World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Roche Products Inc. v. Slava c/o Dynadot Privacy

Case No. D2010-1862

1. The Parties

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

The Respondent is Slava c/o Dynadot Privacy of San Mateo, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <valiumovernightnoprescription.com> is registered with Dynadot, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 2, 2010. On November 3, 2010, the Center transmitted by email to Dynadot LLC a request for registrar verification in connection with the disputed domain name. On November 5, 2010, Dynadot, LLC. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details and contact information for the disputed domain name.

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 November 8, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 28, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 29, 2010.

The Center appointed Beatrice Onica Jarka as the sole panelist in this matter on December 3, 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 in this administrative proceeding is Roche Products, Inc., a company duly organized under the laws of Panama, with offices in Hamilton, Bermuda, and a member of the Roche Group.

The Complainant together with its affiliated companies is one of the leaders in research and development of pharmaceutical and diagnostic products and has global operations. The Complainant holds several VALIUM trademark registrations for pharmaceutical psychotherapeutic agent worldwide, such as the USPTO trademark registration under Reg. No. 725,548. The Complainant also holds the USPTO registration under Reg. No. 1,314,271 for a design trademark consisting of a circular shaped tablet with a stylized “v” punched through the Center of the tablet.

The parent company of the Complainant, F. Hoffmann-La Roche AG owns and has registered the domain name <valium.com>.

Advertising and promotion for Roche’s Valium psychotherapeutic agent using the mark VALIUM has been extensively used and widely circulated by the Complainant in the United States of America, and the product has acquired fame and celebrity, symbolizing the goodwill that Roche has created in the United States of America and throughout the world.

For the purposes of this proceeding, this Panel considers the VALIUM trademark as a famous mark. In this sense see F. Hoffmann-LaRoche AG v. NetMarketing cc, WIPO Case No. D2005-1216, where the panel determined the VALIUM mark to be “well known and notorious” and F. Hoffmann-La Roche AG v. Ashima Kapoor, WIPO Case No. D2005-1351 where the panel considered the VALIUM trademark a famous one).

The disputed domain name was registered on May 7, 2010. The Respondent is Slava c/o Dynadot Privacy of San Mateo, California, United States of America.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

- The trademark VALIUM is in use in the Unit ed States of America from 1961;

- The trademark VALIUM designates a psychotherapeutic agent indicate for treatment and prevention of anxiety;

- The disputed domain name contains the entire VALIUM trademark of the Complainant and it is identical or confusingly similar to this mark. The Respondent has no rights or legitimate interests in the disputed domain name as the Complainant did not authorize the Respondent to us the VALIUM trademark;

- Moreover, the Respondent’s use of the disputed domain name is disreputable. The Respondent’s website to which the disputed domain name resolves offers the Complainant’s VALIUM drug as well as other competitors’ anti anxiety products and other pharmaceutical products of competitors for sale through the linked site “www.pharmacy favorite.com”;

- The Respondent’s link sales site offers valium products without prescription which is illegal in United States of America; such use of the disputed domain name is an act of unfair competition which may cause significant harm to the Complainant’s reputation and negative consequences to those taking medication which is not appropriate to them;

- The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain. Respondent registered and is using the disputed domain name in bad faith as:

- The Complainant’s mark VALIUM is not a common word but an invented and coined famous mark that has an extremely strong worldwide reputation;

- There exists no relationship whatsoever between the Respondent and the Complainant, and the Complainant has not given the Respondent permission to use in any way its famous mark VALIUM in a domain name to sell any VALIUM product;

- The Respondent was aware of the VALIUM trademark, and seeks to divert Internet users to its website for its own commercial gain, all to the confusion of the public and detriment of Roche, the trademark owner.

- By operating the disputed domain name the Respondent has intentionally attempted to attract for financial gain Internet users to the Respondent’s website 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 the goods on the Respondent’s website;

- Such website to which customers are directed through the Respondent’s website has no legitimate business connection with the Complainant or its VALIUM psychotherapeutic agent product. Such unauthorized use of the Complainant’s mark suggests opportunistic bad faith.

-The websites to which the disputed domain names resolves offer and sells VALIUM product without a prescription or with an online doctor prescription which is not legal.

The cease and desist letter sent by the Complainant to the Respondent on October 6, 2010 had no effect.

- The Complainant requests that the disputed domain name is transferred to it.

B. Respondent

Despite of being properly notified, the Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

A.1.The Complainant holds rights in the VALIUM trademark

The Complainant has provided sufficient evidence showing that it is the owner of the VALIUM mark. The Panel is satisfied in considering that the Complainant holds rights in the VALIUM trademark.

A.2. The disputed domain name is confusingly similar with the Complainant’s VALIUM trademark.

The disputed domain name incorporates the entire Complainant trademark to which it adds four descriptive in scope words: “over”, “night”, “no” and “prescription”. To this combination of words the disputed domain name adds the gTLD suffix ‘. com’.

Prior UDRP panels have recognized many times that the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark. See EAuto LLC v. Triple S Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047 and F. Hoffmann-LaRoche AG v. George McKennitt, WIPO Case No. D2005-1300, Hoffmann-La Roche Inc. v. Patsy Hail, WIPO Case No. D2008-1343.

Moreover, the addition of the terms “over”, “night”, “no” and “prescription” to the VALIUM mark does not mitigate the confusing similarity between the disputed domain name and the Complainant’s trademark. Consequently, the addition of these terms to the Complainant’s trademark does not negate the confusing similarity between the VALIUM trademark and the disputed domain name. Rather, it strengthens the association by having people think that it relates to obtaining the VALIUM drug without prescription. See Hoffmann-La Roche Inc. v. Patsy Hail, WIPO Case No. D2008-1343.

It is also now well established that the confusing similarity thus created is not negated by the presence in the domain name of suffixes such as the gTLD suffix <.com>.

As the Complainant clearly has rights in the trademark as its owner, the Panel finds that the domain name is confusingly similar to the trademark and that the Complainant has accordingly established the first of the three elements that it must prove.

B. Rights or Legitimate Interests

The Complainant must establish a prima facie showing under paragraph 4(a)(ii) of the Policy, and then the evidential onus shifts to the Respondent to rebut the presumption of absence of rights or legitimate interests.

The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) has been made by the Complainant. It cannot be contested that the Respondent has not been authorized to use the Complainant's VALIUM mark on the Respondent's website or to appropriate the mark for use as a domain name, and there is no indication that the Respondent has ever been commonly known by the domain name.

At the time the Complaint was filed, the Respondent’s website to which the disputed domain name resolves offered the Complainant’s VALIUM drug as well as other competitors’ anti anxiety products and other pharmaceutical products of competitors for sale through the linked site pharmacy ”www.favorite.com”.

Moreover, the Respondent’s link sales site offers VALIUM products without prescription which is illegal in the United States of America.

Such use of the disputed domain name, as the Complainant contends, is an act of unfair competition which may cause significant harm to the Complainant’s reputation and negative consequences to those taking medication which is not appropriate to them.

The Respondent has not submitted a Response to deny the Complainant’s assertions concerning the inappropriate nature of such use of the Complainant’s trademark or to explain why the disputed domain name was used in such a way when there is no obvious connection between the Respondent and the Complainant.

Under these circumstances, the Panel finds that the Respondent is not in any way engaged with, or preparing for, a bona fide offering of goods or services using the disputed domain name.

The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that that the Complainant has accordingly established, also, the second of the three elements that it must prove.

C. Registered and Used in Bad Faith

The record in this case indicates clear the Respondent's bad faith registration and use of the disputed domain name.

The Panel is persuaded by the Complainant’s contentions that:

- The Complainant’s mark VALIUM is not a common word but an invented and coined well-known mark that has a strong worldwide reputation;

- There exists no relationship whatsoever between the Respondent and the Complainant, and the Complainant has not given the Respondent permission to use in any way its famous mark VALIUM in a domain name to sell any Valium product;

- The Respondent must have been aware of the VALIUM trademark at the time the disputed Domain Name was registered and seeks to divert Internet users to its website for its own commercial gain, all to the confusion of the public and detriment of the Complainant, the trademark owner;

- By operating the disputed domain name the Respondent has intentionally attempted to attract for financial gain Internet users to the Respondent’s website 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 the goods on the Respondent’s website;

- Such website to which customers are directed through the Respondent’s website has no legitimate business connection with the Complainant or its VALIUM psychotherapeutic agent product. Such unauthorized use of the Complainant’s mark suggests opportunistic bad faith;

- The websites to which the disputed domain names resolves offer and sells VALIUM product without a prescription or with an online doctor prescription which is not legal

In the Panel’s view, the Respondent has sought to profit from and exploit the Complainant's mark in violation of the Policy.

Accordingly, the Panel finds that the Complainant has satisfied all the requirements of paragraph 4(a)(iii) 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 name <valiumovernightnoprescription.com> be transferred to the Complainant.

Beatrice Onica Jarka
Sole Panelist
Date: December 17, 2010

 

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