WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. Pharma Belt
Case No. D2012-1843
1. The Parties
The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, internally represented.
The Respondent is Pharma Belt of Lahore, Pakistan.
2. The Domain Name and Registrar
The disputed domain name <valiumbelt.com> is registered with Paknic (Private) Limited (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on September 14, 2012. On September 14, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 21, 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 for the disputed domain name.
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 September 24, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 14, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 16, 2012.
The Center appointed David J.A. Cairns as the sole panelist in this matter on November 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 the registered owner of International Registration No. 250,784 for the trademark VALIUM based on Swiss registration Nº 188,587 dated October 20, 1961.
The disputed domain name was registered on September 11, 2012.
The Complainant submitted evidence that on September 14, 2012, the disputed domain name hosted a website entitled ‘!Valium Belt! Buy drugs online. Wholesalers, Retailers and Stockists of Quality Drugs’. The landing page contained links to various categories of drugs. The drugs offered for sale included the Complainant’s Valium product, but also many unrelated products by various other manufacturers. The Panel entered the disputed domain name in his web browser on November 19, 2012 and received an error message.
5. Parties’ Contentions
The Complainant states that together with its affiliated companies it is one of the world’s leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics, having global operations in more than 100 countries. The Complainant’s 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 states that the disputed domain name is confusingly similar to the Complainant’s VALIUM mark as it incorporates this mark in its entirety and the addition of the term ”belt” does not sufficiently distinguish the disputed domain name from the trademark. The Complainant also states that the VALIUM mark is well-known and notorious, and that this notoriety will increase the likelihood of confusion. It also notes that the Complainant’s use and registration of the mark VALIUM predate the Respondent’s registration of the disputed domain name.
The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It says that the Complainant has exclusive rights for VALIUM, and no licence, permission, authorization or consent was granted to use VALIUM in the disputed domain name. Furthermore, 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 online. It states that there is no reason why the Respondent should have any right or interest in such domain name.
The Complainant alleges that the disputed domain name was registered and is being used in bad faith. It states that the disputed domain name was registered in bad faith since at the time of the registration i.e., on September 11, 2012, the Respondent had knowledge of the Complainant’s well-known product/mark VALIUM. The disputed domain name is being used in bad faith as the Respondent has intentionally attempted (for commercial purposes) to attract Internet users to the Respondent’s websites, by creating a likelihood of confusion with the Complainant’s well-known mark as to the source, affiliation and endorsement of the Respondent’s websites or of the products or services posted on or linked to the Respondent’s websites. It refers to Pfizer Inc. v. jg a/k/a Josh Green, ( WIPO Case No. D2004-0784) and F. Hoffmann-La Roche AG v. Pinetree Development, Ltd, ( WIPO Case No. D2006-0049). It also states that the Respondent is intentionally misleading consumers and confusing them by making them believe that the Respondent’s websites are associated or recommended by Complainant. As a result, the Respondent may generate unjustified revenues and therefore is illegitimately capitalizing on the VALIUM trademark.
The Complainant requests that the disputed domain name be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Panel is required to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable (paragraph 15(a) o the Rules).
The Policy requires the Complainant to prove all three of the following elements to be entitled to the relief sought: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy elaborates some circumstances that shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(c) sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights or legitimate interests in the disputed domain name.
A. Identical or Confusingly Similar
The Panel accepts that the Complainant owns the VALIUM trademark internationally.
The disputed domain name is not identical with the Complainant’s trademark. The disputed domain name incorporates the Complainant’s trademark entirely, adding the suffix “belt”. This suffix has no meaning in relation to pharmaceuticals, and appears instead to refer to part of the Respondent’s name (“Pharma Belt”).
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.2 states that “The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms .... typically being regarded as insufficient to prevent threshold Internet user confusion. Application of the confusing similarity test under the UDRP would typically involve a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name.” Further, “the similarity of the trademark and the domain name depends on many factors, including the relative distinctiveness of the trademark and the non-trademark elements of the domain name, and whether the non-trademark elements detract from or contradict the function of the trademark as an indication of origin.” (See Pfizer Inc v. The Magic Islands, WIPO Case No. D2003-0870).
In the present case, the Panel considers that on a straightforward visual comparison the disputed domain name is confusingly similar to the VALIUM trademark for the following reasons: (a) “valium” is an unusual and invented word with a high degree of inherent distinctiveness; (b) “belt” is a common and descriptive word; (c) VALIUM is the most prominent element in the disputed domain name and is easily recognizable as such in the domain name; and (d) the disputed domain name in its entirety identifies a website that Internet users will assume relates or refers to the Complainant’s pharmaceutical in some way.
Therefore the addition of the suffix “belt” is not sufficient to avoid a confusing similarity between the VALIUM trademark and the disputed domain name, and so the first element required by the Policy is satisfied.
B. Rights or Legitimate Interests
The Panel notes the following circumstances in relation to any possible rights or legitimate interests of the Respondent in the disputed domain name: (i) there is no evidence that the Respondent has any proprietary or contractual rights in any registered or common law trademark corresponding to the disputed domain name; (ii) the Respondent is not authorized or licensed by the Complainant to use the VALIUM trademark or to register and use the disputed domain name; (iii) the Respondent has been making a commercial use of the disputed domain name (through offering pharmaceuticals for sale) so the circumstances described in paragraph 4(c)(iii) do not exist in the present case.
As regards paragraph 4(c)(i), the Panel finds that the Respondent is using the disputed domain name in relation to an offering of goods or services. However, this offering is not bona fide because the Respondent’s website offers for sale not only the Complainant’s Valium pharmaceutical but also many other pharmaceutical products, and so is attracting Internet users through the fame of the Complainant’s trademark who are then offered a wide range of unrelated products. The Respondent’s conduct constitutes “bait and switch” marketing, which is not bona fide: see Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.
Further, although the Respondent’s name and the disputed domain name share the word “belt”; there is no evidence that the Respondent has been commonly known by the disputed domain name or any name that includes the trademark VALIUM, so that paragraph 4(c)(ii) of the Policy has no application.
Accordingly, and in the absence of any response from the Respondent providing any evidence to support a possible basis on which the Respondent may have rights or legitimate interests in respect of the disputed domain name, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Thus, the second element of paragraph 4(a) of the Policy is satisfied.
C. Registered and Used in Bad Faith
The Panel notes that “valium” is an invented word with no meaning in English. It is a highly distinctive trademark and has been extensively used by the Complainant internationally. The Respondent has registered and used a domain name incorporating prominently this well known trademark to offer for sale not only the Complainant’s product, but also the unrelated products of other manufacturers. The Respondent’s name and website confirm that it is in the business of the sale of pharmaceuticals and knew of the Complainant’s trademark at the time of registration, and deliberately sought to use its goodwill to attract Internet users seeking the Complainant’s product. The Panel concludes that the Respondent has registered and used the disputed domain name in order to attract Internet users seeking the Complainant’s product, so as to generate revenue from selling not only the Complainant’s Valium product, but also unrelated pharmaceuticals of other manufacturers. The use of the VALIUM trademark to sell the products of other manufacturers in this way constitutes bad faith registration and use within the meaning of the Policy (see, for example, F. Hoffmann-La Roche AG v. Pinetree Development, Ltd. WIPO Case No. D2006-0049, referred to by the Complainant.
Paragraph 4(b) of the Policy sets out four non-exclusive circumstances any of which, if found by the Panel, shall be evidence of registration and use of a domain name in bad faith. In particular, Paragraph 4(b)(iv) states that if the Panel finds that the Respondent has used the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website, it should be taken as evidence of the registration and use of the domain name in bad faith.
There is also bad faith within the meaning of paragraph 4(b)(iv). The Respondent’s use of the disputed domain name with the intention to attract Internet users for commercial gain is established by the fact that the disputed domain name hosts a website offering pharmaceuticals for sale. The likelihood of confusion as to source, sponsorship, affiliation or endorsement is established by the fact that the disputed domain name is confusingly similar to the VALIUM trademark, and Internet users are likely to assume the disputed domain name hosts a website that is affiliated with or endorsed by the Complainant in the sense that it offers Valium for sale with the Complainant’s consent or approval, or subject to quality control by the Complainant. A reasonably intelligent Internet user, in navigating a website that offers for sale many products of other manufacturers, might suspect that there is indeed no connection with the trademark owner, but the fact that the deception as to source, affiliation or endorsement might be rectified by the content of the website does not alter the fact that the user has been brought to the website by deception and a bad faith misuse of the goodwill attached to the Complainant’s trademark (see F. Hoffmann-La Roche AG v. Alex Rino WIPO Case No. D2012-1867).
Paragraph 4(a)(iii) of the Policy requires that the disputed domain name “is being used” in bad faith. As noted above, it appears that the Respondent has discontinued the link that existed at the time of the Complaint between the disputed domain name and the website offering pharmaceuticals for sale. The fact that the disputed domain name does not currently resolve to an active website does not alter the Panel’s findings. Paragraph 4(b)(iv) of the Policy does not require that use be continuing at the time the decision is issued. In any event, the Panel is satisfied that the Respondent continues to use the disputed domain name in bad faith by passively holding the disputed domain name so as to be in a position to take advantage of the commercial reputation of the Complainant’s trademark (see Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti WIPO Case No. D2005-0037).
Accordingly, the third element of paragraph 4(a) of the Policy is also satisfied.
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 <valiumbelt.com> be transferred to the Complainant.
David J.A. Cairns
Dated: November 23, 2012