WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Roche Products Inc. v. David Poland
Case No. D2011-1284
1. The Parties
Complainant is Roche Products Inc. of Panama, represented by Lathrop & Gage LLP, United States of America.
Respondent is David Poland of Dublin, Republic of Ireland.
2. The Domain Name and Registrar
The disputed domain name <originalvalium.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 July 26, 2011. On July 27, 2011, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On July 28, 2011, Moniker Online Services, LLC 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 29, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 18, 2011. Respondent did not submit any response. The Center was rather notified by United Parcel Service (UPS) by email of August 3, 2011, that Respondent had refused the delivery of the Written Notice of the Complaint. Accordingly, the Center notified the Respondent’s default on August 19, 2011.
The Center appointed Stephanie G. Hartung as the sole panelist in this matter on August 23, 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 world’s leaders in research and development of pharmaceutical and diagnostic products with global operations in more than 100 countries. Part of the pharmaceutical product range is “Valium”, a psychotherapeutic agent indicated for the treatment and prevention of anxiety. “Valium” is a controlled substance and may not be sold in many countries worldwide without a medical prescription.
Complainant is the owner of at least the following trademark registrations relating to “Valium”:
- United States word mark VALIUM, United States Patent and Trademark Office (USPTO) Registration Number: 725,548; Registration Date: December 26, 1961; by assignment of December 21, 1982; First Use Date: June 12, 1961; Status: Active.
- United States design mark V, USPTO Registration Number: 1,314,271; Registration Date: January 15, 1985; First Use Date: January 12, 1984; Status: Active.
Complainant’s parent company, F. Hoffmann-La Roche AG, owns the domain name <valium.com>, which redirects to a website “www.rocheusa.com/products” through which customer information is being provided, inter alia, as to the “Valium” pharmaceutical product.
The disputed domain name was created on April 15, 2011. It currently redirects to a website at “www.originalvalium.com” which is a typical parking-site composed of hyperlinks to numerous third parties’ websites, some of which either offer “Valium” itself, a “Valium” generic (diazepam) and/or other anti-anxiety products of Complainant’s competitors.
On July 19, 2011, Complainant’s legal counsel sent an email and a FedEx letter requesting a transfer of the disputed domain name to Respondent’s contact information as indicated in the respective WhoIs. While the email transmission apparently was successful, the FedEx letter returned as “incorrect address”.
Complainant requests the disputed domain name to be transferred to Complainant.
5. Parties’ Contentions
Complainant alleges that since 1961, sales of the “Valium” product exceeded hundreds of millions of dollars in the United States of America. The VALIUM trademark was ever since extensively promoted in print advertisements, medical journals, promotional materials, packaging, medical informational materials, television advertising and direct mailings. Thus, the product “Valium” acquired over the years fame and celebrity in the United States of America and throughout the world.
Complainant contends that the disputed domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant argues that the designation “valium” is protected as a trademark in favor of Complainant in a multitude of countries worldwide. Complainant emphasizes that the disputed domain name contains the entire VALIUM trademark. The addition of words or letters to a trademark used in a domain name, however, would not alter the fact that the domain name was confusingly similar to the trademark, thus, the descriptive language added in the case at hand, namely “original”, did not prevent a likelihood of confusion in this case.
Complainant further argues that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant points to the fact that the term “valium” is not a word and has no valid use other than in connection with Complainant’s trademark VALIUM. Complainant asserts not to have authorized Respondent to use its VALIUM trademark or to incorporate it into any domain name. Based upon Respondent’s website, it was clear that neither Respondent nor its website had been commonly known by the disputed domain name. Given that Respondent’s website to which the disputed domain name resolves, offered Complainant’s “Valium” drug as well as other competitors’ anti-anxiety products, and other pharmaceutical products of competitors for sale through linked sites, Respondent apparently sought to capitalize on the reputation associated with Complainant’s VALIUM trademark and to use that recognition to divert Internet users seeking Complainant’s website or the “Valium” product to a website wholly unrelated to Complainant. Complainant states that Respondent’s appropriation and use of Complainant’s famous VALIUM trademark in a domain name and for its commercial website was a clear attempt to create and benefit from consumer confusion regarding the association between Complainant’s bona fide business and Respondent’s sales activities. However, the unauthorized appropriation of Complainant’s trademark in the disputed domain name and the commercial use of the corresponding website could not confer rights or legitimate interests upon Respondent.
Finally, Complainant contends that the disputed domain name was registered and is being used in bad faith.
In support of such contention, Complainant argues, inter alia, that:
(i) “valium” is not a word;
(ii) VALIUM is an invented and coined famous trademark that has an extremely strong worldwide reputation;
(iii) There is no relationship whatsoever between Respondent and Complainant, and Complainant has not given Respondent permission to use its famous VALIUM trademark by any means;
(iv) Under these circumstances, the only reasonable conclusion is that Respondent was aware of the VALIUM trademark and seeks to divert Internet users to Respondent’s website with own commercial gain, all to the confusion of the public and detriment of Complainant;
(v) By operating the disputed website, Respondent has intentionally attempted to attract for financial gain Internet users to Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of Respondent’s website or the goods on or through Respondent’s website; and, finally
(vi) Respondent’s website which offers Complainant’s famous “Valium” as well as other competitive anti-anxiety products and pharmaceutical products of other competitors, has no legitimate business connection with Complainant or its “Valium” psychotherapeutic agent product, meaning that such unauthorized use of Complainant’s famous trademark suggests opportunistic bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Respondent's default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(e) of the Rules provides that if Respondent does not submit a response, in the absence of special circumstances, the Panel is to decide the dispute solely based upon the Complaint.
A. Identical or Confusingly Similar
The Panel concludes that the disputed domain name <originalvalium.com> is confusingly similar to the trademark (word mark) VALIUM in which Complainant has shown to have rights with respect to the territory of the United States of America.
The disputed domain name not only incorporates the VALIUM trademark in its entirety. Moreover, it has been held in numerous UDRP decisions and has meanwhile become a consensus view (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.9) that the addition of a nearly generic or descriptive wording to a trademark in a domain name is normally insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP. Therefore, the mere adding of the generic term “original” to Complainant’s trademark VALIUM in order to “compose” the disputed domain name does not keep the Panel from holding that the disputed domain name is still confusingly similar to Complainant’s VALIUM trademark.
Therefore, the first element under the Policy as set forth by paragraph 4(a)(i) in the case at hand is fulfilled.
B. Rights or Legitimate Interests
The Panel further finds Complainant to have established a prima facie case according to which Respondent has no rights or legitimate interest in the disputed domain name. Even though it would have been desirable if the Complaint addressed a bit more precisely to the three different factors provided by paragraph 4(c) of the Policy, the Panel is still convinced that on the basis of Complainant’s (undisputed) contentions in total, Respondent apparently has neither made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has he been commonly known by the disputed domain name, nor it can be found that Respondent made a legitimate noncommercial or fair use without intent for commercial gain.
The Panel is persuaded from Complainant’s allegations and the supportive evidence that Respondent has not been authorized to use Complainant’s VALIUM trademark - neither as a domain name nor on Respondent’s website or in any other way. Moreover, there is no indication whatsoever to believe that Respondent is a (authorized) reseller of “Valium”, especially since the “Valium” psychotherapeutic agent is a controlled substance and may not be sold in many countries worldwide without a medical prescription. The disputed domain name rather resolves to a website that even facilitates the purchase of “Valium” and/or its generic equivalent from third parties, some of which are apparently direct competitors to Complainant. Such use of the disputed domain name may hardly be found to qualify as a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy.
Moreover, given that the term “valium” is neither a (dictionary) word nor a personal or nick name etc., there is no reason to believe that Respondent is commonly known by the domain name as set forth by paragraph 4(c)(ii) of the Policy.
Quite to the contrary, Complainant has produced sufficient evidence that the VALIUM trademark has been in use and has consistently been advertised and promoted for many decades not only in the territory of the United States of America, but worldwide. Many UDRP Panels, therefore, have considered VALIUM as a famous trademark (e.g., Roche Products Inc. v. Dmitriy Feschenko, WIPO Case No. D2010-1665; F. Hoffmann- La Roche AG v. Ashima Kapoor, WIPO Case No. D2005-1351; F. Hoffmann-La Roche AG v. NetMarketing cc, WIPO Case No. D2005-1216). The disputed domain name, however, resolves to a typical parking site with hyperlinks which redirect Internet users to numerous third parties’ websites which are not at all specifically tailored to Complainant and the “Valium” product, but rather include commercial Internet offers of Complainant’s direct competitors on the pharmaceutical market. Given the reputation of the VALIUM trademark on the one hand, and the absence of any other nearby (legitimate) reason for Respondent to use the term “valium” on the other hand, in the eyes of the Panel, it is quite evident that Respondent has set up the website “www.originalvalim.com” with the clear intent to divert Internet users, who were actually interested in the worldwide famous “Valium” product, and, thus, to generate so-called “Click-Through-Commissions” or “Pay-Per-Clicks” from the diverted Internet traffic. Such use of the disputed domain name, however, does not of itself confer any rights or legitimate interest arising from a “bona fide offering of goods or services” (as already stated above) or from a “legitimate noncommercial or fair use” as provided by the Policy, paragraph 4(c)(iii) (for further references, see WIPO Overview 2.0, paragraph 2.6).
Accordingly, Complainant has made up a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Now, the burden of proof shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview 2.0, paragraph 2.1). In the case at hand, Respondent did not come back at all to Complainant’s allegations, neither as they were brought forward by means of the letter sent by Complainant’s legal counsel on July 19, 2011, to both Respondent’s postal and email addresses as indicated in the WhoIs record, nor as they were included in the Complaint sent to Respondent by the Center on July 29, 2011, of which the delivery of the Written Notice Respondent even refused.
Therefore, the Panel rules that Complainant has also satisfied paragraph 4(a)(ii) and thus the second element of the Policy.
C. Registered and Used in Bad Faith
The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith.
As pointed out earlier, Complainant has produced sufficient evidence that the VALIUM trademark has been in use and has consistently been advertised and promoted already since 1961 not only in the territory of the United States of America, but worldwide. Therefore, for the purpose of this proceeding, VALIUM may be considered as a famous trademark (e.g., Roche Products Inc. v. Dmitriy Feschenko, WIPO Case No. D2010-1665; F. Hoffmann- La Roche AG v. Ashima Kapoor, WIPO Case No. D2005-1351; F. Hoffmann-La Roche AG v. NetMarketing cc, WIPO Case No. D2005-1216). Consequently, it is reasonable and fair to argue that Respondent, whose apparent residence is in Ireland, thus outside of the territory for which Complainant’s United States trademark VALIUM enjoys protection, was still aware of Complainant’s famous product “Valium” and the corresponding trademark VALIUM at the time of registration of the disputed domain name. This presumption is not only reinforced by the fact that the disputed domain name resolves to a typical parking site with numerous hyperlinks relating to the “Valium” product and/or its generics. Moreover, the fact that Respondent added the term “original” to Complainant’s famous VALIUM trademark when “creating” and registering the disputed domain name clearly indicates that Respondent knew by that time that “Valium” was a product available as an “original” or as a “derivate”. There is, however, no indication to believe that Respondent’s knowledge did not as well include the VALIUM reputation and fame. Consequently, it must be found that Respondent, by using the disputed domain name, intentionally attempted to attract, for commercial gain, Internet users to his own website, by creating a likelihood of confusion with Complainant’s famous VALIUM trademark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or a product thereon. Such circumstances, however, shall be evidence of registration and use of the disputed domain name in bad faith within the meaning of paragraph 4(b)(iii) of the Policy.
In connection with this finding, it carries weight in the eyes of the Panel that Respondent not only kept silent on Complainant’s approaches to communicate with Respondent before filing this Complaint, but that Respondent (1) apparently provided false contact information (e.g. a false postal address) in the WhoIs register and (2) even refused to accept the delivery of the Written Notice of the Complaint sent to him by the Center on July 29, 2011. Such active measures to deny any participation whatsoever in the ongoing UDRP proceeding relating to the disputed domain name may not be qualified other than a further indication of Respondent’s acting in bad faith (see, e.g., Telstra Corporation Ltd. v. Nuclear Marshmallows, WIPO Case No. D2003-0003).
Therefore, the Panel finds that also the third element under the Policy set forth by paragraph 4(a)(iii) is fulfilled.
Accordingly, the Panel concludes that Complainant has satisfied all of the three requirements of paragraph 4(a) of the Policy.
For all 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 <originalvalium.com> be transferred to Complainant.
Stephanie G. Hartung
Dated: September 1, 2011