The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland represented internally.
The Respondent is Shenhong/Lantian Gongsi of Quanzhou, People's Republic of China.
The disputed domain name <valiumzzon.com> is registered with Xiamen eName Network Technology Corporation Limited dba eName Corp.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 23, 2009. On April 24, 2009, the Center transmitted by email to Xiamen eName Network Technology Corporation Limited dba eName Corp a request for registrar verification in connection with the disputed domain name. On April 25, 2009, Xiamen eName Network Technology Corporation Limited dba eName Corp 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 May 6, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was May 26, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 27, 2009.
The Center appointed Dr. Hong Xue as the sole panelist in this matter on June 3, 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 is in the field of pharmaceuticals and diagnostics and has global operations in more than 100 countries. The Complainant's mark VALIUM has been registered in over hundred countries.
The disputed domain name was registered on March 26, 2009.
The Complainant states that its mark VALIUM is protected as trademark in over hundred countries worldwide. The Complainant contends that the disputed domain name is confusingly similar to its mark VALIUM.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the domain name.
The Complainant contends that the disputed domain name was registered and is being used in bad faith.
The Complainant requested that the disputed domain name <valiumzzon.com> be transferred to it.
The Respondent did not reply to the Complainant's contentions.
The language of the Registration Agreement for the disputed domain name <valiumzzon.com>, as confirmed by the Registrar, is Chinese. The Complainant requests that the language of proceeding be English and presents its reasons. The Respondent did not make any submissions in relation to the Language of Proceeding or otherwise even though the Center's communications to this effect were both in English and in Chinese.
According to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
Among other circumstances, the Parties' genuine ability to take part in the proceeding conducted in a language different from the language of the Registration Agreement should be taken into account. According to the Rules, paragraph 10(b), the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case. Therefore it is important to objectively assess the Parties' language ability in the proceeding, rather than solely rely on any Party's mere assertion. In the present case, the Panel finds that the Respondent has sufficient capacity to present its case in English. The Panel's conclusion is based in part on the fact that the website established at the disputed domain name,
“www.valiumzzon.com”, displays the contents solely in English.
In view of the above, the Respondent will not be prejudiced, should English be adopted as the language of the proceeding. Having considered all the circumstances of the proceeding, this Panel determines under the Rules, paragraph 11(a) that English shall be the language of the proceeding.
Pursuant to the Policy, paragraph 4(a)(i), a complainant must prove that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. In line with such requirement, a complainant must prove its trademark rights and the similarity between the disputed domain name and its trademark.
The Panel finds that long before the registration of the disputed domain name the Complainant's mark VALIUM has been used and registered on pharmaceutical products in a number of countries.
The disputed domain name is <valiumzzon.com>. Apart from the generic top-level domain suffix “.com”, the disputed domain name consists of “valiumzzon”. Compared with the Complainant's mark VALIUM, there are additional letters “zzon”. It is established by numerous decisions made under the Policy that adding letters may not preclude a finding of confusing similarity (see EthnicGrocer.com v. Latin Grocer.com, NAF Claim No. FA94384). Given that the disputed domain name contains the Complainant's mark VALIUM in its entirety, adding the letters “zzon” cannot diminish the likelihood of confusion with the mark.
The Panel therefore finds that the disputed domain name <valiumzzon.com> is confusingly similar to the mark in which the Complainant has rights. Accordingly, the Complainant has proven the first element required by paragraph 4(a) of the Policy.
The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name and, as stated above, the Respondent did not provide any information to the Panel asserting any right or legitimate interest it may have in the disputed domain name.
It is apparent from the Complaint that there is no connection between the Respondent and the Complainant or its business. Paragraph 4(c) of the Policy lists a number of circumstances which can be taken to demonstrate a respondent's rights or legitimate interests in a domain name. However, there is no evidence before the Panel that any of the situations described in paragraph 4(c) of the Policy apply here. To the contrary, the lack of a Response leads the Panel to draw a negative inference.
Therefore, and also in light of the Panel's findings below, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. Accordingly, the Complainant has proven the second element required by paragraph 4(a) of the Policy.
The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. The Respondent did not respond.
Through examining the evidence submitted, the Panel is impressed by the fact that the website set up at the disputed domain name is selling various pharmaceutical products, including what appears counterfeit VALIUM. Since the disputed domain name was registered and is fully controlled by the Respondent, the Respondent is responsible for any use of the disputed domain name. The use of the disputed domain name that is confusingly similar to the Complainant's mark to attract consumers to a website that is commercializing what appear counterfeit pharmaceutical products and competitive products is highly likely to cause confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the website or of the products on the website.
The Panel finds that it is adequate to conclude that the Respondent has registered and is using the disputed domain name in bad faith under the Policy, paragraph 4(b)(iv). Therefore, the Complainant successfully proves the third element required by paragraph 4(a) 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 domain name <valiumzzon.com> be transferred to the Complainant.
Dr. Hong Xue
Dated: June 17, 2009