World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

F. Hoffmann-La Roche AG v. Fundacion Private Whois, Domain Administrator

Case No. D2012-0822

1. The Parties

The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, internally represented.

The Respondent is Fundacion Private Whois, Domain Administrator of Panama, Panama.

2. The Domain Name and Registrar

The disputed domain name <valium365d.com> is registered with Internet.bs Corp.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 18, 2012. On April 19, 2012, the Center transmitted by email to Internet.bs Corp. a request for registrar verification in connection with the disputed domain name. On April 20, 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 Complainant filed an amendment to the Complaint on April 25, 2012.

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 April 25, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 15, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 11, 2012.

The Center appointed Zentaro Kitagawa as the sole panelist in this matter on June 11, 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 together with its affiliated companies one of the world’s leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics and having global operations in more than 100 countries. The mark VALIUM designates a sedative and anxiolytic drug belonging to the benzodiazepine family, which enabled the Complainant to build a world-wide reputation in psychotropic medications. For the mark VALIUM the Complainant holds registrations in over hundred countries on a world-wide basis.

The Complainant’s mark VALIUM is protected as trademark in a multitude of countries worldwide. As an example reference is made to the International Registration No. R250784. Priority date for the mark VALIUM is October 20, 1961.

The disputed domain name was created on April 10, 2012.

5. Parties’ Contentions

A. Complainant

(1) The Complainant contends that the disputed domain name <valium365d.com> of the Respondent is confusingly similar to the Complainant’s trademark.

(2) The Complainant contends that the Respondent has no rights or legitimate interests in the Complainant’s trademark.

(3) The Complainant contends that the Respondent has registered and is using the disputed domain name <valium365d.com> in bad faith.

B. Respondent

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 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 must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:

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 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 Respondent provided no Response. Taking into consideration the Respondent’s default, the Panel can infer that the Complainant’s allegations are true where appropriate to do so. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. Nonetheless, the Complainant retains the burden of proving the three requisite elements of paragraph 4(a) of the Policy.

A. The domain name is confusingly similar to a trademark or service mark in which the Complainant has rights (Policy, paragraph 4(a)(i))

It is held that a domain name is identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662). It is also established that “the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark” (Hoffmann-La Roche Inc. v. Hightech Indutries, Andrew Browne, WIPO Case No. D2010-0240) and that the addition of generic terms to the disputed domain name has little effect on a determination of confusing similarity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253). Furthermore, mere addition of a generic or descriptive term does generally not exclude the likelihood of confusion (PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189).

As the disputed domain name <valium365d.com> incorporates the Complainant’s trademark in its entirety, it is confusingly similar to the Complainant’s trademark. The addition of the number “365” and the letter “d” does not distinguish the disputed domain name <valium365d.com> from its trademark.

Therefore, the Panel finds that the disputed domain name <valium365d.com> is confusingly similar to the Complainant’s trademark.

B. The Respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraphs 4(a)(ii) and 4(c))

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The Complainant has exclusive rights for VALIUM and there is no evidence that the Complainant has licensed or authorized or permitted the Respondent to register or use the disputed domain name <valium365d.com> or to use its trademark.

Furthermore, there is no evidence adduced to show that the Respondent has been commonly known by the disputed domain name <valium365d.com> or is making any legitimate noncommercial or fair use. Instead, it is obvious that Internet users are directed to the Respondent’s pharmacy on-line, “www.valium365d.com.” See Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784, “several cases have found that a registrant has no legitimate interest in a domain name that is similar to a pharmaceutical manufacturer’s mark and that is being used to direct consumers to an on-line pharmacy”.

In the Panel’s view, the Respondent uses the disputed domain name <valium365d.com> for commercial gain.

The Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain name <valium365d.com>.

The Panel therefore finds that the Complainant has fulfilled the second condition of paragraph 4(a) of the Policy.

C. The domain name was registered and is being used in bad faith (Policy, paragraphs 4(a)(iii) and 4(b))

Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:

“By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

The Respondent creates a likelihood of confusion with the Complainant’s trademark by using the disputed domain name <valium365d.com>. As no counter evidence is shown, it firstly follows that at the time of the registration, namely on April 10, 2012, the Respondent was aware of the Complainant’s well-known product and mark VALIUM. The Panel finds that the disputed domain name <valium365d.com> was registered in bad faith. Secondly, the disputed domain name <valium365d.com> is being used in bad faith. This is also obvious that, when viewing the Internet website “www.valium365d.com” of the Respondent, one realizes that the Respondent has intentionally attempted for commercial purpose to attract Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s trademark as to the source, affiliation and endorsement of the Respondent’s website or services posted on the Respondent’s website. See Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784), which holds that bad faith is established when “Respondent is using the domain names as a forwarding address to a for-profit on-line pharmacy”.

The Panel therefore finds the requisite element of bad faith has been satisfied, under paragraph 4(b)(iv) of the Policy.

For all the foregoing reasons, the Panel concludes that the disputed domain name <valium365d.com> has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.

7. Decision

For 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 <valium365d.com> be transferred to the Complainant.

Zentaro Kitagawa
Sole Panelist
Dated: June 20, 2012

 

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