WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. Stanislav Cernevic
Case No. D2012-1108
1. The Parties
The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, of Switzerland, represented internally.
The Respondent is Stanislav Cernevic of Kaunas, Lithuania.
2. The Domain Name and Registrar
The disputed domain name <valiumwithoutaprescription.org> is registered with Tucows Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 29, 2012. On May 29, 2012, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On May 30, 2012, Tucows Inc. 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 June 7, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 27, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 29, 2012.
The Center appointed George R. F. Souter as the sole panelist in this matter on July 9, 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 Complainant’s mark VALIUM is protected as a trademark in over a hundred countries. The Complainant submitted details of the registration of VALIUM as an International Registration, No. R250784, in which the priority date for the mark VALIUM is given as 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 disputed domain name, <valiumwithoutaprescription.org>, was registered on May 11, 2012.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s mark VALIUM, as it incorporates this mark in its entirety, with the mere addition of the descriptive term “without a prescription”. The Complainant has drawn the Panel’s attention to a prior UDRP decision, Wal-Mart Stores, Inc. vs. Kuchora, Kal, WIPO Case No. D2006-0033, to the effect that if a domain name incorporates a complainant’s mark in its entirety, it is confusingly similar to that mark despite the addition of other words, and that it is well-established that the addition of a generic term to a trademark does not necessarily eliminate confusing similarity.
The Complainant has drawn the Panel’s attention to the use of the website operated under the disputed domain name. which directs Internet users to websites which are search engines composed of sponsored links. The Complainant has also drawn the Panel’s attention to the decision in Fox News Network, LLC v. Warren Reid, WIPO Case No. D2002-1085, to the effect that using a domain name to mislead users by diverting them to a search engine does not appear to be use in connection with a bona fide offering of goods or services and therefore legitimate.
The Complainant contends that it has exclusive rights to the mark VALIUM, and no licence, permission, authorization or consent was granted to use VALIUM in the disputed domain name, and that, further, it is obvious 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. Consequently, the Complainant alleges that the Respondent has no rights or legitimate interests in respect of the domain name.
The Complainant alleges that the disputed domain name was registered in bad faith and that the Respondent, by using the disputed domain name to intentionally mislead consumers and confuse them so as to attract them to other websites, making them believe that the websites behind those links are associated with or recommended by the Complainant, which may result in the Respondent generating unjustified revenues for each click-through by on-line consumers of the sponsored links, is using the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain name of the Respondent be transferred to the Complainant or be cancelled:
(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.
A. Identical or Confusingly Similar
It is well-established in decisions under the UDRP that “gTLD” indicators (i.e. “.com”, “.info”, “.net”, “.org”) may be considered irrelevant in assessing confusing similarity between a mark and a domain name. It is also well-established in previous decisions under the UDRP that the mere addition of generic or descriptive elements to a well-known or distinctive mark is not sufficient to evade a finding of confusing similarity. The Panel agrees with prior UDRP panels as referred to above, both in connection with “gTLD” indicators and in connection with added generic or descriptive elements.
The Panel acknowledges that VALIUM is a well-known mark belonging to the Complainant. The Panel considers the words “without a prescription”, even without intermediate spacing, to be merely descriptive. Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s VALIUM mark, and that the Complainant has satisfied the test of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Where the respondent has failed to demonstrate rights or legitimate interests in the disputed domain name, it is the predominant view of panels in previous UDRP decisions, with which the present Panel agrees, that a prima facie case advanced by the complainant will be sufficient for the complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy.
In this case, the Respondent did not take advantage of the opportunity presented in these proceedings to advance any justification of a claim to rights or legitimate interests in the disputed domain name, and the Panel can draw the appropriate conclusion under the Policy. The Panel accepts the Complainant’s contentions (above) under paragraph 4(a)(ii) of the Policy as establishing a prima facie case, and, accordingly, finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Panel is of the view that, in the case of a well-known or distinctive mark, such as VALIUM, the finding that the Respondent has no rights or legitimate interests in a disputed domain name, may lead, in appropriate circumstances, to a finding that the disputed domain name was registered in bad faith. The Panel finds such circumstances in the present case, and, accordingly, finds that the disputed domain name was registered in bad faith.
The use by the Respondent of a web site operated under the disputed domain name to direct Internet users to other websites which are search engines composed of sponsored links, thus potentially confusing these users into plausibly believing that the websites behind those links are associated with or recommended by the Complainant, is clearly unjustifiably to the detriment of the Complainant’s economic and reputational interests while potentially accruing unjustifiable income to the Respondent, and, in the Panel’s view, clearly demonstrates use in bad faith.
Accordingly, the Panel finds that the disputed domain name has been both registered and is being used in bad faith, and that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
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 <valiumwithoutaprescription.org> be transferred to the Complainant.
George R. F. Souter
Date: July 24, 2012