WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. Private Whois valiumfinder.com
Case No. D2011-1484
1. The Parties
The Complainant is F. Hoffmann-La Roche AG, Basel, Switzerland, represented by Jérôme Rhein, Switzerland.
The Respondent is Private Whois valiumfinder.com, *******PLEASE DO NOT SEND LETTERS******, ****Contact the owner by email only****, c/o valiumfinder.com, Nassau, Bahamas.
2. The Domain Name and Registrar
The Disputed Domain Name <valiumfinder.com> is registered with Internet.bs Corp.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 2, 2011. On September 2, 2011, the Center transmitted by email to Internet.bs Corp. a request for registrar verification in connection with the disputed domain name. On September 19, 2011, Internet.bs Corp transmitted by email to the Center its verification response. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on September 26, 2011.
The Center verified that the Complaint together with the amendment to 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 27, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 17, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 21, 2011.
The Center appointed Alistair Payne as the sole panelist in this matter on November 1, 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 is based in Switzerland and its group of companies are a leading healthcare group in the fields of pharmaceuticals and diagnostics and has global operations in more than 100 countries. The Complainant owns various trade mark registrations for VALIUM and in particular since 1961 it has owned trade mark registration 188587 in Switzerland and International Trade Mark Registration number R250784 designating numerous countries.
The Respondent is based in Nassau in the Bahamas.
5. Parties’ Contentions
The Complainant says that it owns registered trade mark rights for its VALIUM mark as set out above and that the mark is registered in approximately 100 countries. It notes that it has developed a considerable reputation in connection with this mark and that it has developed a very considerable reputation in this trade mark and as a consequence in the area of psychotropic medicines.
The Complainant asserts that the Disputed Domain Name is confusingly similar to its VALIUM trade mark as it incorporates its trade mark as a whole and the word “finder” is generic and nondistinctive. The Complainant asserts that the degree of notoriety attaching to its mark will only exacerbate the likelihood of confusion.
As far as rights or legitimate interests are concerned the Complainant says that it has never authorized the Respondent to use its VALIUM trade mark and that it is apparent that the Respondent is using the Disputed Domain Name for commercial gain as it resolves to an on-line pharmacy.
The Complainant alleges that the Respondent registered the Disputed Domain Name in bad faith. It says that by the date of registration of December 28, 2010 the Respondent must have been well aware of the Complainant’s VALIUM mark. Based on the Respondent’s use of the Disputed Domain Name to resolve to an on-line pharmacy the Complainant says that the only reasonable inference is that it was registered in bad faith. It further says that the Respondent has under paragraph 4(b)(iv) of the Policy intentionally attempted (for commercial purpose) to attract Internet users to the Respondent’s websites, by creating a likelihood of confusion with the Complainant’s well-known mark as to the source, affiliation and endorsement of Respondent’s websites, or of the products or services posted on or linked to the Respondent’s website. As a consequence the Complainant asserts that the Respondent has both registered and used the Disputed Domain Name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Panel further notes that it has reviewed the administrative deficiency indicated by the Center and confirms that it considers that the current registrant is the proper Respondent for the purposes of this proceeding. It would appear that after notification of the Complaint made against the original registrant that the Disputed Domain Name was not locked by the then current Registrar, in breach of paragraph 8 of the Uniform Domain Name Dispute Resolution Policy and was transferred to the current Respondent and to a new registrar. The Panel notes that the new owner, a privacy service, continues to use the Disputed Domain Name to resolve to the same website as previously.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has demonstrated that it owns registered trade mark rights in its’ VALIUM mark as noted above. Further, the Panel considers that the “finder” element of the Disputed Domain Name is a common or generic term that adds no element of distinctiveness to the Disputed Domain Name and that this is all the more so as a consequence of the very significant degree of renown attaching to the Complainant’s VALIUM mark. As a result the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s VALIUM mark.
Accordingly the Complaint succeeds under the first element of the Policy.
B. Rights or Legitimate Interests
The Panel finds that the Disputed Domain Name literally represents to Internet users that they will be able to locate a source of the Complainant’s drug VALIUM and in fact the Disputed Domain Name resolves to a website for an on-line pharmacy. In the absence of any explanation from the Respondent, it appears to the Panel that the Respondent is purposefully using the Disputed Domain Name for an illegitimate commercial purpose, namely to re-direct Internet users to the on-line pharmacy site. Without the Complainant’s express authority this is not a legitimate use and there is no other evidence before the Panel to suggest that the Respondent has any bona fide rights in the Disputed Domain Name.
As a result the Complaint succeeds in relation to the second element of the Policy.
C. Registered and Used in Bad Faith
Considering the longstanding renown and repute attaching to the Complainant’s VALIUM mark the Panel infers that the Respondent must have been aware of it at the date of transfer of the Disputed Domain Name to the current Respondent, but purposefully chose to proceed with the transfer and to continue to use the Disputed Domain Name to resolve to the same on-line pharmacy site as it did during the ownership of the original registration. Previous panels have found that the transfer to a new owner in these circumstances amounts to the date of registration for the purposes of the Policy and consequently the date of transfer constitutes the date of registration for this purpose (see for example Section 3.7of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"). For the reasons outlined above concerning the second element of the Policy, the Panel finds that the Respondent has under paragraph (b)(iv) of the Policy intentionally attempted (for commercial purpose) to attract Internet users to the Respondent’s websites, by creating a likelihood of confusion with the Complainant’s well-known mark as to the source, affiliation and endorsement of Respondent’s websites or of the products or services posted on or linked to Respondent’s website.
In addition the circumstances, as noted earlier, in which the Disputed Domain Name was transferred to the current Respondent, a privacy owner, after communication of the original form of this Complaint to the original registrant only reinforces the Panel’s view of the Respondent’s bad faith.
As a consequence the Panel finds that the Respondent has both registered and used the Disputed Domain Name in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <valiumfinder.com> be transferred to the Complainant.
Dated: November 7, 2011