WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. Private Whois buyvaliumg.com
Case No. D2012-0422
1. The Parties
The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland.
The Respondent is Private Whois buyvaliumg.com of Nassau, Bahamas.
2. The Domain Name and Registrar
The disputed domain name <buyvaliumg.com> is registered with Internet.bs Corp.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 2, 2012. On the same date, the Center transmitted by email to Internet.bs Corp a request for registrar verification in connection with the disputed domain name. On March 3, 2012, 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 March 7, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 27, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 28, 2012.
The Center appointed John Katz QC as the sole panelist in this matter on April 17, 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
The Complainant is a multinational pharmaceutical company with global operations in over 100 countries. It is one of the world’s leading research-based companies marketing pharmaceuticals and diagnostics. Its name is well known in the field of pharmaceuticals generally and in particular in the world of prescription drugs as an innovator. Little introduction to it is required.
The many drugs of which the Complainant is the manufacturer include valium. That drug is an earlier benzodiazepine, the active ingredient in which is known by its generic name “diazepam”. It is indicated as efficacious in the treatment of various psychiatric disorders and with great success. Whilst accompanied by certain side effects, the key to its proper use lies in controlled administration via health professionals.
Although later drugs such as selective serotonin reuptake inhibitors (“SSRIs”) may have superseded valium to a degree, it is still widely prescribed. In its day, “valium” was the best selling drug in the United States of America.
Valium is protected by a registered trade mark VALIUM with priority date of first registration in Switzerland on October 20, 1961. It has protection under the Madrid Protocol in over 100 countries. Such has been the success of valium that the Complainant claims a worldwide reputation for it as a psychotropic medication.
The Respondent is largely unknown as it appears to shelter behind the anonymity of its registration with the Registrar and the registration discloses that no letters are accepted and that communications may only be by email.
The disputed domain name defaults to a website which appears to offer for sale genuine valium. These screens indicate the product on offer for sale is valium, is able to be purchased without a health professional prescription and is a comfortable and safe way of buying valium. The screens claim that the provider or supplier is known as “MegaHealthShop” which is “a secured and private source for FDA approved prescription medications”. It offers apparently proprietary drugs together with generic equivalents. It states it is not a pharmacy so, presumably, is a middle man or warehousing/distribution facility.
5. Parties’ Contentions
The Complainant relies upon its registered trade mark VALIUM in over 100 countries. It could also rely upon the common law goodwill generated and built up over the past 50 or more years through the marketing and sale of its product under and by reference to the trade mark VALIUM.
The Complainant contends that the disputed domain name uses the trade mark VALIUM in full with only the description “buy” as a prefix and the letter “g” as a suffix. It contends these do not add anything significant or sufficient to distinguish the use in the domain name from the registered trade mark. As the Complainant claims its trade mark VALIUM is well known and notorious, there is increased likelihood of confusion between the Respondent’s product and services and the genuine branded product of the Complainant. It notes the trade mark registration predates the registration of the disputed domain name, as indeed it does by several decades.
The Complainant further contends that the Respondent has no rights or legitimate interests to the disputed domain name, and that the disputed domain name has been registered and used in bad faith. The Complainant’s assertions are discussed further below.
The Respondent has defaulted. There is therefore nothing from it to enable anything to be gleaned as to what it might say by way of response.
Nevertheless, the screens from the associated website are in evidence. They paint more than sufficient of a picture to understand that the Respondent is in the business of offering for sale on line pharmaceuticals or medications including valium, and in the latter case, under and by reference to the actual trade mark VALIUM. The registered trade mark is clearly being used on the website.
Although the screens claim that the Respondent is not a pharmacy, it is difficult to understand how its operation could be otherwise described.
6. Discussion and Findings
The Policy is directed towards resolving disputes concerning allegations of abuse of domain name registrations.
As part of the process, a complainant must provide evidence and submissions in support of its complaint. The expectation is that the complainant will provide such supporting evidence as is necessary to make out its case under all three heads in paragraph 4(a) of the Policy. The respondent is given full opportunity to respond. In this instance, the Respondent has defaulted.
Paragraph 4(a) of the Policy sets out three elements that must be established by a complainant to merit a finding that a respondent has engaged in abuse of domain name registration and to obtain relief. These elements are that:
(i) The respondent’s domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and
(ii) The respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The respondent’s domain name has been registered and is being used in bad faith.
Each of three elements must be established by a complainant to warrant relief.
A. Identical or Confusingly Similar
As to the first ground, the disputed domain name must be shown to be identical or confusingly similar to trade marks in which the Complainant has rights.
The Complainant must establish that it has such rights either to common law or registered trade marks or service marks and that those rights are being abused by the Respondent.
The Complainant has a registered trade mark for VALIUM with a priority date based on first registration in Switzerland in October 1961. The registration shows the numerous countries specified under the Madrid Protocol. There will no doubt be many other countries in which registrations exist outside of the Madrid Protocol. Publicly available websites of trade mark registries in such countries enable this to be verified.
The Complainant contends, and rightly, that the generic or descriptive prefix “buy” adds nothing distinctive. That is simply a descriptor used to signal that the website allows a visitor to purchase the named product, i.e. valium, and on-line. The suffix “g” is puzzling. It relevantly adds nothing and may have been added as the word “buyvalium” alone was unavailable as a domain name. In any event, that additional letter is meaningless and qualifies as typo-squatting.
There can be no debate that the disputed domain name is confusingly similar to the registered trade mark VALIUM, owned by the Complainant.
The Panel accordingly finds that paragraph 4(a)(i) of the Policy is made out.
B. Rights or Legitimate Interests
As to the second ground, that there are no rights or legitimate interests possessed by the Respondent, the Respondent does not put forward in evidence any business or trading operation known as or by reference to the trade mark in suit thereby justifying a proprietary right to the mark.
Under paragraph 4(a)(ii), a respondent can justify its registration of a domain name on certain grounds some of which are set out in paragraph 4(c) of the Policy. Such grounds resolve broadly to own name use, bona fide use, or legitimate noncommercial or fair use.
Even though the Respondent has defaulted, it is not sufficient simply to assume from that that the Respondent has no rights or legitimate interests or can claim none.
The Complainant has exclusive rights to any use of the trade mark VALIUM and has not given any permission or consent to the Respondent to use that trade mark.
Further, the Complainant contends that the Respondent is simply using and incorporating the registered trade mark for the purposes of commercial gain by operating an on-line pharmacy or an equivalent thereto. Whilst the screens disclaim the business to be a pharmacy, as pointed out above, it is difficult to understand how else the service could be described. In any event this is a non issue. In this Panel’s view, the Respondent clearly uses, without permission, the Complainant’s trade mark as part of its business.
There being no formal Response from the Respondent, the Complainant more than satisfies its obligations of proof under this head.
The Panel accordingly finds that paragraph 4(a)(ii) of the Policy is made out.
C. Registered and Used in Bad Faith
As to the third ground, this requires that the disputed domain name be registered and used in bad faith. As has previously been said in other UDRP panelists’ decisions together with earlier decisions of this Panel, both elements must be made out. Accordingly, both registration and use in bad faith have to be established by the Complainant.
This is not the place, nor is it the purpose of the Policy or the ICANN procedures to seek to regulate on-line offering for sale of pharmaceuticals especially those that may generally only be purchased on prescription.
Nevertheless, such activities by providers who shelter behind a mask of anonymity and largely beyond the control of Governmental regulators such as the FDA (Food and Drug Administration, an agency of the United States of America Department of Health and Human Services) or TGA (Therapeutic Goods Administration, Australia's regulatory authority for therapeutic goods) can potentially cause immense damage to the owners of trade marks where the website in issue uses or incorporates those trade marks to offer for sale and sell branded or unregulated generic pharmaceuticals. That is activity of which a proprietary pharmaceutical company and innovator such as the Complainant may quite properly be concerned.
The Complainant’s registered trade marks and common law rights go back well over 50 years. The disputed domain name was registered on February 18, 2012. Given the discussion and findings under A and B above, it must follow that the registration of the disputed domain name was in bad faith, for the purposes of trading on the good will of the Complainant and its product.
In addition, the screens in evidence suggest that the service offered by the Respondent is not that of a pharmacy. Rather it is to act as a mediator between customers and claimed reputable fully licenced pharmacies. The drugs sourced and supplied are said to be proprietary and generic.
Whether or not valium is still covered by a relevant patent in any jurisdiction or not or can be formulated as a generic drug is not to the point. The trade mark VALIUM is protected. Any sales of a generic equivalent must therefore be made under and by reference to the generic name not the trade mark owned by a third party (regulatory issues aside).
But a greater danger lies in allowing the trade mark VALIUM to be used to supply a drug which should only be used on prescription and as recommended by a qualified prescriber or health professional. The material put in by the Complainant (at Annexure 4) clearly demonstrates the concerns and dangers – as one specialist is quoted in the New York Times as saying “the key is to use them [benzodiazepines] correctly”, referring to the class of drugs to which valium belongs.
Although there is here registration in bad faith, the Complainant must also establish use in bad faith. It is impossible to image what possible legitimate use of the registered trade mark the Respondent could claim. It is precluded from supplying any generic drug of the relevant class by reference to the registered trade mark.
The facts and circumstances here fall within the similar scenarios as considered by the Panel in Pfizer Inc v. jg a/k/a Josh Green, WIPO Case No. D2004-0784 and this Panel’s own decision recently in Roche Products Limited v. Privacy Protect.Org / Stas Chernov, WIPO Case No. D2011-2096. The reasoning in those two decisions is adopted.
The Panel accordingly finds that paragraph 4(a)(iii) of the Policy is made out.
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 <buyvaliumg.com> be transferred to the Complainant.
John Katz QC
Dated: May 1, 2012