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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Roche Products Inc. v. WhoisGuard Protected / overnight, Thomas Koch

Case No. D2010-1097

1. The Parties

Complainant is Roche Products Inc. of Hamilton, Bermuda, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, represented by Lathrop & Gage L.C., United States of America.

Respondent is WhoisGuard Protected of Westchester, California, United States of America / overnight, Thomas Koch of Bremen, Germany.

2. The Domain Name and Registrar

The disputed domain names <buyvaliumoffers.com>, <diazepamvalium-offers.com> and <valium365.com> are registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 2, 2010. On July 2, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain names. On July 2, 2010, eNom transmitted by email to the Center its verification response, disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on July 8, 2010, providing the registrant and contact information disclosed by the Registrar and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on July 8, 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 Respondent of the Complaint, and the proceedings commenced on July 9, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 29, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 2, 2010.

The Center appointed Luiz E. Montaury Pimenta as the sole panelist in this matter on August 10, 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

Complainant and its affiliated companies are a worldwide health group involved in the field of research and development of pharmaceuticals and diagnostics. Complainant holds the trademark VALIUM, registered before the United States Patent and Trademark Office under Registration number 725,548 and in use since 1961. The priority date for the trademark VALIUM is October 20, 1961. Complainant holds trademark registrations in many countries for this mark. VALIUM designates a psychotherapeutic agent, namely, a pharmaceutical product indicated for treatment and prevention of anxiety. Complainant alleges it has consistently advertised and promoted the trademark VALIUM for many years.

5. Parties’ Contentions

A. Complainant

Complainant alleges that the disputed domain names contain its entire VALIUM trademark.

Complainant alleges that the disputed domain names create a likelihood of confusion as to source, sponsorship, association or endorsement of Respondent’s websites associated with the disputed domain names.

Complainant submits that the disputed domain names of Respondent are confusingly similar to its VALIUM mark and that the addition of the descriptive terms “buy”, “offers”, “diazepam” and “365” does not sufficiently distinguish the disputed domain names from Complainant’s trademark.

Complainant alleges that Respondent has no rights or legitimate interests in respect of the disputed domain names. Complainant argues that VALIUM is not a dictionary word and has no valid use other than in connection with Complainant’s trademark.

Complainant also alleges that Respondent uses the disputed domain names to offer for sale Complainant’s VALIUM drug without prescription, thus, for commercial gain and with the purpose of capitalizing on the fame of Complainant's trademark VALIUM.

Complainant also contends that Respondent has intentionally attempted (for commercial purpose) to attract Internet users to Respondent's websites, by creating a likelihood of confusion with Complainant's well-known marks as to the source, affiliation and endorsement of Respondent's websites or of the products linked to Respondent's website.

Finally, Complainant submits that the disputed domain names were registered and are being used in bad faith by Respondent.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the remedy it has requested: (i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the domain names; and (iii) the domain names have been registered and are being used in bad faith, Policy, paragraph 4(a).

A. Identical or Confusingly Similar

The Panel finds that Complainant’s registered trademark is distinctive in the field of research and development of pharmaceuticals and diagnostics and have a strong reputation in many countries. The Panel finds that the disputed domain names are confusingly similar to Complainant’s VALIUM registered trademark. The only difference between Complainant’s registered trademark and the disputed domain names is the addition of the generic terms “buy”, “offer”, “diazepam” and “365”.

The Panel finds that the difference pointed above is not enough to characterize the disputed domain names as being distinct from Complainant’s registered trademark. See Columbia Pictures Industries, Inc. v. Caribbean Online International Ltd., WIPO Case No. D2008-0090 (March 10, 2008) (“adding or removing letters to a domain name is not sufficient to escape the finding of similarity and does not change the overall impression of the designation as being connected to the trademark of Complainant.”).

The Panel finds that this similarity can mislead Internet users who search for Complainant’s services and divert them to the disputed domain names.

The Panel, therefore, finds that Complainant has established the first condition of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Complainant has alleged that Respondent has no rights or legitimate interests in the disputed domain names that contain in its entirety Complainant’s VALIUM mark. In the circumstances of this case and taking into consideration that Respondent has failed to respond to the Complaint, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain names.

The Panel finds that Complainant has made a prima facie case and Respondent has not rebutted Complainant’s showing and has not demonstrated that it does have rights or legitimate interests in the disputed domain names, according to paragraph 4(a)(ii) of the Policy.

The Panel further finds that with respect to paragraph 4(c)(i) of the Policy, there is no evidence that Respondent, before any notice of the dispute, used or prepared to use the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services.

With respect to paragraph 4(c)(ii) of the Policy, there is no evidence that indicates that Respondent has ever been commonly known by the disputed domain names.

With respect to paragraph 4(c)(iii) of the Policy, Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed domain names and has not used the disputed domain names, or a name corresponding to it, in connection with a bona fide offering of goods or services.

At the time the Complaint was filed, the disputed domain names were associated with websites that offered Complaint’s VALIUM drugs for sale without a prescription. The Panel finds that this is not a bona fide offering of goods and services.

In view of the above, the Panel finds that Complainant has established the second condition of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Under paragraph 4(b), a respondent has used and registered a domain name in bad faith if, inter alia, the respondent has used the domain name intentionally to attempt to attract, for commercial gain, Internet users to the respondent’s website or other online location by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the respondent’s site or of a product or service offered on the respondent’s site, Policy, paragraph 4(b)(iv).

The Panel finds that Respondent registered the disputed domain names in bad faith.

In the Panel’s view, Respondent has intentionally registered the disputed domain names which totally reproduce Complainant’s widely-known trademark VALIUM. The Panel believes that by the time the disputed domain names were registered, Respondent had knowledge of Complainant’s rights on the trademark VALIUM.

Complainant’s allegations of bad faith are not contested. The evidence provided by Complainant confirms that it had long been using its VALIUM registered trademark when the disputed domain names were registered. Moreover, Complainant submitted consistent evidence that its trademark is widely-known. The Panel finds that Respondent must have been aware of Complainant’s rights in the mark and, further, that Respondent knowingly infringed Complainant’s trademark when it registered the disputed domain names.

Also, under the Policy, it is evidence of bad faith that, “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.”, Policy paragraph 4(b)(iv). Respondent used Complainant’s known trademark to attract users to Respondents’ website where Complainant’s VALIUM drugs are offered for sale without a prescription. In the Panel’s view, this is evidence of the intention by Respondent to attract Internet users for commercial gain, by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondents’ website or of a product or service on Respondents’ website.

In light of these, the Panel finds that Complainant has established the third element of paragraph 4(a) of the Policy.

7. Decision

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 <buyvaliumoffers.com>, <diazepamvalium-offers.com> and <valium365.com> be transferred to Complainant.

Luiz E. Montaury Pimenta
Sole Panelist
Dated: August 25, 2010.

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