WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. Sumatrono Suharo
Case No. D2010-1595
1. The Parties
The Complainant is F. Hoffmann-La Roche AG, Basel, Switzerland.
The Respondent is Sumatrono Suharo, Jakarta, Indonesia.
2. The Domain Names and Registrar
The disputed domain names <buyvalium10mg.net>, <buyvalium2mg.net> and <buyvalium5mg.net> (the “Domain Names”) are registered with the Center of Ukrainian Internet Names (UKRNAMES) (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 22, 2010. On September 22, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On September 28, 2010, 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. On September 30, 2010, the Center sent an email communication to the Parties in relation to the language of the administrative proceeding, inviting them to state their positions on this issue. On October 4, 2010, the Complainant confirmed its request the proceeding to be held in the English language. The Respondent did not express any views on this issue.
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 October 29, 2010.
The Center appointed Assen Alexiev as the sole panelist in this matter on November 11, 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.
In relation to the language of the administrative proceeding, the Panel notes that the language of the registration agreement for the Domain Names is Russian. The Complainant has submitted a request that English be the language of the proceedings, to which the Respondent has not objected. The Panel is prepared to accept the Complainant’s request, especially in the light of the Respondent’s lack of reaction on the issue and the English language content of the websites associated to the Domain Names. The Center has at all times communicated to the Respondent in both English and Russian, and it appears that no unfairness would be caused to either party if English is chosen as the language of the proceedings. Therefore, in exercise of its powers under Rules, paragraphs 10 and 11, the Panel decides English to be the language of this administrative proceeding.
4. Factual Background
The Complainant, with its affiliated companies, is one of the world’s leading research-focused healthcare groups. It is active in the fields of pharmaceuticals and diagnostics, and has global operations in more than 100 countries.
The trademark VALIUM designates a sedative and anxiolytic drug of the benzodiazepine family. The production of this drug enabled the Complainant to build a world-wide reputation in psychotropic medications.
The Complainant’s trademark VALIUM is protected in many countries worldwide. One of the registrations of this trademark is the International trademark No. 250784 VALIUM, registered with priority as of October 20, 1961 in International Classes 1, 3 and 5.
All three Domain Names were registered on August 18, 2010.
5. Parties’ Contentions
The Complainant contends that the Domain Names are confusingly similar to the Complainant’s well known VALIUM trademark, which they incorporate in its entirety. The addition of the descriptive terms “buy”, “2mg”, “5mg”, and “10mg” do not sufficiently distinguish the Domain Names from the VALIUM trademark.
According to the Complainant, the Respondent has no rights or legitimate interests in respect of the Domain Names. The Complainant has exclusive rights in its trademark, and has not granted any permission to the Respondent to use “VALIUM” in the Domain Names. The Respondent uses the Domain Names for commercial gain. Internet users visiting the websites associated to the Domain Names are directed to on-line pharmacies. According to the Complainant, a registrant has no legitimate interest in a domain name that is similar to a pharmaceutical manufacturer’s mark and that is being used to direct consumers to an on-line pharmacy.
In the Complainant’s submission, the Domain Names were registered and are being used in bad faith. At the time of the registration, the Respondent had knowledge of the Complainant’s well known product and trademark VALIUM. The Respondent is using the Domain Names to forward Internet users to a for-profit on-line pharmacy website. The Respondent has thus intentionally attempted for commercial purpose to attract Internet users to the Respondent’s websites, by creating a likelihood of confusion with the Complainant’s well known mark as to the source, affiliation and endorsement of the Respondent’s websites or of the products offered on the Respondent’s websites. This is evidence of bad faith registration and use pursuant to the Policy, paragraph 4(b).
The Complainant requests the transfer of the Domain Names to it.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the Domain Names:
(i) That the Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) That the Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) That the Respondent has registered and is using the Domain Names in bad faith.
By Rules, paragraph 5(b)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…”
In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present his case.
In the event of a default, under Rules, paragraph (14)(b): “…the Panel shall draw such inferences therefrom as it considers appropriate. ” As stated by the panel in Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004:
“Here, the potential evidence of good faith registration and use was in respondent’s control. Respondent’s failure to present any such evidence or to deny complainant’s allegations allows an inference that the evidence would not have been favorable to respondent.” As stated by the panel in Viacom International Inc. v. Ir Suryani, WIPO Case No. D2001-1443: “Since the Respondent has not submitted any evidence and has not contested the contentions made by the Complainant, this Panel is left to render its decision on the basis of the uncontroverted contentions made, and the evidence supplied, by the Complainant. …In the absence of any evidence to the contrary submitted by the Respondent, this Panel accepts in large measure (but not wholly) the submitted evidence and the contended for factual and legal conclusions as proven by such evidence.”
In this administrative proceeding, the Respondent has chosen not to submit a Response. His default entitles the Panel to conclude that the Respondent has no arguments or evidence to rebut the assertions of the Complainant. The Panel has to take his decision on the basis of the statements and documents before him and in accordance with the Policy, the Rules, and any rules and principles of law that he deems applicable.
A. Identical or Confusingly Similar
The Complainant has provided evidence and has thus established its rights in the word trademark VALIUM, registered for the territories of many countries around the world.
It is a common practice under the Policy to disregard the gTLDs such as the “.net” section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). Therefore, the relevant part of the Domain Name <buyvalium10mg.net> is its “buyvalium10mg” section. This section obviously contains three distinct elements: “buy”, “valium” and “10mg”. The dominating “valium” element is identical to the Complainant’s VALIUM trademarks, and the other two elements are generic and an average person would regard them as directly referring to the “valium” element of the Domain Name and to the Complainant’s trademark and drug.
The same considerations are fully applicable to the other two Domain Names as well.
On these grounds, the Panel finds that the Domain Names are confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant claims that the Respondent has no rights or legitimate interests in the Domain Names, stating various arguments in this regard. Thus, the Complainant establishes a prima facie case under Policy, paragraph 4(a)(ii).
It is well established that once a complainant makes out a prima facie case that the respondent has no rights or legitimate interests in a domain name, the burden shifts to the respondent to rebut the showing by providing evidence to the contrary.
In the present case, the Respondent has chosen not to present to the Panel any allegations or documents in his defense despite the burden under the Rules, paragraph 5(b)(i) and 5(b)(ix) or the consequences that a panel may extract from the fact of a default (Rules, paragraph 14). If the Respondent had any justification for registering or using the Domain Names, he could have provided it. In particular, the Respondent has not contended that any of the circumstances described in Policy, paragraph 4(c) — or any other circumstance — is present in his favor.
The only information available about the Respondent is the WhoIs information, provided by the Registrar.
The WhoIs information contains no evidence of rights or legitimate interests of the Respondent in the Domain Names, which, as found above, are confusingly similar to the distinctive and well-known trademark of the Complainant. The Respondent makes no claims for having rights or legitimate interests in respect of the Domain Names and provides no explanation whatsoever for their registration and use. As submitted by Complainant and not denied by Respondent, the Domain Names have been associated to online pharmacy commercial websites which offer various medicines, and this has taken place without the consent of the Complainant.
In Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, the panel formulated a test for determining whether a reseller can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name. Under this test, the conduct of a respondent must comply with all of the following requirements:
(1) the respondent must actually be offering the goods of the complainant;
(2) the respondent must use the website to sell only the trademarked goods of the complainant;
(3) the website of the respondent must accurately disclose the registrant’s relationship with the trademark owner; and
(4) the respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.
Putting aside whether cases involving pharmaceutical trademarks should typically fall under the above okidata test, if seen from the stand point of reseller-type cases the evidence in the current case suggests that the Respondent’s conduct does not comply with several elements of the above test. The websites associated with the Domain Names contain no information about the Respondent and its relationship with the Complainant, if such exists. By registering the three Domain Names which are actually variations of one another, the Respondent has gone well beyond any potential legitimate use and has made an attempt to corner the market and deprive the Complainant of the possibility to reflect its own trademark in a similar domain name.
In the Panel’s view, the above circumstances appear to confirm the Complainant’s prima facie case. Therefore, and in the lack of any evidence or allegations to the contrary, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Names within the meaning of the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
For the purposes of Policy, paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’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 your website or location or of a product or service on the holder’s website or location.
In the present case, the Domain Names are confusingly similar to the Complainant’s VALIUM trademark and clearly refer to the Complainant’s product. The websites associated to the Domain Names directly offer the product of Complainant (or a generic version of it) for sale. This is sufficient for the Panel to decide that at the time of the registration of the Domain Names, the Respondent was definitely aware of the Complainant and of its product. The Respondent has provided no evidence of any actual or contemplated good faith use of the Domain Names. It has been held under the Policy that the incorporation of a well known trademark into a domain name by a registrant having no plausible explanation for doing so may be an indication of opportunistic bad faith. Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163.
As contended by the Complainant, the Domain Names have been used by the Respondent - without the consent of the Complainant - for online pharmacy websites. These websites offer the Complainant’s product or a generic version of it, and do not disclose what the relationship between the parties is, if there is any. Internet users that reach the websites of the Respondent may well believe that these websites are endorsed by the Complainant and that they can obtain its genuine products from these websites. If we accept the uncontroverted contention of the Complainant that there is no relationship between it and the Respondent, this impression of Internet users would be false. Therefore, and in the lack of any contrary evidence, the Panel accepts that the Respondent has registered and used the Domain Names in bad faith by intentionally attempting to attract, for commercial gain, Internet users to online locations, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of these online locations or of the products offered on these location.
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 <buyvalium10mg.net>, <buyvalium2mg.net> and <buyvalium5mg.net> be transferred to the Complainant.
Date: December 6, 2010