World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

F. Hoffmann-La Roche AG v. Administrator Domain

Case No. D2011-1452

1. The Parties

The Complainant is F. Hoffmann-La Roche AG, Basel, Switzerland, represented Internally.

The Respondent is Administrator Domain, Primaverri, Slatina, Italy.

2. The Domain Names and Registrar

The disputed domain names <buy-valium.biz>, <buyvalium5mgonline.com> and <genericvalium.biz> are registered with Center of Internet Names in Ukraine dba UKRNAMES.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 29, 2011. On August 29, 2011, the Center transmitted by email to UKRNAMES a request for registrar verification in connection with the disputed domain names. On September 1, 2011, Center of Internet Names in Ukraine dba 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 September 2, 2011 the Center notified the Parties that as the language of the registration agreement for the disputed domain name was Russian (as per information provided by Center of Internet Names in Ukraine dba UKRNAMES), 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 September 5, 2011 the Complainant confirmed that a request had already been submitted for English to be the language of the proceedings in the Complaint (pages 4 & 5; paragraph 8.1 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 September 13, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 3, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 10, 2011.

The Center appointed Paul E. Mason as the sole panelist in this matter on October 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.

In the Complaint, the Complainant justified use of English in the proceeding by showing that the Respondent must have good knowledge of English because all the websites to which the disputed domain names resolved were in English, not Russian or Ukrainian. The Panel accepts this justification and finds that it is therefore appropriate to conduct the proceeding in the English language.

A further procedural question is addressed by the Panel as to the rules and mechanisms to apply to this dispute which involves domain names with both “.biz” and “.com” extensions, whether it should be the UDRP, the RDRP or some combination of them. It is the content of the relevant Registration Agreement which determines the applicable mechanism(s) in this regard and Center of Internet Names in Ukraine dba UKRNAMES confirmed to the Center that the Registration Agreement for these domain names explicitly adopted the UDRP mechanism for resolving disputes over these names. Therefore this Decision is based on the UDRP criteria as enumerated below.

4. Factual Background

Valium is a very well-know trademark for a relaxant drug which was first registered by the Complainant in 1961 according to the Complaint. Since then, the Complainant has registered the mark in a multitude of countries. “Valium” is famous worldwide as the name for this type of drug.

The disputed domain names were registered much later, on June 21, June 29, and July 3, 2011 according to the information provided by the Center of Internet Names in Ukraine dba UKRNAMES.

5. Parties’ Contentions

A. Complainant

The core of the Complainant’s case is that its trademark and product Valium are famous worldwide, the mark was first registered in 1961, that the Respondent made small variations to the mark in registering similar domain names this year, and these domain names resolved to websites acting as “on-line pharmacies” essentially competing with the Complainant’s own channels of product distribution.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

It is well settled that a domain name with small changes in the name of a trade or service mark remains generally confusingly similar to that mark. The Panel finds that is the case with all three disputed domain names here:

<buy-valium.biz>

<buyvalium5mgonline.com>

<genericvalium.biz>

In the Panel’s view, each of the disputed domain names plays heavily on the Complainant’s trademark to create confusion in the consumer market. Even more so because the variations selected by the Respondent all imply commercializing the product in a legitimate manner – “buy valium”, “buy 5 mg (milligrams) online”, “generic valium”.

Therefore the Panel finds each of them to be confusingly similar to the Complainant’s mark VALIUM.

B. Rights or Legitimate Interests

The Complainant confirms in its Complaint that it has given no license or other permission to the Respondent to use the disputed domain names and has made a prima facie case that the Respondent does not have any rights or legitimate interest in the disputed domain names. Therefore the burden shifts to the Respondent to show that it indeed does have rights or legitimate interests in the disputed domain names. Since the Respondent did not respond to this Complaint, it has failed to meet this burden. The Panel therefore finds that it has no such rights or legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

The Complainant asserts bad faith registration by the fame of its mark and the fact that the disputed domain names were registered very recently in 2011 when the Respondents must have had knowledge of the value and worldwide fame of the VALIUM mark. The Panel agrees with this contention and finds bad faith registration of the disputed domain names.

Regarding the key element of bad faith use of the domain names, the Complainant contends that each of the disputed domain names resolved to corresponding websites which were acting as forwarding mechanisms to online pharmacies selling its products in a manner outside of its legitimate product distribution channels. Annex 5 to the Complaint contains screenshots of these sites taken in August 2011 showing this to be the case.

The Complainant cites two UDRP cases to support its argument that this constitutes bad faith use of the domain names – Pfizer Inc v. jg a/k/a Josh Green, WIPO Case No. D2004-0784 for the proposition that bad faith is established when a respondent is using a domain name as a forwarding tool for online pharmacies; and F. Hoffmann-LaRoche v. Pinetree Development Ltd., WIPO Case No. D2006-0049 for the proposition that bad faith use is proven when online pharmacy websites are visited as a result of domain names that are confusingly similar to a pharmaceutical company’s established trademark.

The Panel finds both of these decisions relevant to the current case and finds bad faith use of the disputed domain names by Respondent.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, <buy-valium.biz>, <buyvalium5mgonline.com> and <genericvalium.biz> be transferred to the Complainant.

Paul E. Mason
Sole Panelist
Dated: November 3, 2011

 

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