the domain name. In other words, it registered the domain name 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 supra, the web site at the disputed domain name is capitalizing on the fame of Complainant's world famous or widely known VALIUM mark, and of preparations, such as “Alprazolam”, from competing manufacturers, as well as other sources of products and services totally unrelated to Complainant, 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.”).

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 <valiumeffort.com> be transferred to Complainant.


Roberto Bianchi
Sole Panelist

Date: August 8, 2008