WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. Fundacion Private Whois
Case No. D2012-0907
1. The Parties
The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally.
The Respondent is Fundacion Private Whois of Panama, Panama.
2. The Domain Name and Registrar
The disputed domain name <purchasevalium.net> is registered with Internet.bs Corp.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 30, 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 May 2, 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 May 4, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 24, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 25, 2012.
The Center appointed Mauricio Jalife Daher as the sole panelist in this matter on July 4, 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
F. Hoffman-La Roche A.G. is one of the world’s leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics, having global operations in more than one hundred countries. The Complainant’s mark VALIUM is protected as trademark in a multitude of countries worldwide. As evidence, the Complainant submitted a copy of the renewal certificate of its International Registration No. R250784, which covers forty two countries. Priority date for the mark VALIUM is October 20, 1961.
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.
The mark VALIUM is well-known and notorious. As evidence, the Complainant submitted copies of several newspaper articles.
The disputed domain name was registered on April 4, 2012. Therefore, the Complainant´s use and registration of the mark VALIUM predate the Respondent’s registration of the disputed domain name.
The Respondent did not file any Response or documents in accordance with this proceeding, as noted by this Panel.
5. Parties’ Contentions
The Complainant is requesting the transfer of the disputed domain name <purchasevalium.net>, based on its exclusive rights to the trademark VALIUM, along with the use of its trademark in the pharmaceutical business.
The Complainant states that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights, seeing that it incorporates the VALIUM mark in its entirety. The Complainant states that the addition of the generic term “purchase” does not sufficiently distinguish the disputed domain name from the Complainant’s mark.
The Complainant states that the mark VALIUM is well-known and notorious; and that its notoriety will increase the likelihood of confusion.
The Complainant states that the Respondent has no rights or legitimate interests in the disputed domain name. In particular, the Complainant contends that the Respondent does not have any prior right to the Complainant’s VALIUM mark, nor has it been licensed, authorized or permitted by the Complainant to use its mark.
The Complainant states that the Respondent uses the disputed domain name for commercial gain and with the purpose of capitalizing on the fame of the Complainant’s mark VALIUM by redirecting Internet users to a pharmacy on-line.
The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith, since at the time of the registration, i.e. on April 4, 2012, the Respondent had knowledge of the Complainant’s well-known product/mark VALIUM.
The Complainant contends that the disputed domain name is being used in bad faith, since the Respondent has intentionally attempted (for commercial purpose) to attract Internet users to the Respondent´s website, by creating a likelihood of confusion with its well-known mark as to the source, affiliation and endorsement of the Respondent’s website or of the products or services posted on or linked to the Respondent’s website.
Further, the Complainant contends that the Respondent may generate unjustified revenues and therefore is illegitimately capitalizing on the VALIUM mark fame.
The Respondent did not reply to the Complainant’s contentions. Although this Panel is aware that the Respondent is not obliged to participate in a proceeding under the Policy, if it fails to do so, asserted facts may be taken as true and reasonable inferences may be drawn from the information provided by the Complainant. See Reuters Limited v Global Net 2000, Inc., WIPO Case No. D2000-0441. See also Microsoft Corporation v. Freak Films Oy, WIPO Case No. D2003-0109;
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name <purchasevalium.net > is, in its main part, identical or confusingly similar to the Complainant’s mark VALIUM, which is duly registered, as evidenced by the Complainant, in an important number of jurisdictions throughout the world.
The Complainant has precisely cited Hoffmann-La Roche Inc. v. Hightech Industries, Andrew Browne,, WIPO Case No. D2010-0240 as a precedent that has found that the incorporation of a trademark in its entirety in a domain name may be sufficient to establish that such domain name is identical or confusingly similar to a complainant´s registered mark, which this Panel has determined should also apply in this case.
The Panel finds that the addition of the generic term “purchase” does not distinguish the disputed domain name from the Complainant’s mark.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name. However, if the Complainant makes a prima facie case that the Respondent has no rights or legitimate interests, and the Respondent fails to show one of the three circumstances under paragraph 4(c) of the Policy, then the Respondent may lack a right or a legitimate interest in the disputed domain name.
The Complainant asserted that the Respondent has neither a license nor any other permission to use the Complainant’s mark VALIUM. The Panel finds that the Complainant has made a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name that incorporates the Complainant’s mark.
The Respondent has not filed a Response to the Complaint and has therefore not provided any evidence of the circumstances specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the disputed domain name.
The Respondent’s use of the disputed domain name to redirect Internet users to an on-line pharmacy demonstrates the Respondent’s lack of a legitimate interest in the disputed domain name. The Complainant has cited several previous decisions issued by other UDRP Panels that 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 Pfizer, Inc. v. Seocho and Vladimir Snezko, WIPO Case No. D2001-1199, a case very similar to this one, the panel found that the registrant had no rights or legitimate interest in its domain name where, as here, the registrant was using its domain name <wwwpfizer.com> to redirect Internet users to an on-line pharmacy. In AVENTIS Pharma S.A. and Merrell Pharmaceuticals Inc. v. Rx USA, WIPO Case No. D2002-0290, the respondent registered another pharmaceutical manufacturer’s well-known mark as a domain name and redirected traffic to an on-line pharmacy. The panel found the respondent had no rights or legitimate interests in the domain name because selling the complainant’s goods on the respondent’s website “does not give it the right to register and use the mark as a Domain Name without the consent of the holders of the trademarks”. In Hoffmann-La Roche Inc. v. #1 Viagra Propecia Xenical & More Online Pharmacy, WIPO Case No. D2003-0793, the panel found no legitimate use where respondent used a domain name confusingly similar to a trademark of complainant’s pharmaceutical company to forward Internet users to Respondent’s on-line pharmacy.
Further, nothing in the record suggests that the Respondent is making alegitimate non commercial use of the disputed domain name.
Under these circumstances, the Panel takes the view that the Respondent has no rights or legitimate interests in the disputed domain name and that the requirement of paragraph 4(a)(ii) is therefore satisfied.
C. Registered and Used in Bad Faith
The Panel finds that the Respondent has registered and used the disputed domain name in bad faith.
Firstly, the Panel finds that the Respondent has registered the disputed domain name in bad faith.
The Respondent, in common with the public, was probably well aware of the vast and valuable goodwill and reputation represented and symbolized by the VALIUM mark.
The Respondent, aware of the fame and goodwill associated with the VALIUM mark deliberately registered the disputed domain name adding a generic word “purchase”, in order to confuse consumers and to profit from such confusion.
Secondly, the Respondent’s use of the disputed domain name to refer to an on-line pharmacy selling products in competition with Complainant’s products (i.e. generic Valium - diazepam) constitutes bad faith. See Casio Keisanki Kabushiki Kaisha (Casio Computer Co., Ltd.) v. Jongchan Kim, WIPO Case No. D2003-0400.
The Respondent’s use of the disputed domain name to refer to an on-line pharmacy selling generic products which are unrelated with the Complainant’s or its affiliates, using the VALIUM mark to distinguish them (i.e. generic Valium - diazepam), proves that the Respondent uses the disputed domain for commercial gain and with the purpose of capitalizing on the fame of the Complainant´s mark VALIUM, and constitutes bad faith.
The Respondent’s selling of pharmaceuticals products without a prescription using Complainant’s mark as domain name may harm the reputation associated with Complainant, since it constitutes a health risk to the consumers. See Aventis, Aventis Pharma SA. v. VASHA Dukes, WIPO Case No. D.2004-0276 (ruling respondent’s sale of the complainant’s pharmaceuticals without a prescription using the complainant’s trademark as their domain name “may lessen the reputation associated with Complainants’ trademark” and weighs in favor of finding bad faith).
The fourth of the identified “bad faith” factors enumerated in the Policy, paragraph 4(b)(iv), applies here. This paragraph states that it is bad faith to register and use a domain name to intentionally attempt to attract Internet users to the respondent’s web site for commercial gain 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 “of a product or service” on respondent’s web site.
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 <purchasevalium.net> be transferred to the Complainant.
Mauricio Jalife Daher
Date: July 27, 2012