WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. Private Whois Service
Case No. D2011-2245
1. The Parties
The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally.
The Respondent is Private Whois Service of Nassau, Bahamas.
2. The Domain Name and Registrar
The disputed domain name <coolvalium.com> is registered with Internet.bs Corp.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 21, 2011. On December 21, 2011, the Center transmitted by email to Internet.bs Corp. a request for registrar verification in connection with the disputed domain name. On December 22, 2011, Internet.bs Corp. transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on December 29, 2011. In accordance with the Rules, paragraph 5(a), the due date for the Response was January 18, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 19, 2012.
The Center appointed Dinant T. L. Oosterbaan as the sole panelist in this matter on January 26, 2012. 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
According to the evidence submitted by the Complainant there are multiple trademark registrations for VALIUM in various countries, including an international registration No. R250784 dated October 20, 1961. The mark VALIUM is well-known. The Complainant is one of the world’s leading healthcare groups in the field of pharmaceuticals.
The Respondent Private Whois Service of Nassau, Bahamas, registered the domain name <coolvalium.com> on December 6, 2011.
5. Parties’ Contentions
The Complainant submits that the disputed domain name is confusingly similar to the well-known VALIUM trademark as it contains the VALIUM mark in its entirety. According to the Complainant, the Respondent has no rights or legitimate interests in respect of the disputed domain name in view of its trademark. Internet users are directed to an online pharmacy. The Respondent uses the disputed domain name without permission from the Complainant for commercial gain and with the purpose of capitalizing on the fame of the mark of the Complainant. The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith as the Respondent no doubt had knowledge of the well-known mark of the Complainant and is intentionally misleading consumers.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “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”.
Paragraph 4(a) of the Policy requires that the Complainant proves each of the following three elements to obtain an order that the disputed domain name should be transferred:
(i) the disputed domain name registered by the Respondent 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 interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Panel is satisfied that the disputed domain name is subject to the control of the Respondent and will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied in this proceeding.
A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must establish rights in a trademark and secondly that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
The Complainant has established that it is the owner of various trademark registrations for VALIUM. The Complainant’s registrations predate the creation date of the disputed domain name.
The domain name <coolvalium.com> incorporates the entirety of the VALIUM mark as its distinctive element. Many UDRP panels have found that a domain name is confusingly similar to a complainant’s trademark where the domain name incorporates the complainant’s mark in its entirety. The addition of common, dictionary, descriptive such as “cool” in this case or other elements is irrelevant.
The Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to the Complainant’s well-known trademark.
B. Rights or Legitimate Interests
In the opinion of the Panel, the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. This is particularly true as 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 or to tarnish the trademarks of the Complainant. The Respondent makes use of the likelihood of confusion with the trademarks of the Complainant, which cannot be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name. In addition, the Respondent was not commonly known by the disputed domain name nor has it acquired trademark rights. Under these circumstances the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Panel finds that the disputed domain name has been registered and is being used in bad faith. The trademarks of the Complainant are well-known and long existing trademarks and the Respondent knew or should have known that the disputed domain name included the Complainant’s marks.
The Panel finds that the above elements mean that the Respondent intentionally attempts to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the trademarks of the Complainant as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product on its website or location.
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 <coolvalium.com> be transferred to the Complainant.
Dinant T. L. Oosterbaan
Dated: February 3, 2012