WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. Nikita Marchjuk
Case No. D2011-0400
1. The Parties
The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland represented by internally.
The Respondent is Nikita Marchjuk of Moskow, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <valium-buy.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 2, 2011. On March 2, 2011, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com. a request for registrar verification in connection with the disputed domain name. On March 3, 2011, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com. 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 March 4, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 24, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 25, 2011.
The Center appointed Isabel Davies as the sole panelist in this matter on April 4, 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 contends that it has registered VALIUM as a trademark in a over 100 countries on a world-wide basis. The registrations include an international registration with priority date October 20, 1961, International Registration No. 250784. The VALIUM mark designates a sedative and anxiolytic drug belonging to the benzodiazepine family.
The Respondent registered the domain name <valium-buy.com> on November 19, 2010.
The Complainant contends that the Respondent operates a website which redirects Internet users to websites selling Valium as well as various other drugs in direct competition with the Complainant, at a website resolving to the disputed domain name.
5. Parties’ Contentions
The Disputed Domain Name Is Confusingly Similar to the Complainant’s Mark
The Complainant contends that the disputed domain name <valium-buy.com> is confusingly similar to the Complainant’s mark VALIUM.
The Complainant contends that the disputed domain name incorporates VALIUM in its entirety and the addition of a hyphen and the generic term “buy” does not negate the confusing similarity between the mark and the disputed domain name.
The Respondent Has No Rights or Legitimate Interests in the Disputed Domain Name
The Complainant contends that the Respondent has no rights or legitimate interests with respect to the disputed domain name, nor is the Respondent connected with the Complainant in any way. The Complainant has not licensed nor has it given permission to the Respondent to use the trademark in its domain name.
The Complainant contends that even though the Respondent’s website looks like an information podium, Internet users are, in fact, among other links, directed to a pharmacy online.
The Complainant contends that the Respondent has not used the disputed domain name for a bona fide offering of goods or services, but has rather intentionally chosen a domain name based on the Complainant’s registered trademark in order to redirect Internet users to a website selling goods in direct competition with the Complainant. By doing this, the Complainant asserts that the Respondent is using the Complainant’s trademark for its own commercial purposes.
Registered and Used in Bad Faith
The Complainant contends that bad faith may be found when, at the time of registration, the Respondent had knowledge of the Complainant’s well-known mark VALIUM. The Complainant contends that it is together with its affiliates, one of the world’s leading research-focused healthcare groups in the field of pharmaceuticals and diagnostics and that it has global operations in more than 100 countries.
The Complainant contends that the Respondent is using the domain name intentionally (for commercial purpose) to attract Internet users to the Respondent’s websites, by creating a likelihood of confusion with the Complainant’s mark as to the source, affiliation and endorsement of Respondent’s website or of the products or service posted on or linked to Respondent’s website.
The Complainant further contends that the Respondent, by using the disputed domain name, is intentionally misleading consumers and confusing them by making them believe that the websites behind the links are associated or recommended by the Complainant.
Furthermore, the Complainant contends that the Respondent may generate unjustified revenues and therefore is illegitimately capitalizing on the VALIUM trademark.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Policy establishes three elements, specified in paragraph 4(a), that must be established by the Complainant to obtain relief. These elements are that:
i. The Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
ii. The Respondent has no rights or legitimate interests in respect of the domain name; and
iii. The Respondent’s domain name has been registered and is being used in bad faith.
Each of these elements will be addressed below.
The Complainant must establish these elements even if the Respondent does not reply (see The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064). However, under paragraph 14(b) of the Rules, the panel is entitled to draw such inferences as it considers appropriate from a party’s failure to comply with any provision of, or requirement under, the Rules, including the Respondent’s failure to file a Response.
In the absence of a Response, the panel may also accept as true the factual allegations in the complaint (see ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009)).
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted. As the proceeding is a civil one, the Complainant bears the onus of proving its case on the balance of probabilities. The Complainant must therefore establish all three of the elements specified in paragraph 4(a) of the Policy on the balance of probabilities before a decision can be made to cancel or transfer the domain name.
A. Identical or Confusingly Similar
The Complainant is the owner of an International trademark Registration No. 250784, which was registered before the disputed domain name was registered. Compared to the Complainant’s trademark, the disputed domain name <valium-buy.com> consists of the trademark VALIUM in addition to the word “buy” connected by a hyphen. The disputed domain name is not identical to the trademark held by the Complainant, and the question is therefore whether there is confusing similarity.
The Panel agrees with the Complainant that the addition of the hyphen and the word “buy” is not sufficient to render the disputed domain name dissimilar or to prevent consumer confusion. (See F.Hoffman-La Roche AG v Pinetree, Development Ltd, WIPO Case No. D2006-0049; Roche Products Inc. v. Slava c/o Dynadot Privacy, WIPO Case No. D2010-1862 and Roche Products Inc. v. Peter Tonderby/Tonderby Designs Ltd, WIPO Case No. D2006-0698). Moreover, as the disputed domain name contains the well-known trademark VALIUM in its entirety, and the Respondent operated a website with sponsored links to direct competitors of the Complainant, the Panel finds it likely that Internet users would confuse the disputed domain name with the Complainant’s trademark.
For the reasons stated above, the Panel holds that the disputed domain name is confusingly similar to the Complainant’s trademark and the Complainant has met the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraphs 4(c)(i) – (iii) of the Policy contain a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in a domain name. The list includes: (i) using the domain name in connection with a bona fide offering of goods and services; (ii) being commonly known by the domain name; or (iii) making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.
A complainant must show a prima facie case that a respondent lacks rights or legitimate interests in a disputed domain name, after which the burden of production passes to the respondent. (See Croatia Airlines d.d. v. Modern Empire Internet Ltd, WIPO Case No. D2003-0455; and Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).
The Panel notes Société Civile Agricole Chateau Margaux v. Goldman Williams Ltd, WIPO Case No. D2001-1147, in which the panel said: “[c]ertainly, the Respondent is permitted to use any trademark as a means of indicating the goods he is selling, just as is any other person who has an interest in using the trademark to the same extent. It is, however, a non exclusive use of the trademark, i.e. it does not impinge on the right of the trade mark owner and on the right of third parties equally to use the same trade mark to indicate which goods they are selling. On the contrary, a domain name registration will only confer the use of the said domain name to its owner. Any other person will be prevented from using that domain name, cybersquatting not being tolerated any longer. The right to a legitimately registered domain name is therefore an exclusive right, and its nature is very different from the right the Respondent has to use the trademark for describing the merchandises sold in its business. Once again, if the Respondent were to be allowed to keep the domain name at issue, third parties would be prevented to indicate to the public that they are suppliers of the same [product] through the use of an Internet domain name.”
Although the Respondent apparently sold goods originating from the Complainant, in this Panel’s view this does not give it the right to register and use the mark as a domain name without the consent of the holders of the trademark. Thus, the Respondent is prevented from having rights to or legitimate interests in the domain name as against the Complainant (see AVENTIS Pharma S.A. and Merrell Pharmaceuticals Inc. v. Rx USA, WIPO Case No. D2002-0290). In any event the Panel notes the Complainant’s contention that the Respondent’s website also listed links to websites promoting the Complainant’s competitors. This is not a bona fide offering of goods or services.
Further, the Panels finds that the terms used by the Respondent are not used to identify its business or the business of the resulting website, to which its domain name was linked but were intended to take advantage of mistakes consumers are likely to make when intending to enter the Complainant’s websites. This does not constitute legitimate use of the disputed domain name. (See Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784).
The Respondent has not submitted a Response 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.
Moreover, the Respondent’s link sales site offers Valium products without prescription which is apparently illegal in the United States.
The Panel cannot view the Respondent’s website as it is no longer available. However, in the absence of a Response, the Panel accepts the Complainant’s contention that the Respondent’s website did link to websites promoting the Complainant’s competitors. By diverting traffic to third parties using paid link advertisements, 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.
As stated in paragraph 15 of the Rules, the Panel can only make its decision based on the information and evidence submitted before it and, given the circumstances, the Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel accepts the Complainant’s evidence that, prior to the website ceasing to be accessible, the Respondent’s website did link to websites promoting the Complainant’s competitors.
The Panel finds that, by using the disputed domain name for a set of links to other providers of Valium and other drugs, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark VALIUM as to the source, sponsorship, affiliation or endorsement of the website. The disputed domain name reproduces the Complainant’s trademark in its entirety. In addition to that, the Respondent’s website provided links to the Complainant’s competitors, selling competitive products and other drugs to Internet users. Therefore, the Respondent’s site at the disputed domain name would have led to confusion or a likelihood of confusion and would in all probability have attracted more customers to the site of the disputed domain name resulting in commercial gain as the Respondent’s site provided links to several commercial websites.
Furthermore, the Panel finds that the Respondent acted intentionally. The Panel finds it inconceivable that the Respondent could have registered the disputed domain name without having the Complainant’s VALIUM trademark in mind. The Respondent’s intention to use the disputed domain name as a reference to the Complainant and its trademark is obvious considering that no rights or legitimate interests in using the domain name are apparent and considering that the Complainant had been selling products using the name VALIUM for some time before the disputed domain name in dispute was registered.
The Respondent has chosen to refrain from responding to the Complaint. Such circumstances taken together support an inference of bad faith registration and use.
The Panel finds the dispute domain name was registered and is being used in bad faith and the Complainant has therefore met the requirements of paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4 of the Policy and 15 of the Rules, the Panel orders that the domain name <valium-buy.com> be transferred to the Complainant.
Dated: April 21, 2011