The Complainant is F. Hoffmann-La Roche AG, of Basel, Switzerland.
The Respondent is Derek Hildenbrand of British Columbia, Canada.
The disputed domain name <valiumpharmacy.com> is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 15, 2009. On January 15, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On January 15, 2009, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the 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” or “UDRP”), 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 January 21, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was February 10, 2009. The Response was filed with the Center on January 27, 2009.
The Center appointed Mr. Nicholas Weston as the sole panelist in this matter on February 2, 2009. 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.
The Complainant operates a pharmaceuticals and diagnostics business with operations in more than 100 countries. The Complainant holds registrations for the trademark VALIUM in a number of countries including Switzerland and (through a subsidiary) in Canada, which it uses to designate a sedative and anxiolytic drug belonging to the benzodiazepine family. The Swiss registration (for pharmaceuticals) has been in effect since 1961. The Canadian registration (for pharmaceutical preparations) has been in effect since 1962.
Respondent registered the domain name <valiumpharmacy.com> (the “Disputed Domain Name”) on December 12, 2008.
The Respondent uses the Disputed Domain Name for “click-through” or “pay-per-click” (“PPC”) landing pages. PPC advertisements display a link when a keyword query with a search engine matches an advertiser's keyword list. PPC advertising is a search engine marketing technique for directing traffic to a landing page containing sponsored links or sponsored advertisements. In this case, when the Disputed Domain Name <valiumpharmacy.com> is typed in, it redirects traffic to a PPC landing page for pharmaceutical medications. On December 22, 2008, the Respondent confirmed by email to the Complainant that “the domain still points to a pharmacy page at parked.com”.
The Complainant cites its trademark registrations of the trademark VALIUM in various countries as prima facie evidence of ownership.
The Complainant submits that the mark VALIUM is well-known and that its rights in that mark predate the Respondent's registration of the Disputed Domain Name <valiumpharmacy.com>. It submits that the Disputed Domain Name is confusingly similar to its trademark, because the Disputed Domain Name incorporates in its entirety the VALIUM trademark (citing Wal-Mart Stores, Inc vs. Kuchora, Kal, WIPO Case No. D2006-0033) and that the similarity is not removed by the addition of the generic term “pharmacy”.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it is misleadingly directing Internet users to a search engine composed of sponsored links in connection with the Complainant's mark and thereby attempting illegitimately to trade “for commercial gain and with the purpose of capitalizing on the fame of the Complainant's mark VALIUM”.
Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to the Policy, paragraphs 4(a)(iii) and 4(b) and the Rules, paragraph 3(b)(ix)(3), as “by using the domain name as a forwarding address to redirect Internet users to a search engine website where links to third parties are displayed, the Respondent is intentionally attempting (for commercial purpose) to attract Internet users to the Respondent's website, by creating a likelihood of confusion with the Complainant's well-known mark as to the source, affiliation and endorsement of the Respondent's website or of the products or services posted on or linked to the Respondent's website”.
The Respondent contends that:
(i) “there are other uses for the domain name”;
(b) (the Respondent) “had no intention of infringing on the VALIUM domain or confusing customers”;
(c) “the (Disputed Domain Name) was registered for different reasons and not used in bad faith”;
(d) “VA” is an abbreviation for the state of Virginia located in the United States of America; and
(e) the word “LIUM” is in common usage as it “has 1.84 million pages listed including “a French language university <www-lium.univ-lemans.fr/>”; a “fiber health company that could easily open a pharmacy under this name: “http://www.cliumfibre.com”; and a “telemarketing company that could be involved in pharmacy related topics http://www.lium.com/;
(f) the words “VA” and “LIUM” “could have many other meanings besides VALIUM”.
(g) the Disputed Domain Name “could easily stand for Virginia Lium Pharmacy which is a legitimate use of the domain name”.
The Respondent continues: “I own many domain names and during this time period had registered 268 domain names (including the disputed domain which I registered for the normal registration fee. I did not purchase this on the second hand market. It was widely available for anyone to register for normal registration fee, if this domain was so valuable to the (Complainant) they should have registered it themselves years ago. Please view Annex 13 and Annex 14 for proof of the domains registered. When I register domains I mainly look for traffic and to do so register and park them to find traffic stats. During this period I do not analyze domain names and make the purchase decision based mostly on traffic. Once I purchase/refund the domains then I go through parked.com and fix the categories/domains/info. In this case the domain started with a V so I had to go through 200+ domains before getting into the domain. Once I received an email from (the Complainant) regarding the domain I immediately began changing the parked settings and forwarded the domain to another domain on an unrelated topic (too busy to dig into the details at that time because of prior commitments, so forwarding the domain to another address was the easiest option). I only planned on using this domain for traffic purposes. Any domain that gets a couple type in traffic per day has value and I chose to capitalise on this value if nobody else was interested in the domain.”
The Respondent further contends: “I own over 500 domains and plan on developing most of them into fully featured websites. However this takes time, so instead of letting the domains sit around I park them to make a small stream of income. There is nothing illegal about parking domains to make money. There are very few domains/websites in this world that do not serve the purpose of making money in some way. Websites/domains are all about making money and profit.”
Under paragraph 4(a) of the Policy, the complainant has the burden of proving the following:
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark VALIUM in Switzerland and in many countries throughout the world. The Panel finds that a subsidiary of the Complainant has rights in the mark VALIUM in Canada pursuant to Canadian Registration No. TMA125811. In any event, the propriety of a domain name registration may be questioned by comparing it to a trademark registered in any country: (see Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358). The Panel finds that the Complainant has rights in the mark VALIUM.
Turning to whether the Disputed Domain Name is identical or confusingly similar to the VALIUM trademark, the Panel observes that the Disputed Domain Name comprises (a) an exact reproduction of the Complainant's trademark VALIUM followed by (b) the word “pharmacy” and (c) the top level domain suffix “.com” all in one continuous domain name.
It is well-established that the top-level designation used as part of a domain name should be disregarded: (see Hoffmann-La Roche Inc. v. Andrew Miller, WIPO Case No. D2008-1345). The relevant comparison to be made is with the second-level portion of the Disputed Domain Name: “valiumpharmacy”.
It is also well-established that where a domain name incorporates a complainant's well-known and distinctive trademark in its entirety, it is confusingly similar to that mark despite the addition of a word such as, in this case, “pharmacy” (or its plural, the word “pharmacies”): (see Wal-Mart Stores, Inc. v. Kuchora, Kal, WIPO Case No. D2006-0033 [cited by the Complainant]; CVS Pharmacy, Inc. and CVS Vanguard, Inc. v. gd, WIPO Case No. D2004-0113; Hoffmann-La Roche Inc. v. Andrew Miller, WIPO Case No. D2008-1345).
The Respondent contends that “there are other uses for the domain name” and that he “had no intention of infringing on (t)he VALIUM domain or confusing customers”. In considering the elements of paragraph 4(a) of the Policy, the contents of a website --which is the direct manifestation of the potential uses of the domain name, and the Respondent's intentions -- are not relevant. In Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698, the panel held that “[t]he use to which the site is put has no bearing upon the issue whether the domain name is confusingly similar to the trademark, because by the time Internet users arrive at the Website, they have already been confused by the similarity between the domain name and the Complainant's mark into thinking they are on their way to the Complainant's Website”. The Disputed Domain Name is therefore confusingly similar to the VALIUM trademark.
Accordingly, the Panel finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
Paragraph 4(c) of the Policy lists the ways that the respondent may demonstrate rights or a legitimate interest in the disputed domain name:
(i) before any notice of the dispute, respondent's use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Policy places the burden on the complainant to establish the absence of respondent's rights or legitimate interest in the disputed domain name. Because of the inherent difficulties in proving a negative, the consensus view is that the complainant need only put forward a prima facie case that the respondent lacks rights or legitimate interests. The evidential burden then shifts to the respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc v. Ringside Collectibles, WIPO Case No. D2000-1306; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.1.)
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it is misleadingly directing Internet users to a search engine composed of sponsored links in connection with the Complainant's mark and thereby attempting illegitimately to trade “for commercial gain and with the purpose of capitalizing on the fame of the Complainant's mark VALIUM”. The Complainant also has not licensed, permitted or authorized the Respondent to use the Complainant's trademark. It refers to Fox News Network, LLC v. Warren Reid, WIPO Case No. D2002-1085 which states that “using the Domain Name to mislead users by diverting them to a search engine does not appear to be use in connection with a bona fide offering of goods or services and therefore legitimate”. The Complainant provided evidence that typing in the Disputed Domain Name diverts traffic to a PPC website for migraine medication.
The Response does not appear to allege the existence of any rights or legitimate interests as per paragraphs 4(c)(i), (ii) or (iii) of the Policy. The Respondent neither contends that he has used the Disputed Domain Name in connection with a bona fide offering of goods and services before notice of the dispute or, alternatively, that he is commonly known by the Disputed Domain Name, or alternatively, that he is making a legitimate non-commercial use of the domain name.
The Respondent submits that the word VALIUM can be parsed into “VA” and “LIUM”, arguing that the letters “VA” stand for “Virginia”, a state in the United States of America (or “U.S.”), and provides some alternative meanings for the letters “LIUM” without advancing any coherent reason for adding to the abbreviation for a US State, a Latin language grammatical declension. In an email to the Complainant dated Monday December 22, 2008 (before notice of the dispute), the Respondent admitted that “the domain still points to a pharmacy page at parked.com”. Relevant to the issue of non-commercial use, the Respondent submits: “instead of letting the domains sit around I park them to make a small stream of income.”
These arguments do not advance the Respondent's case. In the analogous Lilly ICOS LLC v. East Coast Webs, Sean Lowery, WIPO Case No. D2004-1101, the panel stated: “While mere resale of genuine branded products might give rise to a legitimate debate over whether the use of the mark was ‘nominative', any such contention is undermined by Respondent's sale of products directly competing with Complainant's through the same web site. This principle may have particular weight in the pharmaceutical context, where risks to the public may be enhanced by the lack of regulatory safeguards assuring the safety or efficacy of the purported “generic” version of Complainant's CIALIS brand product, thus further undermining any argument (had Respondent made such an argument, which it did not) that it was making a bona fide offering of goods. See Lilly ICOS LLC v. Dan Eccles, WIPO Case No. D2004-0750.”
In Lilly ICOS LLC v. Tudor Burden d/b/a BM Marketing/Burden Marketing, WIPO Case No. D2005-0313, the panel found that “the Respondent is making a non-legitimate commercial use of the disputed domain names that misleadingly diverts consumers (for the reason) because the Respondent was using the infringing domain name to sell prescription drugs, it could be inferred that the Respondent was opportunistically using Complainant's mark in order to attract Internet users to its website.”
The Panel finds for the Complainant on the second element of the Policy.
The third element of the Policy that the complainant must also demonstrate is that the disputed domain name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both.
“b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith, (relevantly):
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 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 evidence that the Respondent registered and has used the Disputed Domain Name in bad faith is overwhelming. The Respondent makes the Complainant's case, stating: “When I register domains I mainly look for traffic and to do so register and park them to find traffic stats. During this period I do not analyze domain names and make the purchase decision based mostly on traffic. Once I purchase/refund the domains then I go through parked.com and fix the categories/domains/info”. The Respondent contends that the words ‘VA' and ‘LIUM' “could have many other meanings besides VALIUM” but does not argue that they are dictionary terms. In an email to the Complainant dated Monday December 22, 2008, the Respondent stated “the domain still points to a pharmacy page at parked.com.” Relevant to the issue of commercial gain, the Respondent submits: “instead of letting the domains sit around I park them to make a small stream of income”. The Respondent continued: “I own many domain names and during this time period had registered 268 domain names. I own over 500 domain names”.
The Respondent does not admit or deny actual knowledge of the Complainant's activities, trademark or its secondary meanings at the time of the registration. Rather, the Respondent admits to willful blindness, claiming that he does not investigate whether or not a domain name he registers is someone's trademark but that he makes the decision to register “based on traffic”. Paragraph 2 of the Policy clearly states: “It is your [domain-name holder's] responsibility to determine whether your domain name registration infringes or violates someone else's rights”. The volume of names registered by the Respondent, and the lack of any good faith attempt to ascertain whether or not he was registering and using someone else's trademark, may well support a finding of bad faith. See Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304; mVisible Technologies Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141.
The trademark VALIUM is so famous a mark for pharmaceuticals that it would be inconceivable that Respondent might have registered the mark without knowing of it. (see F. Hoffmann-La Roche AG v. Samir Kumar, samirnet - domain names for sale, WIPO Case No. D2008-0919; F. Hoffmann-la Roche AG v. Popo, WIPO Case No. D2008-0423; F. Hoffmann-La Roche AG v. TMNET, Anton Gorodov, WIPO Case No. D2008-0995; F. Hoffmann-La Roche AG v. DNS Administrator/Turvill Consultants Ltd-RD, WIPO Case No. D2006-0047; F. Hoffmann-La Roche AG v. George Stiegman WIPO Case No. D2008-1572)
Further, a gap of ten years between registration of a Complainant's trademarks and Respondent's registration of the disputed domain name (containing the trademark) can indicate bad faith: (see Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415). In this case, the Respondent registered the Disputed Domain Name nearly five decades after the Complainant established trademark rights in the VALIUM mark.
In an email to the Complainant dated Monday, December 22, 2008, the Respondent stated “the domain still points to a pharmacy page at parked.com”. In Roche Products Inc. v. Michael Robert, WIPO Case No. D2008-1155 the panelist held that:
“Two conclusions can therefore be drawn about Respondent from its use of Parked.com to host the Disputed Domain Name. First, its conduct is classic domain monetization unconnected with any bona fide supply of goods or services by Respondent. And secondly, it is also in breach of its agreement with Parked.com by use of an “Inappropriate URL” within the meaning of section 1(d) of those Terms of Service.
Basically, Respondent sits passively collecting click-through revenue generated solely from Complainant's goodwill and Internet users' inaccurate guessing of the correct domain name associated with Complainant's VALIUM branded pills. Given the obvious danger of consumers being afforded inaccurate, incomplete or misleading information about prescription pharmaceuticals, this Panel regards such conduct as constituting serious bad faith and also being against the public interest.”
Exploitation of the reputation of a trademark to obtain click-through commissions from the diversion of internet users is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous decisions. (see L'Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623; Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 and Hoffmann-La Roche Inc. v Samuel Teodorek, WIPO Case No. D2007-1814).
This Panel finds that the Respondent is a sophisticated party in the PPC landing page business, and must have been aware of the relevant trademark. This Panel finds that the Respondent has taken the well-known trademark VALIUM and incorporated it in the Disputed Domain Name without the Complainant's consent or authorization, for the very purpose of capitalizing on the reputation of the trademark by (on Respondent's own admission) diverting Internet users to a PPC landing page hosted by Parked.com for commercial gain.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <valiumpharmacy.com> be transferred to the Complainant.
Dated: February 13, 2009