WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. RegistrarAds, Inc.
Case No. D2012-1645
1. The Parties
The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, of Switzerland, represented internally.
The Respondent is RegistrarAds, Inc. of Vancouver, Washington, United States of America.
2. The Domain Names and Registrar
The disputed domain names <avalium.com>, <dalium.com>, <nalium.com>, <navalium.com>, <novalium.com> are registered with Domain.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on August 16, 2012. On August 16, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 16, 2012 the Registrar 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 August 20, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 9, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 14, 2012.
The Center appointed Ho-Hyun Nahm as the sole panelist in this matter on September 20, 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 pharmaceutical and diagnostics and having global operations in more than 100 countries. The Complainant’s mark VALIUM is protected as trademark in a multitude of countries worldwide. An example reference is made to the International Registration No. R250784 for the mark VALIUM (“the Complainant’s mark”). The priority date for the Complainant’s mark is October 20, 1961. The designated goods of the Complainant’s mark include a sedative and anxiolytic drug belonging to the benzodiazepine family. For the mark VALIUM the Complainant holds registrations in over a hundred countries on a worldwide basis.
The Respondent registered the disputed domain name <avalium.com> on July 8, 2003; <dalium.com> on June 20, 2003; <nalium.com> on July 28, 2005; <navalium.com> on July 25, 2006; and <novalium.com> on June 25, 2005. The Respondent uses the disputed domain names for websites offering search engines with sponsored links.
5. Parties’ Contentions
The Complainant contends that:
- the disputed domain names are confusingly similar to a trademark in which the Complainant has rights;
- the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
- the disputed domain names were registered and are being used in bad faith.
The Complainant seeks the transfer of the disputed domain names from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the 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 must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the 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 domain name; and
(iii) the domain name registered by the respondent has been registered and is being used in bad faith.
The Respondent provided no Response, and the deadline for doing so expired on September 9, 2012. Accordingly, the Respondent is in default. Taking into consideration the Respondent’s default, the Panel can infer that the Complainant’s allegations are true where appropriate to do so (Talk City. V.Michael Robertson, WIPO Case No. D2000-0009). Nonetheless, the Complainant retains the burden of proving the three elements of Paragraph 4(a) of the Policy.
A. Identical or Confusingly Similar
The Complainant has provided sufficient evidence showing that it is the owner of the VALIUM mark, the use and registration of which predate the Respondent’s registration of each of the disputed domain names. The Panel recognizes by the materials submitted by the Complainant that the Complainant’s mark VALIUM is well-known and notorious. The notoriety may increase the likelihood of confusion.
The disputed domain names <avalium.com>, <navalium.com>, and <novalium.com> are confusingly similar to the Complainant’s trademark VALIUM in that each of them incorporates this mark in its entirety (See Hoffmann-La Roche Inc. v. Hightech Industries, Andrew Brown, WIPO Case No. D2010-0240 finding “prior UDRP panels have recognized that the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is idenctical or confusingly similar to the Complainant’s registered mark.”).
The Panel finds that the disputed domain names <dalium.com> and <nalium.com> are misspellings of the Complainant’s mark VALIUM: both domain names are misspelled by substituting the letter “v” with the letters “d” and “n” which are not far from the letter “v” on a standard QWERTY keyboard. The Panel infers that the purpose of the Respondent’s registration of the disputed domain names <dalium.com> and <nalium.com>, which are misspellings of the Complainant’s trademark is to mislead Internet users who are misspelling Complainant’s trademark to the Respondent’s websites associated with the purposely misspelled disputed domain names. See Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775 finding “this conduct, commonly referred to as ‘typo squatting,’ creates a virtually identical and/or confusingly similar mark to the Complainant’s trademark to the Respondent’s websites associated with the purposely misspelled domain names in dispute.”
The addition of the generic top-level domain “.com” does not have any impact on the overall impression of the dominant portion of the disputed domain names and is therefore irrelevant to determine the confusing similarity between the Complainant’s trademark and the disputed domain names as well.
As such, the Panel concludes that each of the disputed domain names is confusingly similar to the Complainant’s mark.
B. Rights or Legitimate Interests
As it is virtually impossible for a complainant to prove the negative fact that a respondent has no rights or legitimate interests in the disputed domain name, it is well accepted that a complainant must only show a prima facie case that there are no rights or legitimate interests on the part of the respondent. The burden of production will then shift to the respondent. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
The Panel finds that the Complainant has exclusive rights for the mark VALIUM and no license/permission/authorization was granted to the Respondent to use VALIUM in the domain names. The Panel recognizes that all disputed domain names resolve to websites offering search engines with sponsored links. However, such a use of the disputed domain names does not constitute any rights or legitimate interests on the part of the Respondent. See Sigikid H.Scharrer & Gmbh & Co.KG, MyBear Marketing-und Vertriebs Gmbh, Mr. Thomas Dufner v.Bestinfo, WIPO Case No. D2004-0990 finding “the sole diversion of Internet traffic by Respondent to other, unrelated websites, does not represent a use of the Domain Name in connection with a bona fide offering of goods and services. Rather, the conduct of Respondent serves the purpose of generating revenues, e.g., from advertised pay-per-click products.”
As such, the Panel concludes that the Respondent does not have rights or legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
In light of the well-known status of the Complainant’s mark well before the registration date of each of the disputed domain names, it is presumed that the Respondent registered the disputed domain names with the knowledge of the Complainant’s rights in the Complainant’s mark, as it is inconceivable that the Respondent was unaware of the Complainant’s rights in the VALIUM mark. This is because, in the Panel’s view, it is unlikely that the Respondent would have registered the disputed domain names unless it was aware of the existence of the trademark VALIUM or that the disputed domain names might be of some type of economic advantage (See the Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113; Caesars World, Inc. v. Forum LLC, WIPO Case No. D2005-0517).
Registration of the disputed domain names incorporating Complainant’s well-known mark VALIUM by an entity that has no legitimate relationship with the Complainant in the circumstances of this case demonstrates bad faith (Telstra Corp. Ltd., v. Nuclear Marshmallows, WIPO Case No. D2000-0003, February 18, 2000).
The Panel recognizes that the disputed domain names are used to advertise links to websites promoting and/or offering products and services of third parties, especially in the pharmaceutical field being the business of the Complainant. As such, the Panel infers that the Respondent, by using the disputed domain names, is intentionally misleading the consumers and confusing them so as to attract them to other websites, making them believe that the websites behind those links are associated or recommended by the Complainant. As a result, the Respondent may generate unjustified revenues for each click-through by on-line consumers of the sponsored links. The Respondent is therefore illegitimately capitalizing on the reputation of the Complainant’s mark. See L’Oeal, Biotherm, Lancome Paffums et Beaute Cie v.Unasai, Inc., WIPO Case No. D2005-0623 finding “such exploitation of the reputation of trademarks to obtain click-though commissions from the diversion of Internet users is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous decisions.”
As such, the Panel concludes that the Respondent registered and used each of the disputed domain names in bad faith.
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 names <avalium.com>, <dalium.com>, <nalium.com>, <navalium.com> and <novalium.com> be transferred to the Complainant.
Dated: October 5, 2012