WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. Whois Privacy Services Pty Ltd / SMS, Taeho Kim
Case No. D2010-1080
1. The Parties
The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally.
The Respondent is Whois Privacy Services Pty Ltd of Brisbane, Queensland, Australia / SMS, Taeho Kim of Gwangju, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <valiun.com> is registered with Fabulous.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 30, 2010. On July 1, 2010, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the disputed domain name. On July 1, 2010, Fabulous.com transmitted by email to the Center its verification response, disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 2, 2010, providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on July 2, 2010. 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” 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 July 5, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 25, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 26, 2010.
The Center appointed Adam Taylor as the sole panelist in this matter on August 4, 2010. 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 part of a leading international pharmaceutical group. The Complainant’s products include Valium, a well-known sedative and anxiolytic drug belonging to the benzodiazepine family. Valium has been distributed for over 40 years.
The Complainant owns many registered trade marks for VALIUM including International Registration R250784 dated October 20, 1961, in classes 1, 3 and 5.
The disputed domain name was registered on April 9, 2010.
As of June 29, 2010, there was a website at the disputed domain name comprising a parking page with sponsored links to websites offering medication including a number of links related to “anxiety medication”.
5. Parties’ Contentions
Identical or Confusingly Similar
The disputed domain name is confusingly similar to the Complainant’s mark as the only difference is the purposeful misspelling of “valium” by replacing the letter "m" with “n”.
This conduct, commonly referred to as "typosquatting," has created a virtually identical and/or confusingly similar domain name to the Complainant’s trade mark.
The notoriety of the Complainant’s mark will increase the likelihood of confusion.
The Complainant’s use and registration of the mark VALIUM predate the Respondent’s registration of the disputed domain name.
Rights or Legitimate Interests
The Complainant has exclusive rights to the mark VALIUM and it has granted no licence, permission, or authorization to the Respondent to use that term in the disputed domain name. Furthermore, it is obvious that the Respondent uses the domain name for commercial gain and with the purpose of capitalizing on the fame of the Complainant’s mark.
The Respondent’s website is a search engine composed of sponsored links. The sole diversion of Internet traffic by the Respondent to other, unrelated websites, does not represent a use of the disputed domain name in connection with a bona fide offering of goods and services.
The Respondent’s only purpose in registering and using the disputed domain name is to benefit from the reputation of the trade mark VALIUM and to illegitimately trade on its fame for commercial gain and profit.
Accordingly, the Respondent has no right or interest in the disputed domain name.
Registered and Used in Bad Faith
The disputed domain name was registered in bad faith since, at the time of the registration, the Respondent undoubtedly had knowledge of the Complainant’s well-known mark VALIUM.
The disputed domain name is also being used in bad faith. It is being used to advertise links to websites promoting and/or offering products and services of third parties.
The Respondent, by using the disputed domain name, is intentionally misleading consumers and confusing them so as to attract them to other websites in the belief that those are associated with, or recommended by, the Complainant.
As a result, the Respondent may generate unjustified revenues for each click on a sponsored link. The Respondent is therefore illegitimately capitalizing on the fame of the VALIUM trade mark.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has established rights in the mark VALIUM by virtue of its registered trade mark as well as its extensive trading activities under that name.
The disputed domain name is confusingly similar to the Complainant’s mark. It differs only by replacing the letter “m” with “n”. The difference is insignificant. The disputed domain name remains virtually identical to the trade mark, both visually and phonetically.
The Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trade mark.
The Complainant has therefore established the first element of the Policy.
B. Rights or Legitimate Interests
The Complainant must establish at least a prima facie case under this heading and, if that is made out, the evidential onus shifts to the Respondent to rebut the presumption of absence of rights or legitimate interests thereby created. See, e.g., Atlas Copco Aktiebolag v. Accurate Air Engineering, Inc., WIPO Case No. D2003-0070.
The Complainant has not licensed or otherwise authorized the Respondent to use its trade mark.
As to paragraph 4(c)(i) of the Policy, the Panel has concluded below that the Respondent has used the disputed domain name to intentionally attempt to attract, confuse and profit from Internet users seeking the Complainant’s products and services. Such use of the disputed domain name could not be said to be bona fide.
There is no evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply.
The Panel finds that the Complainant has established a prima facie case of lack of rights and legitimate interests, and there is no rebuttal by the Respondent.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of the Policy.
C. Registered and Used in Bad Faith
The Panel has little difficulty in concluding that the disputed domain name was registered and used in bad faith.
Given the similarity between the disputed domain name and the Complainant’s widely known and distinctive mark, it is obvious that that the Respondent registered the disputed domain name with the Complainant’s trade mark in mind.
The Respondent has not come forward to deny the Complainant’s assertions of bad faith. It is difficult to conceive of any good faith reason why the Respondent would wish to register the disputed domain name and the Respondent has offered no explanation.
On the contrary, the disputed domain name has been used for a website with sponsored links to websites offering for sale products which compete with those of the Complainant. Clearly this was intended to generate commercial gain.
The Panel concludes from the foregoing that the Respondent has registered and used the disputed domain name in bad faith in accordance with paragraph 4(b)(iv) of the Policy. The Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trade mark.
The Panel therefore finds that the Complainant has established the third element 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 <valiun.com> be transferred to the Complainant.
Dated: August 18, 2010