WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. Private Whois buyvaliumdiazepam.org
Case No. D2011-1463
1. The Parties
The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, internally represented.
The Respondent is Private Whois buyvaliumdiazepam.org of Nassau, Bahamas.
2. The Domain Name and Registrar
The disputed domain name <buyvaliumdiazepam.org> is registered with Internet.bs Corp.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 30, 2011. On August 30, 2011, the Center transmitted by email to Internet.bs Corp. a request for registrar verification in connection with the disputed domain name. On September 1, 2011, Internet.bs Corp. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing its contact details thereon.
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 1, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was September 21, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 26, 2011.
The Center appointed Reynaldo Urtiaga Escobar as the sole panelist in this matter on September 30, 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.
The administrative proceedings were conducted in English for this was the language of the disputed domain name’s Registration Agreement.
4. Factual Background
The Complainant, which was founded in 1896, is one of the world’s largest pharmaceutical companies with operations in more than 100 countries, over 80,000 employees, and sales totaling CHF 47.5 billion in 2010.
The Complainant has registered and used internationally since 1961 the mark VALIUM in connection with a top-selling drug prescribed for anxiety disorders.
The disputed domain name was registered on July 1, 2011, and currently resolves to a portal showing click-on images to an online pharmacy broker’s website at “www.canada-medstore.com/valium.html” offering for sale generic VALIUM pills, among several other generic drugs.
5. Parties’ Contentions
The Complainant’s factual and legal submissions can be summarized as follows:
i. The mark VALIUM is well known and notorious, and has a global reputation;
ii. As the mark VALIUM is incorporated in its entirety in the disputed domain name, the latter is confusingly similar to the Complainant’s mark;
iii. The Complainant’s use and registration of the mark VALIUM predates the Respondent’s registration of the disputed domain name;
iv. The mere addition of the international non-proprietary name of the drug, that is “diazepam”, to the disputed domain name, does not in any way distinguish the latter from the Complainant’s mark;
v. The Respondent has no rights or legitimate interests in respect of the disputed domain name in view of the fact that no license, permission or authorization was granted to use “Valium” in the disputed domain name;
vi. The Respondent uses the disputed domain for commercial gain and with the purpose of capitalizing on the fame of the Complainant’s VALIUM mark;
vii. The disputed domain name was registered in bad faith since at the time of its registration, the Respondent had knowledge of the Complainant’s well-known product/mark VALIUM;
viii. The Respondent has intentionally attempted to attract Internet users by creating a likelihood of confusion with the Complainant’s well-known mark as to the source, affiliation and endorsement of the Respondent’s website or of the products or services advertised therein.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to make out its case, the Complainant must demonstrate that the following three conditions are met:
i. The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
ii. The Respondent has no rights or legitimate interest in respect of the disputed domain name; and
iii. The disputed domain name has been registered and is being used in bad faith.
The Respondent’s default
Even though the Respondent’s default does not relieve the Complainant of the burden of establishing the three elements required by paragraph 4(a) of the Policy (see paragraph 4.6 of the WIPO Overview of WIPO Panels Views on Selected UDRP Questions, Second Edition, “WIPO Overview 2.0”), the Panel may accept all reasonable and supported allegations and inferences made in the Complaint as true. See Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403 (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint) and also Vertical Solutions Management, Inc. v. webnet-marketing, inc., NAF Claim No. 95095 (holding that the respondent’s default allows all reasonable inferences of fact in the allegations of the complainant to be deemed true).
A. Identical or Confusingly Similar
As noted by countless UDRP panels, the question under paragraph 4(a) of the Policy is whether the disputed domain name is confusingly similar to the Complainant’s mark, not whether the website to which the disputed domain name resolves will confuse Internet users. See The Vanguard Group, Inc. v. John Zuccarini, WIPO Case No. D2002-0834 (A complainant need not establish actual confusion because the test is objective, not subjective).
Accordingly, from a side-by-side comparison between “buyvaliumdiazepam” - being the relevant portion of the disputed domain name -, and the mark VALIUM, it becomes apparent that the former reproduces the Complainant’s well-known and highly distinctive mark in its entirety.
A finding of confusing similarity is warranted where the disputed domain name wholly incorporates the Complainant’s well-known mark despite the addition of an ordinary term like “buy”. See F. Hoffmann-La Roche AG v. Domain Admin, PrivacyProtect.org / Sergey Mishin, WIPO Case No. D2010-1256 (finding the domain name <buy-xenical.org> to be confusingly similar to the mark XENICAL as the word “buy” could imply some endorsement on the part of the complainant); also Sanofi-Aventis v. Webinterfaces LLC, WIPO Case No. DWS2005-0003 (rather than distinguishing the respondent’s domain name from the complainant’s trademark, the addition of the generic word “buy” makes <buyambien.ws> confusingly similar to the mark AMBIEN).
The fact that “diazepam” is the generic or international non-proprietary name (INN) for VALIUM does nothing to minimize the risk of confusion over the Internet between the disputed domain name and the Complainant’s mark. To the contrary, it is foreseeable that the presence of “diazepam” in the disputed domain name will actually confuse a large number of Internet users. See F. Hoffmann-La Roche AG v. Private Whois Service, WIPO Case No. D2011-0355 (Those Internet users who are familiar with the word “diazepam” will regard it as being descriptive of VALIUM whilst those who do not know the term will likely understand it to be another pharmaceutical product or term which is associated to VALIUM or the makers of the Valium product).
As a result, this Panel finds that the Complainant has met the first threshold of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
First of all, the Panel takes note of the Complainant’s unrebutted representation never to have licensed or authorized the Respondent to use its VALIUM mark as domain name or otherwise.
Given the notoriety of the Complainant’s mark, it does not seem plausible that the Respondent is commonly known by or is trading under the name “buyvaliumdiazepam.org”. In fact, the entity associated with the website in question trades under the name “Canada-Medstore.com”.
Having said that, it is to be inferred from the evidence on record that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers, nor is it using it in connection with a bona fide offering of goods or services.
According to the consensus view of previous UDRP panels, a reseller can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if inter alia (1) the respondent is actually offering the goods or services at issue, (2) the respondent is using the site to sell only the trademarked goods, and (3) the site is accurately disclosing the respondent’s relationship with the trademark owner. See the WIPO Overview 2.0 cited above, and also Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 cited by the Complainant. The Panel finds that the Respondent here fails to satisfy the reseller standard because the website at the disputed domain name: i) does not actually sell genuine VALIUM drugs but generic pills thereof through a different portal; ii) baits Internet users to buy genuine VALIUM drugs and then switch them to generic versions of the Complainant’s drug, and several other pharmaceutical products; and iii) does not negate a relationship with the Complainant.
Based on the foregoing considerations and in view of the Respondent’s default, the Panel concludes that none of the defenses set forth in paragraph 4(c) of the Policy operate in favor of the Respondent.
The Complainant has thus demonstrated the second limb of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
It bears noting that the mark VALIUM is an invented word with a high degree of individuality and distinctiveness, and that the said mark has become well known worldwide by reason of its use in connection with a drug that has been taken by millions of people to relieve stress and to overcome insomnia.
Consequently, it is found that the Respondent was not only likely aware of the VALIUM mark at the time of registration of the disputed domain name but has since traded on the goodwill associated with the said mark, as proven by the fact that the online buyer is ultimately redirected to the Respondent’s website at “www.canada-medstore.com/valium.html”. As held in Digital Spy Limited v. Moniker Privacy Services and Express Corporation, WIPO Case No. D2007-0160, registering a domain name with knowledge of another’s trademark rights in the name, and with intention to divert traffic is evidence of bad faith.
In view of this, the Panel has come to the conclusion that the Respondent has been intentionally attempting to attract for commercial gain, Internet users to its own website by creating confusion with the Complainant’s trademarked drugs, thus falling under the bad faith use scenario described by paragraph 4(b)(iv) of the Policy.
Lastly, in the Panel’s opinion, the fact that supposedly authentic VALIUM drugs are offered for sale online without prescription is to be regarded as an additional factor revealing bad faith in the use of the disputed domain name, first, because the Complainant’s website at “www.roche.com” does not even market online VALIUM drugs, let alone without prescription; and second, because the product information posted on the very same Respondent’s website clearly warns that VALIUM can be addictive. See Lilly ICOS LLC v. Tudor Burden, Burden Marketing, WIPO Case No. D2004-0794 (selling prescription medication without any physician’s examination or prescription, and consequently in violation of public health regulations constitutes evidence of bad faith under the Policy).
Under the above circumstances, the Panel is satisfied that the Complainant has discharged its burden as required by paragraph 4(a)(iii) 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 <buyvaliumdiazepam.org> be transferred to the Complainant.
Reynaldo Urtiaga Escobar
Dated: October 14, 2011