About Intellectual Property IP Training IP Outreach IP for… IP and... IP in... Patent & Technology Information Trademark Information Industrial Design Information Geographical Indication Information Plant Variety Information (UPOV) IP Laws, Treaties & Judgements IP Resources IP Reports Patent Protection Trademark Protection Industrial Design Protection Geographical Indication Protection Plant Variety Protection (UPOV) IP Dispute Resolution IP Office Business Solutions Paying for IP Services Negotiation & Decision-Making Development Cooperation Innovation Support Public-Private Partnerships The Organization Working with WIPO Accountability Patents Trademarks Industrial Designs Geographical Indications Copyright Trade Secrets WIPO Academy Workshops & Seminars World IP Day WIPO Magazine Raising Awareness Case Studies & Success Stories IP News WIPO Awards Business Universities Indigenous Peoples Judiciaries Genetic Resources, Traditional Knowledge and Traditional Cultural Expressions Economics Gender Equality Global Health Climate Change Competition Policy Sustainable Development Goals Enforcement Frontier Technologies Mobile Applications Sports Tourism PATENTSCOPE Patent Analytics International Patent Classification ARDI – Research for Innovation ASPI – Specialized Patent Information Global Brand Database Madrid Monitor Article 6ter Express Database Nice Classification Vienna Classification Global Design Database International Designs Bulletin Hague Express Database Locarno Classification Lisbon Express Database Global Brand Database for GIs PLUTO Plant Variety Database GENIE Database WIPO-Administered Treaties WIPO Lex - IP Laws, Treaties & Judgments WIPO Standards IP Statistics WIPO Pearl (Terminology) WIPO Publications Country IP Profiles WIPO Knowledge Center WIPO Technology Trends Global Innovation Index World Intellectual Property Report PCT – The International Patent System ePCT Budapest – The International Microorganism Deposit System Madrid – The International Trademark System eMadrid Article 6ter (armorial bearings, flags, state emblems) Hague – The International Design System eHague Lisbon – The International System of Appellations of Origin and Geographical Indications eLisbon UPOV PRISMA Mediation Arbitration Expert Determination Domain Name Disputes Centralized Access to Search and Examination (CASE) Digital Access Service (DAS) WIPO Pay Current Account at WIPO WIPO Assemblies Standing Committees Calendar of Meetings WIPO Official Documents Development Agenda Technical Assistance IP Training Institutions COVID-19 Support National IP Strategies Policy & Legislative Advice Cooperation Hub Technology and Innovation Support Centers (TISC) Technology Transfer Inventor Assistance Program WIPO GREEN WIPO's Pat-INFORMED Accessible Books Consortium WIPO for Creators WIPO ALERT Member States Observers Director General Activities by Unit External Offices Job Vacancies Procurement Results & Budget Financial Reporting Oversight

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

F. Hoffmann-La Roche AG v. Ivan Shashkov

Case No. D2013-0263

1. The Parties

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

The Respondent is Ivan Shashkov of Ivanovo, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <valiumbuyhere.com> is registered with Bizcn.com, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 7, 2013. On February 7, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 10, 2013, 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 February 13, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 5, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 6, 2013.

The Center appointed Chiang Ling Li as the sole panelist in this matter on March 12, 2013. 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’s mark VALIUM (the “Trademark”) has been registered as a trademark, including with the Bureaux Internationaux Réunis pour la Protection de la Propriété Intellectuelle (United International Bureaux for the Protection of Intellectual Property), for pharmaceutical products.

The Respondent registered the disputed domain name <valiumbuyhere.com> (the “Domain Name”) on January 25, 2011. The Respondent did not submit any response to the Complaint.

5. Parties’ Contentions

A. Complainant

The Domain Name is confusingly similar to the Trademark

The Complainant submits that the Domain Name incorporates the Trademark in its entirety, and that the additional generic terms “buy” and “here” do not sufficiently distinguish the Domain Name from the Trademark. It adds that the Complainant’s use and registration of the Trademark predates the Respondent’s registration of the Domain Name.

Respondent’s lack of right or interest in the Domain Name

The Complainant submits that it has the exclusive rights to the Trademark and that it has not authorised the Respondent’s use of the Domain Name. It submits that the Domain Name clearly alludes to the Complainant, and that there is no reason for the Respondent to have any interest in the Domain Name.

Domain Name was registered and is being used in bad faith

The Complainant contends that the Domain Name was registered in bad faith because the Respondent undoubtedly had knowledge of the Trademark, which is well-known. It further stated that the Domain Name is being used in bad faith because the Respondent has attempted to attract Internet users to its website by creating a likelihood of confusion as to the source, affiliation and endorsement of the Respondent’s products or services on its website, for a commercial purpose. The Complainant further alleges that the Respondent may generate unjustified revenues, and as such, is illegally capitalizing on the Trademark.

Requested remedy

The Complainant requests that the Domain Name be transferred to it.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel finds that the Domain Name is confusingly similar to the Trademark, due to the incorporation of the entirety of the Trademark in the Domain Name. The words “buy” and “here” do not distinguish the Domain Name from the Trademark.

Accordingly, the Panel finds that the first element of Paragraph 4(a) of the Policy is satisfied.

B. Rights or Legitimate Interests

In this case, the Respondent has not presented evidence that the Respondent used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services, that the Respondent is commonly known by the Domain Name or that the Respondent is making a legitimate noncommercial or fair use of the Domain Name, or in any other way refuted the Complainant’s prima facie case.

Accordingly, the Panel finds that the second element of Paragraph 4(a) of the Policy is satisfied.

C. Registered and Used in Bad Faith

Having examined the website of the Domain Name, the Panel finds that there is no link to an online pharmacy or store, and that despite the images of credit cards at the bottom of the webpage (which denotes that payment is accepted for the products), there is in fact no payment mechanism on the website, either through the website or through a third party payment vendor.

As the Respondent used the Domain Name to set up the website which displays information on the Valium product, the Respondent must be aware of the Valium product and mark. The Domain Name implies that the Complainant’s products can be bought on the website (even if they cannot be) without appropriately disclosing its relationship with the Complaint.

The Panel thus finds that the third element of paragraph 4(a) of the Policy is satisfied.

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 Domain Name <valiumbuyhere.com> be transferred to the Complainant.

Chiang Ling Li
Sole Panelist
Date: March 26, 2013

https://www3.wipo.int/contact/en/area.jsp?area=arbitration https://www.wipo.int/pressroom/en/ https://www.wipo.int/tools/en/disclaim.html https://www.wipo.int/en/web/privacy-policy/ https://www.wipo.int/en/web/accessibility/ https://www.wipo.int/tools/en/sitemap.html https://www3.wipo.int/newsletters/en/ https://www.wipo.int/podcasts/en/ https://www.wipo.int/news/en/