WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Roche Products Inc. v. Jatin Jani
Case No. D2011-1111
1. The Parties
Complainant is Roche Products Inc. of Panama, represented by Lathrop & Gage LLP, United States of America (“United States”).
Respondent is Jatin Jani of Houston, United States.
2. The Domain Name and Registrar
The disputed domain name <ordervalium.net> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 30, 2011. On July 1, 2011, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On July 1, 2011, eNom. transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on July 13, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 2, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 3, 2011.
The Center appointed Sandra A. Sellers as the sole panelist in this matter on August 16, 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
Complainant, together with its affiliated companies, is one of the leaders in research and development of pharmaceutical and diagnostic products and has global operations in more than 100 countries. Complainant’s mark VALIUM is registered worldwide for a pharmaceutical psychotherapeutic agent. (For example, the United States Registration No. 725,548.) The VALIUM mark has been in use since 1961.
The parent company of Complainant, F. Hoffmann-La Roche AG, owns the domain name <valium.com>, which was registered in 1997.
Complainant has heavily advertised and promoted its VALIUM psychotherapeutic agent, creating goodwill in the United States and throughout the world. Sales of VALIUM pharmaceuticals have exceeded hundreds of millions of dollars in the United States since 1961.
Respondent registered <ordervalium.net> on March 23, 2011. On June 21, 2011, Complainant sent a cease and desist letter to Respondent, to which Complainant received no response.
5. Parties’ Contentions
Complainant alleges that the disputed domain name is confusingly similar to Complainant’s mark because it consists of Complainant’s mark in its entirety, combined with the generic word “order”. Complainant further alleges that Respondent has no rights or legitimate interests in the disputed domain name, and that it registered and uses the disputed domain name in bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
As set forth above, Complainant’s mark VALIUM is registered worldwide for a pharmaceutical psychotherapeutic agent. The VALIUM mark has been in use since 1961. Complainant clearly has rights in the VALIUM mark.
Complainant has heavily advertised and promoted its Valium psychotherapeutic agent, creating goodwill in the United States and throughout the world. Sales of Valium pills have exceeded hundreds of millions of dollars in the United States since 1961.
For the purposes of this proceeding, this Panel considers the VALIUM trademark to be a famous mark. See Roche Products Inc. v. Dmitriy Feschenko, WIPO Case No. D2010-1665, which concerned the domain name <order-valium.net> (hereinafter Roche v Feschenko), citing F. Hoffmann-La Roche 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 incorporates complainant’s mark in its entirety, with the addition of the generic word “order.” Many panels have held that the addition of a generic term does not sufficiently distinguish the disputed domain name from a complainant’s mark as to avoid confusing similarity with Complainant’s mark.
In particular, this dispute is strikingly similar to Roche v Feschenko, in which the Panel ordered that the domain name <order-valium.net> be transferred to Complainant: the only difference between the current dispute and Roche v Feschenko is the addition of a hyphen. In Roche v Feschenko, the Panel found that
“the addition of the term “order” to the VALIUM mark does not make the disputed domain name distinctive from Complainant’s trademark. The Panel notes that the term is descriptive and Respondent’s website was linked to an online pharmacy which offers for sale products under the VALIUM mark. Consequently, the addition of this term to 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 ordering the VALIUM drug. See Hoffmann-La Roche Inc. v. Patsy Hail, supra.”
Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark and that Complainant has established the first of the three elements that it must prove.
B. Rights or Legitimate Interests
Because it is generally difficult for a complainant to prove the fact that a respondent does not have any rights or legitimate interests in a disputed domain name, previous UDRP decisions have found it sufficient for a complainant to make a prima facie showing of its assertion.
Respondent is not affiliated with or related to Complainant, nor is Respondent licensed or authorized to use the VALIUM mark. On the evidence before the Panel, Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name. The Panel is satisfied that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in the disputed domain name.
Respondent is in default, and has not provided any evidence in its own favor.
The Panel finds that the evidence is sufficient to establish that Respondent has no rights or legitimate interests in the disputed domain name, and thus Complainant meets the second criterion of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The VALIUM mark has been in use since 1961, from which time it has generated sales of hundreds of millions of dollars in the United States. As set forth above, this Panel and others have found that the VALIUM mark is famous. This Panel therefore infers that Respondent was aware or must have been aware of Complainant’s mark when Respondent registered the disputed domain name, and therefore registered it in bad faith
Under paragraph 4(b)(iv) of the Policy, the Panel may find that Respondent has used the disputed domain name in bad faith if “[respondent] has intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] web site or location or of a product or service on your web site or location.” Here, the disputed domain name resolves to a website that contains links, such as “www.drugstore.com” and “www.legalmedsonline.com”, to buy VALIUM pharmaceuticals or its generic substitutes, or to buy competing anti-anxiety products, all for the commercial benefit of Respondent. Respondent’s use of the disputed domain name clearly is an attempt to create confusion to attract Internet users to Respondent’s website for commercial gain.
It is now a well-known practice to display on a web page or search engine various links to other commercial websites under a pay-per-click commission scheme: every link activated by an Internet user enables the host to collect financial remuneration proportional to the number of connections. See, e.g., Deutsche Telekom AG v. WWW Enterprise, Inc., WIPO Case No. D2004-1078. Therefore, in the Panel’s view, it is evident that Respondent has registered and used the disputed domain name with the intent to attract Internet customers looking for Complainant’s Valium pharmaceuticals, thereby likely profiting from click-through revenue generated by the sponsored links.
This Panel finds that Respondent has registered and used the disputed domain name in bad faith, within the meaning of paragraph 4(b)(iv) of the Policy and that Complainant meets the third criterion of paragraph 4(a) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <ordervalium.net> be transferred to Complainant.
Sandra A. Sellers
Dated: August 23, 2011