WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. Hristo Ibouchev
Case No. D2010-2259
1. The Parties
The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally.
The Respondent is Hristo Ibouchev of Kazanlak, Bulgaria.
2. The Domain Names and Registrar
There are three disputed domain names, namely <buyvalium247.com>, <valiumnopresc.com>, and <valium4anxiety.com> and they are all registered with Moniker Online Services, LLC (“Moniker Online”)
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 23, 2010. On December 23, 2010, the Center transmitted a request, by email, to Moniker Online for registrar verification in connection with the disputed domain names. On December 28, 2010, Moniker Online transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant for all three of the disputed domain names and providing the relevant 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 January 4, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 24, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 25, 2011.
The Center appointed David H. Tatham as the sole panelist in this matter on January 28, 2011. The Panel finds that it was properly constituted and has submitted a Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center in order to ensure compliance with the Rules, paragraph 7.
4. Factual Background
All of the disputed domain names were first registered on November 10, 2010.
The Complainant, and its various affiliated companies, is one of the world’s leading research-focused healthcare Groups. It specialises in pharmaceuticals and diagnostics, and the Group trades throughout the world and in more than 100 countries.
The Complainant has registrations of the trademark VALIUM in a multitude of countries, and annexed to the Complaint was a copy of the Complainant’s International Registration of this mark No. R250784, covering goods in Classes 1, 3 and 5, and showing that it is protected in at least 36 countries. This is the renewal of a registration dated October 20, 1961.
The name Valium is used for a sedative and anxiolytic drug which has a worldwide reputation as a psychotropic medication, and annexed to the Complaint were several newspaper articles relating to the product.
5. Parties’ Contentions
The Complainant contends that all of the disputed domain names are confusingly similar to its trademark VALIUM, which was registered long before the domain names, because the addition to the word ”valium” of the generic terms ”buy”, “anxiety”, ”4” (which is pronounced the same as the word ”four”), ”nopresc” (which is probably an abbreviation of the words ”no prescription”), and the figure “247” do not sufficiently distinguish the disputed domain names from the Complainant’s trademark VALIUM.
The Complainant further contends that the Respondent has no rights or legitimate interest in the disputed domain names because they all resolve to websites which are search engines with sponsored links and it has been held that this is not bona fide use. Furthermore, the Complainant has not licensed, permitted, or authorized the Respondent to use its trademark VALIUM in the disputed domain names.
The disputed domain names were registered on November 10, 2010 and the Complainant contends that this registration was in bad faith because the Respondent must have known of the Complainant’s trademark VALIUM at that time. In addition, when viewing the websites at all of the disputed domain names, it can be seen that they act as forwarding addresses to re-direct users to search engine websites where there are links to third parties, and so the Respondent is intentionally attempting to attract Internet users to these websites for commercial purposes and so create a likelihood of confusion with the Complainant’s well-known trademark VALIUM as to the source, affiliation, and endorsement of the Respondent or its products or services on or linked to those sites. The Complainant contends that the Respondent might generate unjustified revenue from each click-through by online consumers of the sponsored links, and the Respondent is, therefore, illegitimately capitalizing on the fame of the trademark VALIUM.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that a complainant prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) that the domain name registered by the respondent is identical or confusingly similar to a trade mark 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 name; and
(iii) that the domain name has been registered and is being used in bad faith.
Paragraph 5(b)(i) of the Rules specifies that a respondent is expected 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 forwarded the Complaint to the Respondent, in compliance with paragraph 2(a) of the Rules, and the Respondent has been given an opportunity to present his case, but he has failed to do so.
Paragraph (14)(b) of the Rules specifies that, in the event of a default, “[…]the Panel shall draw such inferences therefrom as it considers appropriate. It was said in Viacom International Inc. v. Ir Suryani, WIPO Case No. D2001-1443 that “[s]ince 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 present proceeding, since 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 Complainant’s assertions, and to take its decision on the basis of the statements and documents before it, always in accordance with the Policy, the Rules, and any rules and principles of law that are deemed applicable.
A. Identical or Confusingly Similar
The Complainant claims to have numerous registrations of the trademark VALIUM, but has supplied details only of its International Registration No. R250784 which dates from its original registration of October 20, 1961, but which is in fact extended to at least 36 countries.
The Complainant has also supplied evidence for the substantial use of the name VALIUM in the form of various newspaper extracts. In one of these VALIUM Is described in a 2005 article in The New York Times as “not only the country’s best selling drug, but an American icon”. The Complainant has thus established, to the Panel’s satisfaction, its rights in the well-known word trademark VALIUM, registered in many territories around the world.
It is by now well established that, when comparing a disputed domain name with a trademark, then a gTLD such as - in this case - ”.com” should be disregarded. See, for example Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429 in which it was found that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar. Therefore, the comparison here is between the trademark VALIUM and the words “buyvalium247”, “valiumnopresc”, and “valium4anxiety”.
The Complainant’s trademark VALIUM is extremely well-known throughout the world and, not surprisingly, it has attracted numerous attempts by cybersquatters to incorporate it into various domain names. Since the UDRP began in 2000, there have been several dozens of WIPO decided cases involving variants of the word “valium”, in all of which the Decision was to transfer the disputed name to the Complainant or to one of its affiliates.
In the present case, the three disputed domain names have merely added generic terms or, in one case, a numeral, to the word “valium” and there is little doubt that the average consumer would regard each of them as referring directly to the Valium element of the name, and so directly to the Complainant’s trademark and widely prescribed product.
The Complainant has referred to a case Wal-Mart Stores, Inc. v. Kuchora, Kal, WIPO Case No. D2006-0033 in which it was held that “[i]t is well-established that the addition of a generic term to a trademark does not necessarily eliminate a likelihood of confusion.” It was also held in Merrell Pharmaceuticals Inv., Aventis Pharma SA v. Filips Kostins, WIPO Case No. D2004-0943 that “[t]he Domain Name is confusingly similar to the trademark ALLEGRA, as the prefixes “buy” and “generic” are generic terms, which do not influence significantly the overall impression of the Domain name which is dominated by the word ALLEGRA.”
In these circumstances, and in the light of these clear precedents, the Panel has little hesitation in finding that all three of the disputed domain names are confusingly similar to a trademark in which the Complainant has rights, and that paragraph 4(a)(i) of the Policy is therefore proved in respect of each of them.
B. Rights or Legitimate Interests
The Panel is satisfied that the Complainant has established a prima facie case under paragraph 4(a)(ii) of the Policy, namely that the respondent has no rights or legitimate interests in any of the three disputed domain names, and it is well established that once a complainant has made out a prima facie case that the respondent has no rights or legitimate interests in a domain name, then the burden shifts to the respondent to prove otherwise. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, NAF Claim No. 741828 (August 18, 2006) in which it was held that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name.
In the present case, the Respondent has chosen not to file anything in his defence despite the burden and the consequences under the Rules for doing so (see above). If the Respondent had any justification for registering or using the disputed domain names, he could have provided it. In particular, the Respondent has not contended that any of the circumstances described in paragraph 4(c) of the Policy, or indeed in any other circumstance, are in his favour.
The only information available about the Respondent is the WhoIs information, provided by the Registrar.
This contains no evidence of any rights or legitimate interests of the Respondent in the disputed domain names, which, as found above, are confusingly similar to the Complainant’s distinctive and well-known trademark VALIUM. The Respondent makes no claims for having rights or legitimate interests in respect of the disputed domain names and provides no explanation whatsoever for their registration and use. As submitted by the Complainant and not denied by the Respondent, the disputed 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.
Moreover, 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.
The websites associated with the disputed domain names contain no information about the Respondent and its relationship with the Complainant, so it is most unlikely that any such exists. The three disputed domain names are actually variations of one another and, by registering them, the Respondent has gone well beyond any potential legitimate use; he 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. It is evident therefore that the Respondent’s conduct does not comply with several elements of the above-mentioned Oki Data test.
The above circumstances merely serve to confirm the Complainant’s prima facie case, and the Panel finds that the Respondent has no rights or legitimate interests in any of the disputed domain names so that paragraph 4(a)(ii) of the Policy is also proved in respect of all of the disputed domain names..
C. Registered and Used in Bad Faith
In the present case, the disputed domain names are confusingly similar to the Complainant’s trademark VALIUM and clearly refer to the Complainant’s product. The websites at each of them directly offer for sale other pharmaceutical products, such as phentermine, Levitra or Cialis, and one of them has links to ”anxiety” and ”depression”, for both of which the Complainant’s Valium can be prescribed. This is sufficient for the Panel to conclude that at the time of their registration, the Respondent was clearly aware of the Complainant and of its product. The Respondent has provided no evidence of any actual or contemplated good faith use of the disputed 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. See Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 in which it was said “’VEUVECLICQUOT.ORG’ is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith”. Precisely the same argument applies in this case, Valium being also a well-known product.
The disputed 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 accessing the Respondent’s websites may well believe that they are endorsed by the Complainant and that they can obtain its genuine products from them. This would be false. Therefore, and in the absence of any contrary evidence, the Panel accepts that the Respondent has registered and used the disputed 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.
The Panel therefore finds that paragraph 4(a)(iii) of the Policy is also proved for all of the disputed domain names.
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 <buyvalium247.com>, <valiumnopresc.com>, and <valium4anxiety.com> be transferred to the Complainant.
David H. Tatham
Dated: February 4, 2011