World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

F. Hoffmann-La Roche AG v. Registrant [3527070]: Saeed Rahman, Flysafe

Case No. D2011-0099

1. The Parties

The Complainant is F. Hoffmann-La Roche AG, Basel, Switzerland represented internally.

The Respondent is Registrant [3527070]: Saeed Rahman, Flysafe, Karachi, Sindh, Pakistan.

2. The Domain Name and Registrar

The disputed domain name <valiumworld.com> is registered with Moniker Online Services, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 18, 2011. On January 18, 2011, the Center transmitted by email to Moniker Online Services, LLC. a request for registrar verification in connection with the disputed domain name. On January 20, 2011, Moniker Online Services LLC. 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 January 21, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 10, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 16, 2011. The Center appointed James Bridgeman as the sole panelist in this matter on March 2, 2011. 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 is a member of a group of companies engaged in the manufacture and sale of pharmaceuticals worldwide.

The Complainant is the owner of the VALIUM trademark that it uses in connection with the manufacture and sale of a sedative and anxiolytic drug belonging to the benzodiazepine family.

The Complainant has a worldwide portfolio of registrations for its VALIUM trademark in over hundred countries on a world-wide, including International Registration No. R250784, having a priority date of October 20, 1961.

In the absence of any Response or other submission from the Respondent, the only information available about the Respondent is that found in the WhoIs registration details and the Complainant’s submissions.

The disputed domain name was registered on October 6, 2010.

5. Parties’ Contentions

A. Complainant

The Complainant submits that together with its affiliated companies it forms 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 Complainant submits that the disputed domain name is confusingly similar to the VALIUM trademark in which the Complainant has rights.

The Complainant has provided details of its portfolio of registrations for its VALIUM mark VALIUM in over hundred countries on a world-wide and has furnished by way of example a certificate of the registration of International Trademark Registration No. R250784, VALIUM having a priority date of October 20, 1961.

The Complainant submits that it has established a world-wide reputation in psychotropic medications by its use of the VALIUM trademark for a sedative and anxiolytic drug belonging to the benzodiazepine family.

The Complainant submits that the disputed domain name is confusingly similar to the Complainant's trademark because it incorporates this mark in its entirety and the addition of the generic term "world" does not sufficiently distinguish the disputed domain name from the VALIUM trademark.

The Complainant has furnished examples of newspaper articles in an annex to the Complaint that it submits as evidence that its VALIUM trademark has become widely known and notorious and submits that the notoriety of the trademark will increase the likelihood of confusion.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Complainant claims to have exclusive rights to use the VALIUM trademark has not granted any licence, permission, authorization or consent to the Respondent to use the VALIUM trademark in the disputed domain name.

The Complainant submits that the Respondent uses the disputed domain name for commercial gain and with the purpose of capitalizing on the fame of the Complainant's mark VALIUM. The Complainant has furnished a screenshot of the website to which the disputed domain name resolves to demonstrate that the Respondent is using the domain name to direct Internet users to an on-line pharmacy.

The Complainant cites the decision of the panel in Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784 where it was noted that "several cases have found that 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.”

The Complainant asserts that the disputed domain name in question clearly alludes to the Complainant and there is no reason why the Respondent should have any right or interest in such domain name.

The Complainant submits that the disputed domain name was registered and is being used in bad faith. The Complainant asks this Panel to note that its use and registration of the mark VALIUM trademark, going back to the year 1961, predate the registration of the disputed domain name on October 6, 2010, and submits that the registrant of the disputed domain name must have been aware of the Complainant’s reputation and trademark when the disputed domain name was registered.

The Complainant argues that in the abovementioned, Pfizer Inc. v.jg a/k/a Josh Green, WIPO Case No. D2004-0784, the panel accepted that bad faith was established when, as in the present case, the panel found the respondent to be using the disputed domain names “as a forwarding address to a for-profit on-line pharmacy." Furthermore, the Complainant cites a similar case F. Hoffmann-La Roche AG v. Pine tree Development Ltd, WIPO Case No. D2006-0049 and submits that the website to which the disputed domain name resolves is being used as the address of a pharmacy on-line that offers in addition to the Complainant’s VALIUM products, other pharmaceuticals that directly compete with the products sold by the Complainant under the VALIUM trademark.

The Complainant submits that by using the disputed domain name the Respondent is intentionally misleading consumers and confusing them by leading them to believe that the website to which the disputed domain name resolves is associated or recommended by the Complainant and as a result, the Respondent may generate unjustified revenues and therefore is illegitimately capitalizing on the VALIUM trademark fame.

The Complainant submits that in the circumstances of the present case, the Respondent has intentionally attempted (for commercial purpose) to attract Internet users to the Respondent's websites, by creating a likelihood of confusion with the Complainant's widely known mark as to the source, affiliation and endorsement of the Respondent's website or of the products or services posted on or linked to Respondent's website.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements in respect of each of the disputed domain names to obtain an order that a domain name should be cancelled or transferred:

(1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(2) that the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) that the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has satisfied this Panel that it is the owner of and has rights in the VALIUM trademark through its global portfolio of registrations and extensive use of the mark since at least 1961.

This Panel finds that the disputed domain name is confusingly similar to the Complainant’s VALIUM trademark. The disputed domain name consists of the distinctive word “valium” in combination with the descriptive English language, descriptive word “world” and the gTLD “.com” extension.

It is now well established that a panel may ignore the gTLD “.com” extension when making the comparison for the purposes of paragraph 4 of the Policy.

The distinctive element of the disputed domain name is the Complainant’s widely known and distinctive trademark VALIUM. This Panel accepts the Complainant’s submission that the addition of the word “world” does not serve to reduce the confusing similarity inter alia because of the generic nature of the word “world” and the fact that the Complainant has a global reputation in the use of the VALIUM mark.

In the circumstances this Panel finds that the Complainant has satisfied the first element of the test in paragraph 4 of the Policy.

B. Rights or Legitimate Interests

The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interest in the disputed domain name. The Complainant has satisfied this Panel that it has exclusive rights in the use of the VALIUM mark in relation to pharmaceuticals; that the Complainant has not given any right, licence or permission to the Respondent to use the VALIUM trademark in a domain name; that the Respondent is using the disputed domain name as the address of a website offering pharmaceuticals, including pharmaceuticals that compete with the Complainant’s products on-line.

It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interest in a disputed domain name, the onus of proof shifts to the respondent for the purposes of paragraph 4 of the Policy.

In the absence of any Response or explanation on the file, this Panel is satisfied that on the balance of probabilities the Respondent has no rights or legitimate interest in the disputed domain name. In the light of the Complainant’s significant rights in the use of the VALIUM mark for pharmaceuticals established through its portfolio of trademark registrations in more than 100 countries around the world it is most improbable that the Respondent has any rights in the domain name. Furthermore on the evidence before this Panel, the Respondent is using the disputed domain name <valiumworld.com> that is confusingly similar to the Complainant’s VALIUM trademark to sell goods that are directly competing with the products that the Complainant offers for sale under the VALIUM trademark. The fact that the Respondent also appears to be offering VALIUM products for sale on the website does not mean that it can claim a legitimate interest in the domain name as he is using the Complainant’s trademark to attract customers to his website and then potentially convert those consumers to competing products.

This Panel finds that the Complainant has established the second element of the test in paragraph 4 of the Policy.

C. Registered and Used in Bad Faith

On the evidence before this Panel, the Complainant had a significant world wide reputation in the VALIUM trademark when the disputed domain name was registered in 2010.

Given the similarity of the disputed domain name and the Complainant’s VALIUM trademark, it is most probable that the domain name was chosen and registered to create the impression of an association between the mark and the domain name for Internet users. This Panel finds that on the balance of probabilities the disputed domain name was registered in bad faith in order to take predatory advantage of the Complainant’s widely known trademark and reputation.

The Complainant has furnished evidence that the Respondent has caused the disputed domain name to resolve to a website for an on-line pharmacy that offers pharmaceutical products that are directly in competition with the Complainant’s products.

In the absence of a Response or explanation from the Respondent, this Panel finds therefore that on the balance of probabilities the disputed domain name is being used by the Respondent in bad faith. By causing the disputed domain name to resolve to the competing website, the Respondent is taking predatory advantage of the Complainant’s reputation and goodwill in the VALIUM trademark and therefore he has intentionally attempted for commercial purpose to attract Internet users to the Respondent's website, by creating a likelihood of confusion with the Complainant's widely known mark as to the source, affiliation and endorsement of the Respondent's website or of the products or services posted on or linked to Respondent's website.

This Panel finds therefore that the Complainant has also established the third element in the test in paragraph 4 of the Policy and is entitled to succeed in the Complaint.

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, <valiumworld.com> be transferred to the Complainant.

James Bridgeman
Sole Panelist
Dated: March 15, 2011

 

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