WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Roche Products Inc. v. Mark Valin
Case No. D2011-1835
1. The Parties
The Complainant is Roche Products Inc., a corporation duly organized under the laws of Panama with offices in Hamilton, Bermuda, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, represented by Lathrop & Gage LLP, United States of America.
The Respondent is Mark Valin of New York, United States of America.
2. The Domain Name and Registrar
The disputed domain name <valiumtabs.com> (“Domain Name”) is registered with Center of Ukrainian Internet Names (UKRNAMES).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 24, 2011. On October 25, 2011, the Center transmitted by email to Center of Ukrainian Internet Names (UKRNAMES) a request for registrar verification in connection with the Domain Name. On October 31, 2011, 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 November 3, 2011 the Center notified the Complainant that as the language of the registration agreement for the Domain Name was Russian (as per information provided by the Registrar), the Complainant must provide satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English; or submit the Complaint translated into Russian; or submit a request for English to be the language of the administrative proceedings. On November 4, 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 (both in Russian and in English) the Respondent of the Complaint, and the proceedings commenced on November 10, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 30, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 2, 2011.
The Center appointed Olga Zalomiy as the sole panelist in this matter on December 21, 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
Based on the written evidence submitted by the Complainant, the Panel finds the following to be the facts of this case:
The Complainant is affiliated with various Roche companies. The Complainant owns a VALIUM trademark registration No. 725548 dated June 20, 1961 in the United States of America. VALIUM is a well-known trademark that has been used since 1961 in connection with a pharmaceutical product for the treatment and prevention of anxiety.
The parent company of the Complainant, F. Hoffmann-La Roche AG, is the registered owner of the <valium.com> domain name that incorporates the VALIUM trademark. The domain name directs to the Complainant’s website located at “www.roacheusa.com/products,” through which, on “www.gene.com” (the website that belongs to another member of the Roche group companies) the Complainant’s customers obtain information as to the Valium pharmaceutical product manufactured and sold by Roche.
The Respondent is the registrant of the Domain Name <valiumtabs.com>, registered on September 23, 2011. The Domain Name <valiumtabs.com> had been used to direct users to a website in the English language that offers the Valium drug for sale. The “www.valiumtabs.com” website contains links to the websites “www.lifestylesales.net”, “www.medicalmedicine.org”, and “www.101generic.com” that offer for sale Valium and other anti-anxiety drugs.
5. Parties’ Contentions
1. The Complainant alleges that the Domain Name is confusingly similar to its trademark. The Complainant submits that the Domain Name incorporates the entire VALIUM trademark. The Complainant argues that in light of the registered trademark VALIUM, and the existence of the domain name <valium.com>, the Respondent’s registration and use of the Domain Name creates a strong likelihood of confusion as to source, sponsorship, association or endorsement of the Respondent’s website associated with the Domain Name by the Complainant.
Further, the Complainant alleges that addition of the descriptive language “tabs” to its mark in the Domain Name does not prevent the likelihood of confusion with its trademark VALIUM.
2. The Complainant submits that the Respondent has no rights or legitimate interest in the Domain Name. The Complainant argues that “Valium” is not a word and it has no valid use other than in connection with the Complainant’s trademark. The Complainant alleges that it never authorized the Respondent to use its trademark VALIUM or to incorporate the trademark into any domain name.
The Complainant alleges that the Domain Name was selected and is being used because of the goodwill created by the Complainant in its VALIUM trademark. In the Complainant’s view, based on the Respondent’s website, it is clear that neither the Respondent, nor its website has been commonly known by the Domain Name. The Complainant states that the Respondent’s use of the Domain Name is disreputable for several reasons. The Complainant states that the Respondent’s website, to which the Domain Name resolves, offers the Complainant’s VALIUM brand, generic Valium, as well as other competitors’ pharmaceutical and anti-anxiety products for sale through the linked sites “www.lifestylesales.net”, “www.medicalmedicine.org” and “www.101generic.com” without any permission whatsoever from the Complainant. In Complainant’s view, by the use and registration of the Domain Name, the Respondent seeks to capitalize on the reputation associated with the Complainant’s VALIUM trademark and to use that recognition to divert Internet users, seeking the Complainant’s website or the Valium product, to a website connected to the Domain Name and/or the linked sales sites, which are wholly unrelated to the Complainant. The Complainant alleges that the Respondent’s appropriation and use of the Complainant’s famous trademark VALIUM in the Domain Name, in a copyright notice and for its commercial website is a clear attempt to create and benefit from consumer confusion regarding the association between the Complainant’s business and the Respondent’s sales activities of various pharmaceuticals through its linked sites. As such, it is clear that the Respondent has no rights or legitimate interests in the Domain Name.
The Complainant further argues that the Respondent has not used the Domain Name for a bona fide offering of goods or services because it is infringing on the Complainant’s famous trademark VALIUM. The Complainant alleges that there is no evidence that the Respondent is making a legitimate noncommercial or fair use of the Domain Name without intent for commercial gain.
3. The Complainant argues that: the Domain Name was registered and used in bad faith because “Valium” is not a word but the Complainant’s invented and coined famous mark that has an extremely strong worldwide reputation; there is no relationship between the Respondent and the Complainant; and the Respondent was aware of the VALIUM trademark and sought to divert Internet users to the Respondent’s website for its own commercial gain.
The Complainant alleges that on October 14, 2011 its counsel sent a cease and desist letter to the Respondent via email and mail. According to the Complainant, its letter was returned as “Return to sender-Insufficient address-Unable to forward”, but its email was received.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Language of the Proceeding.
The Panel finds English to be an appropriate language for this proceeding based on the Respondent’s apparent ability to understand the English language, and on the absence of any objection to English as the language of the proceeding.
Pursuant to paragraph 11 of the Rules, unless otherwise agreed by the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. In adopting a language other than that of the registration agreement, the Panel must exercise discretion in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs.1 In this case, the language of the registration agreement is Russian. There is no agreement between the parties as to the use of a different language in this proceeding. Under these circumstances, the language of the proceeding would typically be Russian. However, the Complainant submitted its complaint in English and requested that English be the language of the proceeding. The Respondent did not object to, or comment on, that request. The Panel, therefore, now must determine the appropriate language for this proceeding.
The Panel finds that the Complainant presented sufficient evidence to conclude that the Respondent will not be prejudiced if this proceeding is conducted in English. First, it appears that the Respondent understands English. The content of the Respondent’s website was in English with no alternative language options. It listed prices in dollars and linked to sales sites doing the same. Further, the Respondent provided a contact address in New York, United States where English is the official language. Second, the Center notified the Respondent about the Complaint and communicated all other case-related matters to the Respondent in both Russian and English languages. Therefore, even if the Respondent was not proficient in English, he had a fair chance to learn about his right to object to the language of the proceeding, but failed to do so. Third, the Complainant is not familiar with the Russian language. To force the Complainant to translate the Complaint and accompanying documents into Russian will result in significant expenses.
Taking into account the circumstances of this case and the objective of the UDRP to provide for a cost-effective mechanism, the Panel determines English as the language for the proceeding.
6.2. Analysis of the Complaint
According to Paragraph 15(a) of the Rules, “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” In case of a respondent’s default, “the respondent’s default does not automatically result in a decision in favor of the complainant.”2 The complainant must establish “each of the three elements required by paragraph 4(a) of the UDRP.”3 Thus, to succeed on its claim, the Complainant must prove that: (1) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (2) the Respondent has no "rights or legitimate interests in respect of the Domain Name"; and (3) the Domain Name “has been registered and is being used in bad faith.”4
“Although a panel may draw appropriate inferences from a respondent’s default (e.g., to regard factual allegations which are not inherently implausible as being true), paragraph 4 of the UDRP requires the complainant to support its assertions with actual evidence in order to succeed in a UDRP proceeding.”5
6.3. Identical or Confusingly Similar
To satisfy the first UDRP element, a domain name must be “identical or confusingly similar” to a trademark, in which a complainant has rights. Under paragraph 1.1 of the WIPO Overview 2.0, if the complainant owns a registered trademark, then it satisfies the threshold requirement of having trademark rights. Here, the Complainant has provided as evidence a copy of US trademark registration No. 725548 of June 20, 1961 in the VALIUM trademark belonging to the Complainant as an assignee of the trademark. The Panel, therefore, finds that the Complainant has established its rights in the VALIUM mark.
The test for confusing similarity should be a comparison between the mark and the domain name, which involves a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name.6 The Panel finds the VALIUM mark and the Domain Name to be confusingly similar because the Domain Name incorporates the Complainant’s trademark in its entirety.7 It is a consensus view among UDRP panelists that the addition of merely generic or descriptive wording to a complainant’s trademark, where the mark constitutes the dominant part of the domain name, is insufficient to avoid a finding of confusing similarity.8 In this case, the addition of the generic word “tabs” to the Complainant’s mark does not create a new or different mark, and is insufficient to avoid a finding of confusing similarity. It is also well established that the addition of the top-level domain suffix “.com” or its equivalent would usually be disregarded under the confusing similarity test, as it is a technical requirement of registration.9
Therefore, the Panel finds that the Complainant has proven that the Domain Name is confusingly similar to the VALIUM mark in which the Complainant has rights, and that the first element of paragraph 4(a) of the UDRP has been satisfied.
6.4. Rights or Legitimate Interests
To establish the second element required by paragraph 4(a) of the UDRP, the “Complainant must show that the Respondent has no rights or legitimate interests in the Domain Name.10 “Panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent.”11 Therefore, to satisfy this requirement, the Complainant may make out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name.12 If such prima facie case is not rebutted by the Respondent, the Complainant will be deemed to have satisfied paragraph 4(a)(ii) of the Policy.
Paragraph 4(c) of the Policy provides an open list of circumstances which demonstrate rights or legitimate interests of a respondent in a domain name. The Panel finds that the Complainant presented a prima facie showing that the Respondent lacks any rights or legitimate interests in the Domain Name for three reasons. First, the Respondent did not use the Domain Name in connection with a bona fide offering of goods. Second, the Respondent used the Domain Name for commercial gain and to misleadingly divert consumers to his website. Third, it appears that the Respondent has not been commonly known by the Domain Name.
The evidence submitted by the Complainant shows that the Respondent used the Domain Name in connection with the “www.valiumtabs.com” website, which sells the branded and generic Valium drug and other drugs. The submitted printouts of the Respondent’s website reveal no disclaimers concerning the relationship between the parties. The Respondent, however, neither is a licensee of the Complainant, nor has he obtained any authorization to use the Complainant’s trademarks or sell the Complainant’s goods.
The Complainant alleges, and the Panel agrees, that “Valium” is not a word and has no valid use other than in connection with the Complainant’s registered trademark. The Complainant submitted printouts from Internet science encyclopaedias and websites showing the fame of the VALIUM trademark and its wide use. Given the notoriety and distinctiveness of the VALIUM trademark, the Panel finds the Respondent’s use of the VALIUM trademark in the Domain Name and the copyright notice on his website, as if it were a company name, is likely to be an attempt to create and benefit from consumer confusion regarding the association between the Complainant’s business and the Respondent’s sale activities. Thus, it is likely that the Respondent has not been commonly known by the Domain Name, but chose it to capitalize on the fame of the Complainant’s mark.
The Complainant alleges that the Respondent does not use the Domain Name for a bona fide offering of goods and services. In support of this allegation, the Complainant submitted printouts from the Respondent’s website “www.valiumtabs.com” and several websites linked to the Respondent’s website: i.e., the sites “www.lifestylesales.net,” “www.medicalmedicine.org,” and “www.101generic.com” showing that the Respondent offers for sale Valium and other anti-anxiety drugs. The Panel finds that the Respondent’s unauthorized use of the Domain Name, which is confusingly similar to the Complainant’s registered trademark, does not constitute a bona fide offering of goods.
Finally, there is no evidence that the Respondent is making a legitimate noncommercial or fair use of the Domain Name. To the contrary, the Domain Name resolves to a website that offers for sale both the Valium drug without the Complainants permission or license and other anti-anxiety products. Such use is clearly not a noncommercial or fair use.
Therefore, the Panel finds that the Complainant has established a prima facie case. Without contrary evidence from the Respondent, this Panel finds that the second element of the paragraph 4(a) of the UDRP has been established.
6.5. Registered and Used in Bad Faith
The third element of paragraph 4(a) of the UDRP requires “a positive finding that both the registration and use were in bad faith.”13 Paragraph 4(b) of the UDRP provides an open list of the circumstances that “shall be evidence of the registration and use of a domain name in bad faith.” The Panel finds that circumstances present in this case correspond to those described in paragraph 4(b)(iv) of the UDRP. More specifically, the Panel finds that by using the Domain Name, the Respondent intentionally attempted to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant's mark “as to the source, sponsorship, affiliation, or endorsement of [the Respondent’s] web site or location or of a product or service on [the Respondent’s] web site or location.”
The Panel finds it is likely that the Respondent knew about the Complainant’s VALIUM mark and registered the <valiumtabs.com> Domain Name in bad faith. “Valium” is a coined term and is not an actual word. The Domain Name that incorporates the VALIUM mark was registered fifty years after the Complainant registered its VALIUM mark. The Complainant presented sufficient evidence that the VALIUM trademark became a well-known mark during that period of time. As indicated earlier, the Complainant submitted printouts from various Internet-based science encyclopedias and news websites showing that the Valium drug is well-known and widely used. Based on the value associated with the mark, the long history of the mark and its wide recognition, the Panel finds the VALIUM mark to be a well-known mark. Thus, it is probable that the Respondent knew of the Complainant’s mark prior to the registration of the Domain Name.
The Panel shares the view that “opportunistic bad faith” is shown when a domain name incorporating a well-known mark is registered” by someone with no connection with the product.14 Because, the Respondent registered the Domain Name which incorporated the Complainant’s well-known mark within this particular Domain Name, and taking into account the lack of any connection between the Respondent and the Valium drug, opportunistic bad faith can be presumed.
In addition, the Complainant submitted sufficient evidence to show that the Respondent provided the Registrar with false contact information. Specifically, a printout from the WhoIs database and copies of the UPS communication received by the Center show that the postal address provided by the Respondent to the Registrar is false (in the sense that it apparently refers to a non-existent location). Therefore, it appears that the Respondent purposefully used false contact information to conceal his true identity. This constitutes additional evidence of the Respondent’s registration of the Domain Name in bad faith.
The Complainant claims that the Respondent intentionally attempted to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant's mark “as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.” The Panel agrees that it is likely that potential consumers will be confused into believing that the Respondent is affiliated with, or endorsed by, the Complainant, because the Domain Name incorporates the Complainant’s well-known mark in its entirety and the Respondent’s website offers the brand and generic Valium drug for sale. It is plausible that Internet users may be diverted to the Respondent’s website instead of reaching the Complainant’s legitimate website. And, it is obvious that the Respondent intends to benefit from this confusion by offering Valium for sale. The fact that the Respondent created a chain of interlinked websites offering Valium and other anti-anxiety drugs for sale confirms that conclusion. As a result, the Domain Name is being used in bad faith.
Accordingly, the Panel concludes that the Domain Name was registered and is being used in bad faith, and that the Complainant has therefore established the third element of paragraph 4(a) of the UDRP.
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 <valiumtabs.com> be transferred to the Complainant.
Dated: January 2, 2012
1 See, paragraphs 10(a) and 10(b) of the Rules; Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004. See also, Biotechnology and Biological Sciences Research Council v. Kim Jung Hak, WIPO Case No. D2009-1583.
4 - See, Paragraph 4(a) of the UDRP.
10 Paragraph 4(a)(ii) of the Policy.
14 Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co. , WIPO Case No. D2000-0163. See also, General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087; Microsoft Corporation v. Montrose Corporation, WIPO Case No. D2000-1568.