WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Roche Products Inc. v. John Hellken
Case No. D2011-1277
1. The Parties
The Complainant is Roche Products Inc., British Overseas Territory of Bermuda, represented by Lathrop & Gage LLP, United States of America.
The Respondent is John Hellken, New York, New York, United States of America.
2. The Domain Name and Registrar
The disputed domain name <buyvaliumsite.com> is registered with the Center of Ukrainian Internet Names (UKRNAMES).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 26, 2011. On July 27, 2011, the Center transmitted by email to UKRNAMES a request for registrar verification in connection with the disputed domain name. On August 9, 2011, the Center of Ukrainian Internet Names UKRNAMES transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details
On August 9, 2011 the Center notified the Complainant that as the language of the registration agreement for the disputed domain name was Russian (as per information provided by the Registrar), the Complainant would need to either provide satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English; submit the Complaint translated into Russian; or submit a request for English to be the language of the administrative proceedings. On August 11, 2011 the Complainant confirmed that a request had already been submitted for English to be the language of the proceedings in the Complaint (paragraph 10 of the Complaint) providing the reasons for such request. The Respondent did not provide any comments in this regard.
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 August 18, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was September 7, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 11, 2011.
The Center appointed Thomas P. Pinansky as the sole panelist in this matter on October 13, 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’s mark VALIUM is a protected trademark for a pharmaceutical psychotherapeutic agent in a multitude of countries worldwide. VALIUM was registered in the United States Patent and Trademark Office (“U.S.P.T.O”) in 1961. The Complainant also registered a design trademark consisting of a circular shaped tablet with a stylized “V” punched through the center of the tablet in 1984. VALIUM was extensively promoted in print advertisements, medical journals, promotional materials, packaging, medical information materials, television advertising and direct mailings. The product has acquired fame and symbolizes the goodwill that Roche, the parent company of the Complainant, has created in the United States and worldwide. Roche owns and has registered the domain name <valium.com>. The disputed domain name at issue contains the entire VALIUM trademark of Roche.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to marks in which the Complainant has rights.
The Complainant also contends that the Respondent has no rights or legitimate interests in the disputed domain name, and confirms that it has not authorized or licensed rights to the Respondent in any respect.
Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Language of Proceedings
The Complaint was filed in the English language. It is noted that the language of the registration agreement for the domain name in dispute is Russian.
According to Paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the Panel decides otherwise. The spirit of Paragraph 11 is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfort with each language, the expenses to be incurred and the possibility of delay in the proceeding in the event translations are required and other relevant factors.
The Complainant is not able to communicate efficiently in Russian, conducting business largely in English and the Respondent is evidently able to do business in English as his Whois address is located in the United States. If the Complainant were to submit all documents in Russian, the administrative proceeding would be unduly delayed and the Complainant would have to incur substantial expenses for translation. Therefore, in consideration of the above circumstances and in the interest of fairness to both parties, the Panel hereby decides, under Paragraph 11 of the Rules, that English shall be the language of proceeding in this case. See Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679.
B. Substantive Elements of the Policy
Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint on the grounds of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Under paragraph 4(a) of the Policy, the Complaint must prove each of the following:
(i) the disputed 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 the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
C. Identical or Confusingly Similar
The trademark VALIUM of the Complainant is known in its field of activity and the Complainant has continually developed the goodwill and repute of its trademark for many years. The addition of generic terms such as “buy” and “site” to the disputed domain name has little, if any, effect on a determination of confusing similarity between the domain name and the mark. See Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253; furthermore, mere addition of a generic or descriptive term does not exclude the likelihood of confusion. See PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189. Numerous WIPO UDRP decisions have recognized that adding a generic word is insufficient to give any distinctiveness to the domain name in dispute. See PepsiCo, Inc. v. Kieran McGarry, WIPO Case No. D2005-0629.
The disputed domain name wholly incorporates the Complainant’s distinctive trademark and in the Panel’s view creates sufficient similarity to be deemed identical to or confusingly similar to the Complainant’s trademark pursuant to the Policy, paragraph 4(a)(i).
D. Rights or Legitimate Interests
According to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the disputed domain name. In connection with the burden of proof, several decisions of UDRP panels have held that “[o]nce a Complainant establishes prima facie showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondents to rebut the showing.” See LEGO Juris A/S v. Chung Hong Phil, WIPO Case No. D2009-1288; Ets Leobert, SARL v. Jeonggon Seo, WIPO Case No. D2009-0004; University City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784; International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683.
The Complainant has asserted that the Respondent has no relationship with or authorization from the Complainant to use its mark; the Panel further notes that there is nothing in the record to suggest that the Respondent is, or has ever been, commonly known by the disputed domain name. The Panel’s view is that these facts must be taken as proven in the circumstances of this case provided that they have not been denied by the Respondent.
The Respondent failed to invoke any circumstances that could have demonstrated any right or legitimate interest in the domain name under paragraph 4(c) of the Policy.
Accordingly, the Panel finds that the Respondent has no right or legitimate interest in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy.
E. Registered and Used in Bad Faith
Both under past UDRP decisions (see for instance Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806 and Nike, Inc. v. B.B. de Boer, WIPO Case No. D2000-1397) and under the Policy itself (see paragraph 2), a well-established principle is that when someone registers a domain name, it represents and warrants to the registrar that, to its knowledge, the registration of the domain name will not infringe the rights of any third party. In the case at issue, the Panel reasonably finds that since the Complainant’s mark is widely known, it is unlikely that the Respondent, at the time of registration of the disputed domain name or thereafter, was not aware of the Complainant’s trademark.
Given the fame of the Complainant’s marks, the Panel is of the opinion that the Respondent was aware or should have been aware of the Complainant’s mark and claims of rights thereto at the time of the registration of the disputed domain name. Further, any trademark check of the records of the patent and trademark offices of various jurisdictions would have made the Complainant’s registrations known to the Respondent.
The Complainant cites paragraph 4(b)(iv) of the Policy, and notes that the Respondent, in using the domain name, intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website or of the products sold on that website.
The Respondent is, in using the domain name, attracting Internet users to the Respondent’s website. The redirection of a domain name reproducing a prior trademark to this kind of referral website is further evidence of bad faith. See Big Dog Holding, Inc. d/b/a/ Big Dog Sportswear v. Frank Day, Red River Farms, Inc., NAF Claim No. FA 93554, at paragraph 8.
The conduct described above falls squarely within paragraph 4(b)(iv) of the Policy and accordingly, the Panel concludes on the record before it that the Respondent registered and is using the disputed domain name 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 <buyvaliumsite.com> be transferred to the Complainant.
Thomas P. Pinansky
Dated: October 28, 2011