WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. eLogix
Case No. D2010-1103
1. The Parties
The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally.
The Respondent is eLogix of Montevideo, Uruguay.
2. The Domain Names and Registrar
The disputed domain names <buyvalium-online.com> and <buyxenical-online.org> are registered with eNom, Inc.
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, Inc a request for registrar verification in connection with the disputed domain names. On the same day, the Registrar 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 July 8, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 28, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 30, 2010.
The Center appointed Daniel Peña as the sole panelist in this matter on August 6, 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, together with its affiliated companies, is one of the world’s leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics and having global operations in more than 100 countries.
The trademarks VALIUM and XENICAL of the Complainant are protected as registered trademarks in several countries worldwide.
The trademark VALIUM is protected through the International Registration No R250784.
The trademark XENICAL is protected through the International Registrations No 612908 and 699154.
The trademark priority date for the trademark VALIUM is October 20, 1961. The trademark priority date for the trademark XENICAL is August 5, 1993.
The trademark VALIUM designates a sedative and anxiolytic drug belonging to the benzodiazepine family, which enabled the Complainant to build a world-wide reputation in psychotropic medications.
The trademark XENICAL designates an oral prescription weight loss medication used to help obese people lose weight and keep this weight off.
5. Parties’ Contentions
The disputed domain names are confusingly similar to the Complainant’s trademarks seeing that they incorporate these marks in their entirety.
The addition of the terms “buy”, a hyphen and the word “online” does not sufficiently distinguish the disputed domain names from the Complainant’s trademarks.
The Complainant’s use and registration of the trademarks VALIUM and XENICAL predate the Respondent’s registration of the disputed domain names.
The Respondent’s reason in registering and using the disputed domain names is to benefit from the reputation of the trademarks VALIUM and XENICAL and illegitimately trade on their fame for commercial gain and profit.
There is no reason why the Respondent has any right or interest in the disputed domain names.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order for the Complainant to prevail and have the disputed domain names transferred to it, the Complainant must show the following per the Policy, paragraph 4(a):
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the complainants have rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
The Complainant bears the burden of proof for each of these elements.
A. Identical or Confusingly Similar
The Complainant has evidenced registrations for the trademarks VALIUM and XENICAL in several countries. The Complainant’s trademarks are also protected by several international registrations.
The disputed domain name <buyvalium-online.com> contains the Complainant’s distinctive trademark VALIUM in its entirety, and the disputed domain name <buyxenical-online.org> contains the Complainant’s distinctive trademark XENICAL in its entirety. Both expressions “buy” and “online” added to the Complainant’s trademarks make reference to the commercial activities conducted by electronic means, thus, they refer to e-commerce transactions related to a product or service. Thus, neither the addition of the descriptive expression “buy” as prefix nor the inclusion of the pattern “online” alters the fact that the domain names are confusingly similar to the Complainant’s trademarks.
It is also well accepted that top-level domain denominations, in this case “.com” and “org” may be ignored when assessing identity of a trademark and domain name.
Therefore, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s registered trademarks. Therefore, the requirements in paragraph 4(a)(i) of the Policy are fulfilled.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the 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 domain name, without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
A complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
With respect to paragraph 4(c)(i) of the Policy, there is no evidence that the 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 the Respondent has ever been commonly known by the disputed domain names.
With respect to paragraph 4(c)(iii) of the Policy, the 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.
In this Panel’s view, the Complainant has provided evidence that the disputed domain names are used by the Respondent to address the public to an online pharmacy where, inter alia, products of the Complainant’s competitors are offered for sale.
In the absence of a Response, the Panel accepts the arguments and evidence advanced by the Complainant and finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names, and that accordingly, paragraph 4(a)(ii) of the Policy has been satisfied.
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 the Respondent registered the disputed domain names which correspond to widely used trademarks in the pharmaceutical sector with prior knowledge of the Complainant’s rights. In this Panel’s view, only someone who was familiar with the Complainant’s mark would have registered domain names including therein the distinctive expressions “Valium” and “Xenical” as such.
In addition, the fact that the Respondent’s web sites are affiliated with an online pharmacy, shows the Respondent’s intent, for commercial gain, to re-direct Internet users, especially potential customers of the Complainant to an active web page without any relationship with the owner of trademarks VALIUM and XENICAL.
In this Panel’s view, these facts lead to the risk of deception and confusion since it could give the impression that its websites are somehow endorsed by the Complainant.
Taken together with the fact that the Respondent has not filed any Response in this proceeding, the Panel believes that the Complainant has demonstrated that the contested registration has been made in bad faith.
The Panel therefore finds that the Policy, paragraph 4(a)(iii) has been satisfied.
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 <buyvalium-online.com> and <buyxenical-online.org> be transferred to the Complainant.
Dated: August 20, 2010