WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Roche Products Inc. v. Kristofer Hogg
Case No. D2008-1120
1 The Parties
The Complainant is Roche Products Inc., a corporation duly organized under the laws if Panama, with offices in Hamilton, Bermuda, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, represented by Lathrop & Gage L.C., New York, United States of America.
Respondent is Kristofer Hogg, New York, United States of America.
2. The Domain Name and Registrar
The disputed domain name <valiumrx.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 23, 2008. On July 24, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain name at issue. On July 24, 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 the Respondent of the Complaint, and the proceedings commenced on July 29, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was August 18, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 19, 2008.
The Center appointed Kiyoshi I. Tsuru as the sole panelist in this matter on August 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
Complainant is the holder, amongst others, of the following trademark registrations:
DATE OF REGISTRATION
Complainant is also owner of the domain name <valium.com>.
The disputed domain name <valiumrx.com> was registered on January 22, 2008.
5. Parties’ Contentions
Complainant argues the following:
I. Identical or Confusingly Similar
- That Complainant is one of the leading manufacturers or pharmaceutical and diagnostic products in the world.
- That Complainant’s mark VALIUM is a protected trademark for a pharmaceutical psychotherapeutic agent in a multitude of countries worldwide.
- That the domain name <valiumrx.com> contains Complainant’s entire VALIUM trademark.
- That Respondent’s registration and use of the disputed domain name creates a strong likelihood of confusion as to source, sponsorship, association or endorsement of the Respondent’s website associated with its domain name <valiumrx.com>.
- That Complainant sent a letter to Respondent via Certified Mail Return Receipt Requested and by e-mail, advising Respondent that the registration of the disputed domain name infringed Complainant’s trademark rights and requested that Respondent transfer the disputed domain name to Complainant.
- That numerous 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 at hand.
- That the descriptive language added to the domain name, namely, “rx” does not prevent the likelihood of confusion in this case (and cites America Online, Inc v. Anson Chan, WIPO Case No. D2001-0004 and Sporty´s Farm L.L.C. v. Sportman’s Market, Inc., 202 F. 3d 489, 497-98 (2d. Cir. 2000)).
- That Respondent uses without authorization Complainant’s VALIUM trademark in its domain name <www.valiumrx.com>.
II. Respondent has no Rights or Legitimate Interests in Domain Name
- That Respondent has no rights or legitimate interests in the domain name <valiumrx.com>.
- That “valium” is not a word and has no valid use other than in connection with Complainant’s trademark.
- That Complainant has not authorized Respondent to use its trademark VALIUM or to incorporate the trademark into any domain name or trade name.
- That it is clear that neither Respondent nor its website have been commonly known by the domain name <valiumrx.com>.
- That Respondent’s use of the disputed domain name is purely disreputable.
- That Respondent’s domain name <valiumrx.com> use Complainant’s federally registered trademark VALIUM as a part of its trade name “www.valiumrx.com” through which Internet users who key in the disputed domain name <valiumrx.com> in an Internet URL address box are directed to various websites including “www.buymedsquick.com”, which is not affiliated with or sponsored by Complainant, on which an identical customer group is offered Valium as well as a competitive diazepam product online for purchase, all to the further confusion of purchasers and the detriment of Complainant.
- That by Respondent’s use and registration of the disputed domain name, it seeks to capitalize on the reputation associated with Complainant’s VALIUM trademark.
- That the operator of the unrelated website to which the disputed domain name resolves, has no affiliation or connection whatsoever with Complainant.
- That sales of a certain Valium product as well as a competitor’s diazepam product through a domain name containing Complainant’s mark VALIUM in its entirety, to an identical customer group without permission from Complainant for commercial gain are clear indications of bad faith.
- That if Respondent’s acts of unfair competition continue, they may cause very significant harm, namely damage to Complainant’s reputation, and negative consequences to those consumers taking the VALIUM brand or generic diazepam psychotherapeutic agent medication when it is not appropriate for them (and cites Justerini & Brooks Limited v. Juan Colmenar Rueda as Registrant “Colmenar”, aka “jokolm”/“JCRo co”. WIPO Case No. D2000-1308).
- That Respondent’s appropriation and use of Complainant’s famous trademark is a clear attempt to create and benefit from consumer confusion regarding the association between Complainant’s bona fide business and Respondent’s potentially health damaging activities.
- That the disputed domain name is being used to promote products of Complainant’s competitors, and links to online pharmacies.
- That Respondent’s use of the disputed domain name demonstrates Respondent’s lack of a legitimate non commercial interest in, or fair use of, the domain name (and cites Hoffmann-La Roche Inc. v. Onlinetamiflu.com, WIPO Case No. D2007-1806, and Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784).
- That the Panel is free to infer that Respondent is likely receiving some pecuniary benefit, citing The Bear Stearns Companies, Inc v. Darryl Pope, WIPO Case No. D2007-0593, COMSAT Corporation v. Ronald Isaacs, WIPO Case No. D2004-1082, Fat Face Holdings, Ltd. V. Belize Domain WHOIS Service Ltd., WIPO Case No. D2007-0626 and Sanofi-Aventis v. Montanya ILtd, WIPO Case No. D2006-1079.
- That Respondent’s use and incorporation of Complainant’s famous trademark VALIUM in the disputed domain name is evidence of Respondent’s intent to trade upon the reputation of Complainant’s VALIUM trademark. (and cites Madonna Ciccone, p/k/a Madonna v. Dan Parisi, and “Madonna.com”, WIPO Case No. D2000-0847).
- That a complete lack of rights or legitimate interests by Respondent clearly shows that the domain name has been registered and is used in bad faith.
- That Respondent’s commercial activities undertaken through use of the domain name are neither fair use nor bona fide use.
- That the unauthorized appropriation of another’s trademark in a domain name and the commercial use of the corresponding website cannot confer rights or legitimate interests upon Respondent (and cites America Online, Inc. v. Xianfeng Fu, WIPO Case No. D2000-1374, Hoffmann-La Roche Inc. v. Aneko Bohner, WIPO Case No. D2006-0629 and Hoffmann-La Roche Inc. v. Samuel Teodorek, WIPO Case No. D2007-1814).
- That Respondent’s use of the disputed domain name cannot be considered bona fide (citing AltaVista Company v. James A. Maggs, NAF Case No. FA95545).
- That Respondent’s unauthorized use of the disputed domain name to solicit sales of a certain Valium product and a generic competitive product to an identical customer group without a license or permission by using the trade name “www.valiumrx.com” on its website is not a bona fide offering of goods and services (and cites G.D. Searle & Co. v. Entertainment Hosting Services, Inc., NAF Case No. FA110783).
- That there is no evidence showing that Respondent is making a legitimate non-commercial or fair use of the disputed domain name without intent for commercial gain.
- That Respondent is trading on Complainant’s goodwill in its famous VALIUM trademark and is using the disputed domain name <valiumrx.com> and trade name, “www.valiumrx.com,” to sell a Valium product as well as competitors’ pharmaceutical products including a competitive generic product to an identical customer group without permission or license (and cites G.D. Searle & Co. v. Mahoney, NAF Case No. FA112559).
- That Respondent has no legitimate interest in the disputed domain name containing Complainant’s famous mark VALIUM, is in no way connected with Complainant, and is trading on Complainant’s famous mark VALIUM for commercial gain.
III. Respondent Registered And Is Using The Domain Name In Bad Faith
- That Respondent’s true purpose in registering the disputed domain name which incorporates Complainant’s VALIUM mark in its entirety is to capitalize on the reputation of Complainant’s VALIUM mark by diverting Internet users seeking Complainant's web site to Respondent’s own web site which uses the VALIUM mark in its trade name and domain name to solicit orders for Complainant’s product and diazepam products without any permission from Complainant the trademark owner.
- That Respondent’s bad faith is clearly evident because “valiumrx” is not a word.
- That Complainant’s mark VALIUM is an invented and coined famous mark that has an extremely strong worldwide reputation.
- That there exists no relationship whatsoever between Respondent and Complainant, and Complainant has not given Respondent permission to use its famous mark VALIUM in a domain name or in a trade name or to use it in any manner on Respondent’s website to sell any Valium product or any competitor’s diazepam or other pharmaceutical product.
- That under these circumstances, the only reasonable conclusion is that Respondent was aware of the VALIUM trademark, and seeks to divert Internet users to a website for its own commercial gain, all to the confusion of the public and detriment of Complainant.
- That by operating the web site located at <valiumrx.com>, Respondent has intentionally attempted to attract for financial gain Internet users to Respondent’s web site by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s web site or the goods sold on or through the Respondent’s web site (citing State Fair of Texas v. Granbury.com, NAF Case No. FA95288).
- That the unauthorized use of Complainant’s mark suggests opportunistic bad faith (and cites Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163).
- That the use of the <valiumrx.com> domain name to promote sales of Complainant’s preparation and also to promote competing and unrelated products demonstrates bad faith use (and cites Hoffmann-La Roche Inc. v. Samuel Teodorek, WIPO Case No. D2007-1814, citing Pfizer Inc. v. jg a/k/a/ Josh Green, WIPO Case No. D2004-0784 (citing Google, Inc. v. wwwgoogle.com and Jimmy Siavesh Behain, WIPO Case No. D2000-1240; Casio Keisanki Kabushiki Kaisha (Casio Computer Co., Ltd.) v. Jonchan Kim, WIPO Case No. D2003-0400)
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
In accordance with the Policy, paragraph 4(a), Complainant must prove that:
(i) the domain name in question is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
In the administrative proceeding, Complainant must prove that each three of these elements are present.
As Respondent has failed to submit a Response to the Complaint, the Panel may choose to accept as true all of the reasonable allegations of the Complaint (Encyclopaedia Britannica, Inc. v. null John Zuccarini, Country Walk, WIPO Case No. D2002-0487; Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
A. Identical or Confusingly Similar
Complainant’s trademark VALIUM is confusingly similar to the domain name <valiumrx.com>. It is entirely incorporated in said domain name. The addition of the words “RX” does not confer a distinctive character to the disputed domain name (see America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004; see also, Mutatis Mutandis, MoneyGram Payment Systems Inc. v. Elizabeth Muriel Hernández, WIPO Case No. D2006-1506, Princess International Sales and Service Limited and Princess Yachts International PLC v. Lambert and Turner/Lambert Turner Marine, WIPO Case No. D2002-0419 and America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713).
The addition of the generic top-level domain “.com” is immaterial for purposes of the Policy. To carry into effect the similarity analysis, a panel must not take into account the generic top-level domain (gTLD) “.com”, because such gTLD has no legal significance. See Ahmanson Land Company v. Vince Curtis, WIPO Case No. D2000-0859 (citing in turn Monty and Pat Roberts, Inc. v. J. Bartell, WIPO Case No. D2000-0300, J.P. Morgan & Co., Incorporated and Morgan Guaranty Trust Company of New York v. Resource Marketing, WIPO Case No. D2000-0035; see also Pomellato S.p.A. v. Richard Tonetti, WIPO Case No. D2000-0493, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429 and Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409).
The first requirement of the Policy has been met.
B. Rights or Legitimate Interests
The following are examples of circumstances where a respondent may have rights or legitimate interests in a contested domain name:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.” (Policy, paragraph 4(c)).
Complainant’s trademark VALIUM is arbitrary. According to Complainant’s arguments, which have not been disputed by Respondent, this trademark was created by the former. Complainant’s trademark is well-known. In similar circumstances, panels acting under the Policy have held that registration of a domain name incorporating another’s well known mark does not confer any rights or legitimate interests in the domain name to respondent, but rather constitutes bad faith under paragraph 4(c) of the Policy (see Justerini & Brooks Limited v. Juan Colmenar Rueda as Registrant "Colmenar", aka "jokolm"/"JCRco., WIPO Case No. D2000-1308; see also, Mutatis Mutandis, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Medisite S.A.R.L. v. Intellisolve Limited, WIPO Case No. D2000-0179 and V&S Vin & Sprit Aktiebolag v Tyler Kownacki, NAF Case No. 95079).
Respondent has not been granted any authorization to register the disputed domain name (see Société Air France v. Bing G Glu, WIPO Case No. D2006-0834).
The record contains no evidence showing that Respondent has been commonly known by the disputed domain name.
The uncontested evidence submitted by Complainant shows that the website to which the contested domain name resolves, contains links related to the sale of pharmaceutical products, some of which compete with those of Complainant, such as DIAZEPAM. This kind of use cannot be considered as legitimate or fair. Respondent’s conduct generates a risk of confusion regarding the existence of an apparent association, origin or sponsorship of Complainant, in connection to the domain name, website, or products and services of Respondent (see, mutatis mutandis, Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946).
The evidence clearly shows that this use is commercial, and that it constitutes intent for commercial gain to misleadingly divert consumers (see Hoffmann-La Roche Inc. v. Onlinetamiflu.com, WIPO Case No. D2007-1806, citing in turn Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784, The Bear Stearns Companies Inc. v. Darryl Pope, WIPO Case No. D2007-0593, citing COMSAT Corporation v. Ronald Isaacs, WIPO Case No. D2004-1082), Fat Face Holdings Ltd. v. Belize Domain WHOIS Service Ltd., WIPO Case No. D2007-0626, and Sanofi-aventis v. Montanya ILtd., WIPO Case No. D2006-1079.
The second requirement of the Policy has been met.
C. Registered and Used in Bad Faith
According to paragraph 4(b) of the Policy, the following circumstances shall be evidence of registration and use in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 website or location or of a product or service on your website or location.”
Registration of a well-known trademark constitutes bad faith for purposes of paragraph 4(b) of the Policy (see, mutatis mutandis, Encyclopaedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party, WIPO Case No. D2000-0330; Inter-IKEA Systems B.V v. Technology Education Center, WIPO Case No. D2000-0522; Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489).
According to the record, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s trademark VALIUM. This conduct falls within the scope of paragraph 4(b)(iv) of the Policy (see Hewlett-Packard Company v. NA, NAF Case No. FA154141, Savin Corporation v. Cal Toner c/o Domain Manager, NAF Case No. 230934, and State Fair of Texas v. Granbury.com, NAF Case No. FA95288).
Respondent’s use of the disputed domain name to offer pharmaceutical products that compete with Complainant’s product cannot be considered a bona fide offering of goods under the Policy (see G.D. Searle & Co. v. Entertainment Hosting Services, Inc., NAF Case No. FA110783).
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 <valiumrx.com> be transferred to Complainant.
Kiyoshi I. Tsuru
Dated: September 8, 2008