WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. Eleanor Burke
Case No. D2010-1584
1. The Parties
The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, internally represented.
The Respondent is Eleanor Burke of Dublin, Ireland.
2. The Domain Name and Registrar
The disputed domain name <valium-ireland.net> is registered with Center of Ukrainian Internet Names (UKRNAMES).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 20, 2010. On September 20, 2010, the Center transmitted by email to the Center of Ukrainian Internet Names (UKRNAMES) a request for the registrar to verify the disputed domain name. On September 28, 2010, the UKRNAMES transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and provided the contact details. The Registrar also indicated that the language of the registration agreement for the disputed domain name was Russian. On September 30, 2010, the Center transmitted documents concerning the language of the proceeding to the parties in both English and Russian. The Complainant replied on October 4, 2010, providing arguments as to why English should be the language of the proceeding. The Respondent did not reply to this communication.
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 October 5, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 25, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 1, 2010.
The Center appointed Piotr Nowaczyk as the sole panelist in this matter on November 8, 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.
Subsequently, by Panel by Order No. 1 dated November 16, 2010, having reviewed the material submitted before it and with regard to clause 1, 2 and 4 of the Policy and paragraph 12 of the Rules, the Panel requested the Complainant to provide the Panel with a copy of the Registration Agreement in the original and/or any other language within three days upon receipt thereof. The Complainant provided the Panel with the registration agreement on November 16, 2010, as set forth therein.
4. Factual Background
The Complainant is one of the world's leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics. One of the marks of the Complainant is VALIUM, which is protected worldwide (e.g. - International Registration No. 2R250784). Moreover, the Complainant holds registrations in over one hundred countries for the VALIUM mark. The VALIUM mark designates a sedative and anxiolytic drug belonging to the benzodiazepine family, which enabled the Complainant to build a world-wide reputation in psychotropic medications.
5. Parties’ Contentions
The Complainant submitted that the disputed domain name of the Respondent is confusingly similar to the Complainant's VALIUM brand since it incorporates this mark in its entirety, even though it is followed by the geographic name "Ireland", which it argues is not sufficient to distinguish the disputed domain name from the Complainant’s trademark. The VALIUM mark is well-known and notorious. Furthermore, the Complainant stated that the use and registration of the VALIUM mark dates prior to the Respondent's registration of the disputed domain name. Therefore the disputed domain name is confusingly similar to the Complainant’s trademark.
Secondly, the Complainant submitted that the Respondent had no rights or legitimate interests with respect to the disputed domain name. The Complainant holds exclusive rights for VALIUM and no consent or any form of authorisation for the use of the VALIUM mark was granted to the Respondent.
Thirdly, the disputed domain name, according to the Complainant, was registered and is being used in bad faith since at the time of the registration (May 5, 2010) the Respondent must have been aware of the Complainant's well-known VALIUM mark. Further, the website formerly offered an on-line pharmacy, which proves that the Respondent has attempted to benefit from the likelihood of confusion with the Complainant's well-known mark (see Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784; and F. Hoffmann-La Roche AG vs. Pinetree Development, Lid., WIPO Case No. D2006-0049).
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Language of the Proceedings
The Complainant in the Complaint submitted a request that English be the language of the proceeding for the following reasons: the website at the disputed domain name is in the English language, the text of the domain name and webpage also refer to an English-speaking country (Ireland). The Complainant concluded that for the sake of practicality English should be the language of the proceeding. Pursuant to paragraph 11 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, i.e., Russian, however this is subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
In adopting a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties' ability to understand and use the proposed language, time and costs (see Biotechnology and Biological Sciences Research Council v. Kim Jung Hak,
In the present case although the language of the registration agreement is Russian, the Complainant argued that the language of these proceedings should be English, as the Respondent could and had communicated in that language. Since Respondent has not filed a Response to the Complaint, the Panel may decide the dispute based on the Complaint and may accept all factual allegations as true. The Panel may also draw appropriate inferences from Respondent's default (see Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009) and lack of any objections regarding the Complainant’s request for the change of the language. In this vein the Panel found that the Respondent did not object to the change in the language of the proceeding, that the Respondent would not be prejudiced if English were adopted as the language of the proceeding, and thus that the Complainant’s request is justified.
B. Identical or Confusingly Similar
The Complainant has proven that the disputed domain name <valium-ireland.net> is identical or confusingly similar to the name, trademarks and service marks of the Complainant.
The confusing similarity of the disputed domain name <valium-ireland.net> to the Complainant’s trademarks and service marks is apparent from a simple visual comparison. The disputed domain name contains a replica of the Complainant’s mark. The phrase “valium” does not appear to have any generic or dictionary meaning in any language.
The disputed domain name <valium-ireland.net> contains a trademark owned legally by the Complainant. This is sufficient to satisfy the requirement that the disputed domain name in question be confusingly similar to a mark in which the Complainant has rights. Furthermore, the Panel finds that the addition of the geographic term “Ireland” does not distinguish the domain name from the Complainant’s registered trademark.
The Panel therefore finds that the domain name <valium-ireland.net> is confusingly similar to Complainant’s trademark and as a consequence, the Complaint brought by the Complainant meets the requirement of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
From the evidence submitted before the Panel it is clear that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Respondent is not the Complainant’s licensee in any respect, nor is the Respondent authorised to use the Complainant’s marks. There is no evidence of the Respondent’s use of, or demonstrable preparation 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. There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the domain name.
Nonetheless, the Respondent was also given the opportunity to contest the case against him. However, the Respondent did not submit any evidence that would demonstrate that he has any rights to, or legitimate interests in, the domain name <valium-ireland.net>.
The Panel therefore infers from the Respondent’s silence and the Complainant’s supported contentions that the Respondent has no rights to, or legitimate interests in, the domain name <valium-ireland.net>. The Panel considers the requirement of paragraph 4(a)(ii) of the Policy fulfilled.
D. Registered and Used in Bad Faith
The Complainant is the owner of the trademark VALIUM.
Under paragraph 4(b)(iv) of the Policy, a domain name is considered to be registered in bad faith if by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website 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 the Respondent’s website or location or of a product or service on his website or location.
Based on the evidence submitted by the Complainant, the Panel finds that the domain name has been used in bad faith and shares the view that the website at the disputed domain name, which at one time was used to provide an online pharmacy and which offered inter alia various drugs which directly compete with the Complainant, is evidence of registration and use of the domain name in bad faith. Such registration is aimed at intentionally attracting for commercial gain Internet users to the Respondent’s web site by creating a likelihood of confusion with the Complainant's mark (e.g. the Respondent appears to have offered for sale DIAZEPAM without a prescription in Ireland).
In the absence of evidence to the contrary, the Panel is persuaded that the Respondent knew of or should have known of the Complainant’s trademark and services at the time the Respondent registered the disputed domain name, and did so with a view to illegitimately taking advantage of such mark.
As a result, the Panel finds that the disputed domain name <valium-ireland.net> was registered and is used by the Respondent in bad faith and considers the requirements of paragraph 4(a)(iii) of the Policy to be fulfilled.
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 <valium-ireland.net> be transferred to the Complainant.
Dated: November 22, 2010