WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hoffmann-La Roche Inc. v. Self Organized, Sebastian Schepis
Case No. D2008-0924
1. The Parties
The Complainant is Hoffmann-La Roche Inc, Lorraine M. Anderson, Trademark Counsel, New Jersey, United States of America, represented by Lathrop & Gage L.C., United States of America.
The Respondent is Self Organized, Sebastian Schepis, San Diego, California, United States of America.
2. The Domain Names and Registrar
The disputed domain names <findvalium.com> and <ordercheapvalium.com> are registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 18, 2008. On June 18, 2008, the Center transmitted by email to eNom a request for registrar verification in connection with the domain names at issue. On June 18, 2008, eNom transmitted by email to the Center its verification response on June 18, 2008 confirming that the Respondent is listed as the registrant and providing the contact details. On June 25, an amendment to the Complaint was transmitted to the Center. 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 the Respondent of the Complaint, and the proceedings commenced on June 27, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was July 17, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 18, 2008.
The Center appointed William F. Hamilton as the sole panelist in this matter on July 23, 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 is an internationally recognized pharmaceutical company. The Complainant's mark VALIUM is protected as a trademark for a pharmaceutical psychotherapeutic agent in a multitude of countries worldwide. The Respondent has registered the contested domain names, <findvalium.com> and <ordercheapvalium.com>. The contested domain names resolve to websites providing links purportedly offering for sale a wide range of pharmaceutical products. The VALIUM mark was registered with the United States Patent and Trademark Office on the Principal Register on December 26, 1961.
The mark VALIUM designates a psychotherapeutic agent, namely, a pharmaceutical product indicated for the treatment and prevention of anxiety. The Complainant's mark VALIUM has been extensively promoted, without limitation, in print advertisement in medical journals, promotional materials, packaging, medical informational materials, television advertising, and direct mailings. The Complainant's sales of the VALIUM pharmaceutical product have exceeded hundreds of millions of dollars in the United States of America since 1961.
The disputed domain names <findvalium.com> and <ordercheapvalium.com> were registered on December 27, 2007.
5. Parties' Contentions
The Complainant contends that the Respondent has incorporated the Complainant's registered VALIUM mark to attract visitors to its sites in an effort to sell various pharmaceutical products. The Complainant contends that its well-known mark VALIUM® has been improperly deployed in a domain name to attract visitors for commercial purposes. See, e.g., Roche Products Inc. v. Veronica Keenan / Buy-zoloft.info, WIPO Case No. D2008-0681 (addressing the domain name of <buying-valium-online.com>).
The Respondent did not file a response or otherwise reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The contested domain names make little effort to conceal or mask the incorporation of the well-known VALIUM mark. The mere addition of the words “find” and “ordercheap” prior to the well-known the mark VALIUM does little to avoid the conclusion that the contested domain names are confusingly similar to the Complainant's VALIUM mark. Hoffmann-LaRoche AG v. Bobik Marley, WIPO Case No. D2007-0694 (transfer of <buy-valium-a.info>, <buy-valium1.info>, and <cheap-valium-a.info>). See also, Sanofi-aventis v. After Hours Hosting/Brett Banta, WIPO Case No. D2006-0469 (transferring <find-acomplia.com>); Time Warner Entertainment Company, L.P. v. HarperStephens, WIPO Case No. D2000-1254 (transferring <findharrypotter.com>); Hoffmann-La Roche Inc. v. US Online Pharmacies, WIPO Case No. D2006-0348 (transferring <buycheaptamiflu.com>); Lilly ICOS LLC v. WhoisGuard Protected, WIPO Case No. D2005-0478 (transferring <buycheapcialis.biz>); Lilly ICOS LLC v. Lei Lu, WIPO Case No. D2005-0436 (transferring <buycheapcialis.net>).
“Numerous [UDRP] 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 names are 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'.” J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23:50 (4th ed. 1998). See America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004 (citing Sporty's Farm L.L.C. v. Sportsman's Market, Inc., 202 F. 3d 489, 497-98 (2d. Cir. 2000)).
The addition of a generic word to a trademark may not by itself avoid a determination that the contested domain name is confusingly similar. “The fact that a domain name wholly incorporates a Complainant's trademark is sufficient to establish identity or confusing similarity for the purpose of the Policy, despite the addition of other words to such marks.” Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. The addition of a generic term does not serve to distinguish the domain name from the trademark, but may reinforce the association of the Complainant's trademark with a domain name. Viacom International Inc. v. Frank F. Jackson and Nancy Miller, WIPO Case No. D2003-0755; Caterpillar Inc. v. Roam the Planet Ltd., WIPO Case No. D2000-0275; Société Air France v. RBlue, WIPO Case No. D2005-0290. See generally, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, 1.1.
Accordingly, the Panel finds the domain names are confusingly similar to a mark in which the Complainant has rights.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out in particular, but without limitation, three circumstances which, if proved by the Respondent, shall be evidence of the Respondent's rights to or legitimate interests in the domain name for the purpose of paragraph 4(a)(ii), namely:
(i) before any notice of the dispute to the Respondent, the Respondent's use of, or demonstrable preparation to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has not provided any explanation for the use of the Complainant's mark VALIUM in the domain names. The Complainant has specifically alleged that the Respondent's use is not authorized and that the Respondent has never been a licensee of the Complainant. The Respondent's websites are not criticism sites or websites designed to provide merely informational content with no commercial purpose. There is no evidence that the Respondent is making a legitimate non-commercial or fair use of the disputed domain names without intent for commercial gain. See the Policy, paragraph 4(c)(iii).
Accordingly, the Complainant has established that the Respondent has no rights or legitimate interests in respesct of the domain names.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith, namely:
(i) circumstances indicating that Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product.
The Complainant must establish that the domain names were registered in bad faith and continues to be used in bad faith. Again, the Respondent has provided no explanation as to why the contested domain names were chosen. The Respondent is clearly aware of the VALIUM mark. “Valium” is not a natural language word. Indeed, the apparent commercial purpose of the <findvalium.com> and <ordercheapvalium.com sites are to promote the sale of VALIUM and other pharmaceutical products. Moreover, the Respondent has supplied false contact information which, in itself, is additional evidence of bad faith. See Oxygen Media LLC v. Primary Source, WIPO Case No. D2000-0362. The Complainant has thus established that the contested domain names were registered and are being used in bad faith. Sanofi-aventis, Avnetis Pharmaceutical Holdings, Inc. v. Babak Azizzadeh, WIPO Case No. D2007-1727.
Accordingly, the Panel finds the contested domain names were registered and are 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 names <findvalium.com> and <ordercheapvalium.com> be transferred to the Complainant.
William F. Hamilton
Date: August 6, 2008