WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. Private Whois Service
Case No. D2011-0355
1. The Parties
The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally.
The Respondent is Private Whois Service of Nassau, Bahamas.
2. The Domain Name and Registrar
The disputed domain name <valiumdiazepam.net> (the “Domain Name”) is registered with Internet.bs Corp (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 23, 2011. On February 23, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 25, 2011, 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.
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 February 28, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 20, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 22, 2011.
The Center appointed Karen Fong as the sole panelist in this matter on March 31, 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, together with its affiliated companies, one of the world’s leading pharmaceutical companies with operations in more than 100 countries. It is the registered owner of the trade mark VALIUM in more than 100 countries worldwide including International Registration No. R250784, with a priority date of October 20, 1961 in classes 1, 3 and 5 covering over 30 countries (as evidenced by copies of the registration certificate and the renewal certificate).
The Domain Name was registered by the Respondent on November 5, 2010 and is connected to a website (the “Website”) offering information about Valium (Diazepam) and offering for sale generic Valium through a link to the website of an online pharmacy “www.rxtrue.com”.
5. Parties’ Contentions
The Complainant submits that it is has registered rights in the trade mark VALIUM which designates a sedative and anxiolytic drug belonging to the benzodiazepine family. The Complainant has built up a world-wide reputation in psychotropic medications through the VALIUM trade mark. VALIUM is a well-known trade mark through its long and extensive use as evidenced by the newspaper articles submitted by the Complainant. The Complainant also submits that Diazepam is the INN or International Nonproprietary Name of the benzodiazepine derivative, sold by the Complainant under the trade mark VALIUM.
The Domain Name is confusingly similar to the VALIUM trade mark, the Respondent has no rights or legitimate interests in respect of the Domain Name and the Domain Name was registered and is being used in bad faith. The Complainant requests transfer of the Domain Names.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name was registered and is being used in bad faith.
B. Identical or Confusingly Similar
The Panel accepts that the Complainant has registered rights in the trade mark VALIUM and that VALIUM is a well-known trade mark. The Domain Name <valiumdiazepam.net> is made up of a combination of the Complainant’s registered trade mark VALIUM and the INN “diazepam”. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy it is permissible for the Panel to ignore the generic domain suffix “.net”.
In the case of F. Hoffman-La Roche AG v. Den, WIPO Case No. D2006-0182, in relation to the disputed domain name <diazepam-valium-online.ner>, the panel there said this: “The addition of the INN “diazepam” may be understood differently, depending on the knowledge of the Internet user. Users that are aware that “diazepam” is the INN of the VALIUM product, will be confirmed in their expectation that the VALIUM product is offered online. Users not knowing the term “diazepam” may understand that the term refers to another product, offered online together with the VALIUM product. Such or similar assumptions are linked to the VALIUM product, which clearly shows that the addition of the INN “diazepam” and the term “online” cannot exclude confusing similarity between the domain name and the trademark of the Complainant.”
In this case, “valium” is the first word in the Domain Name which adds to its prominence. Those Internet users who are familiar with the word “diazepam” will regard it as being descriptive of VALIUM whilst those who do not know the term will likely understand it to be another pharmaceutical product or term which is associated to VALIUM or the makers of the Valium product. In the circumstances, the addition of “diazepam” does nothing to minimise the risk of confusion and therefore cannot avoid a finding of confusing similarity under this threshold test.
The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights.
C. Rights or Legitimate Interests
The Complainant has not granted the Respondent a licence, permission or authorisation to use VALIUM in the Domain Name. The Domain Name references the Complainant. The link to the on-line pharmacy is evidence that the Domain Name is being used by the Respondent for commercial gain.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
D. Registered and Used in Bad Faith
The Panel is satisfied that the Respondent must have been aware of the Complainant’s well-known trade mark and product when it registered the Domain Name. The Website contains information about the Valium product and is also linked to an on-line pharmacy offering for sale “VALIUM Generic Pills” in different strengths. Further, the Domain Name incorporates the Complainant’s trade mark in its entirety together with the INN of the VALIUM product “diazepam”. The above is sufficient to conclude that the registration of the Domain Name was in bad faith.
The Panel also concludes that the use of the Domain Name is in bad faith. In the case of the on-line pharmacy websites connected to the disputed domain names in F. Hoffman-La Roche AG v. Hristo Ibochev, WIPO Case No. D2010-2259, the panel there said “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.” The facts are similar in the present case. The Domain Name is confusingly similar to Complainant’s trade mark and is being used by the Respondent to attract Internet users for commercial purposes. This is clearly bad faith under paragraph 4(b)(iv) of the Policy.
As such, taking into account all the circumstances, the Panel finds that the Domain Name was registered and is being used in bad faith.
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 <valiumdiazepam.net> be transferred to the Complainant.
Dated: April 14, 2011