WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Roche Products Inc. v. Garry Wilson
Case No. D2012-0284
1. The Parties
The Complainant is Roche Products Inc., a corporation duly organized under the laws of Panama with offices in Hamilton, Bermuda, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, represented by Lathrop & Gage LLP, United States of America.
The Respondent is Garry Wilson of Houston, Texas, United States of America.
2. The Domain Name And Registrar
The disputed domain name <buyvaliuminfo.com> (“Domain Name”) is registered with Center of Ukrainian Internet Names (UKRNAMES) (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 14, 2012. On February 14, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 14, 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.
On February 17, 2012 the Center notified the Complainant that, as the language of the registration agreement for the Domain Name was Russian (as per information provided by the Registrar), the Complainant must provide satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English; or submit the Complaint translated into Russian; or submit a request for English to be the language of the administrative proceedings. On February 18, 2012 the Complainant confirmed that a request had already been submitted for English to be the language of the proceedings in the Complaint (paragraph 10 of the Complaint) providing the reasons for such request. The Respondent did not provide any comments in this regard.
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 in both Russian and English, and the proceedings commenced on February 23, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 14, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 16, 2012.
The Center appointed Olga Zalomiy as the sole panelist in this matter on April 13, 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
Based on the written evidence submitted by the Complainant, the Panel finds the following to be the facts of this case:
The Complainant is affiliated with various Roche companies. The Complainant owns a United States registration No. 725548 dated June 20, 1961 in the trademark VALIUM, and a US registration No. 1314271 dated November 6, 1984 in the shape of its tablets. VALIUM is a well-known trademark that has been used since 1961 in connection with a pharmaceutical product for the treatment and prevention of anxiety.
The parent company of the Complainant, F. Hoffmann-La Roche AG, is the registered owner of the <valium.com> domain name that incorporates the VALIUM trademark. The domain name directs to the Complainant’s website located at “www.roacheusa.com/products,” through which, on “www.gene.com” (the website that belongs to another member of the Roche group companies) the Complainant’s customers obtain information as to the Valium pharmaceutical product manufactured and sold by Roche.
The Respondent is the registrant of the Domain Name <buyvaliuminfo.com>, registered on November 17, 2011. Upon the registration, the Respondent provided the Registrar with an incorrect mailing address.
The Domain Name <buyvaliuminfo.com> had been used to direct users to a website in the English language that offered the Valium drug for sale. The “www.buyvaliuminfo.com” website used to display links to the websites “www.lifestylesales.net”, “www.medicalmedicine.org”, and “www.101generic.com” that offer for sale Valium and other anti-anxiety drugs. Currently, the Domain Name does not resolve to any website.
On January 31, 2012, the Complainant, through its counsel, sent a cease and desist letter to the Respondent via email and regular mail. In its letter, the Complainant advised the Respondent about its rights, objected to the Respondent’s use of the VALIUM trademark in the Domain Name and requested that the Respondent transfer the Domain Name to the Complainant. The Respondent did not reply to the letter.
5. Parties’ Contentions
A. Complainant
The Complainant alleges that together with its affiliated companies, it is one of the leaders in research of pharmaceutical and diagnostic products and has global operations in more than 100 countries. The Complainant claims that its VALUM trademark is registered in many countries for use in connection with a pharmaceutical psychotherapeutic agent. The Complainant alleges that the VALIUM trademark was extensively promoted in various types of advertising mediums.
1. The Complainant alleges that the Domain Name is confusingly similar to its registered trademark. The Complainant submits that the Domain Name incorporates the entire VALIUM trademark. The Complainant argues that in light of the registered trademark VALIUM, and the existence of the domain name <valium.com>, the Respondent’s registration and use of the Domain Name creates a strong likelihood of confusion as to source, sponsorship, association or endorsement of the Respondent’s website associated with the Domain Name by the Complainant. Further, the Complainant alleges that the addition of the descriptive words “buy” and “info” to its mark in the Domain Name does not prevent the likelihood of confusion with its trademark VALIUM.
2. The Complainant submits that the Respondent has no rights or legitimate interest in the Domain Name. The Complainant argues that “Valium” is not a word, and it has no valid use other than in connection with the Complainant’s trademark. The Complainant alleges that the Domain Name was selected and is being used because of the goodwill created by the Complainant in its VALIUM trademark. In the Complainant’s view, it is clear that neither the Respondent, nor its website has been commonly known by the Domain Name.
The Complainant argues that the Respondent’s use of the Domain Name is disreputable for several reasons. First, the Complainant argues that the Respondent’s use of the VALIM trademark in the Domain Name is without a license or permission from the Complainant. Second, the Complainant states that the Respondent’s website, to which the Domain Name resolves, offers the Complainant’s VALIUM brand, but actually supplies “Generic Valium”, a third party product, as well as the Complainant’s competitors’ anti-anxiety products through the linked sites “www.lifestylesales.net” and “www.101generic.com”. In addition, the Complainant claims that the “www.buyvaliuminfo.com” through its “www.lifestylesales.net” link site sells a generic medication, but depicts a VALIUM pill.
In the Complainant’s view, by the use and registration of the Domain Name, the Respondent seeks to capitalize on the reputation associated with the Complainant’s VALIUM trademark and to use that recognition to divert Internet users, seeking the Complainant’s website or the Valium product, to a website connected to the Domain Name and/or the linked sales sites, which are wholly unrelated to the Complainant. The Complainant alleges that the Respondent’s appropriation and use of the Complainant’s famous trademark VALIUM in the Domain Name, and for its commercial website is a clear attempt to create and benefit from consumer confusion regarding the association between the Complainant’s business and the Respondent’s sales activities of various pharmaceuticals through its linked sites. As a result, the Complainant claims that it is clear that the Respondent has no rights or legitimate interests in the Domain Name.
The Complainant further argues that the Respondent has not used the Domain Name for a bona fide offering of goods or services because the Respondent’s use of the VALIUM trademark in the Domain Name is evidence of the Respondent’s intent to trade upon the reputation of the Complainant’s famous trademark VALIUM. In addition, the Complainant claims that the Respondent’s unauthorized use of the VALIUM trademark in the Domain Name and the commercial use of the corresponding website do not confer rights or legitimate interests upon the Respondent. Finally, the Complainant alleges that there is no evidence that the Respondent is making a legitimate noncommercial or fair use of the Domain Name without intent for commercial gain.
3. The Complainant argues that the Domain Name was registered and is being used in bad faith because the Respondent’s purpose in registering the Domain Name is to capitalize on the reputation of the famous VALIUM trademark by diverting Internet users seeking the Complainant’s website to the Respondent’s website for its own commercial gain. Specifically, the Complainant alleges that the following facts support its arguments: the reputation of the famous VALIUM’s trademark; the absence of any relationship between the Complainant and the Respondent; and the Respondent’s offering of competitive and other third party products on the website connected to the Domain Name.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and findings
6.1. Language of the Proceeding.
Pursuant to paragraph 11 of the Rules, unless otherwise agreed by the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. In adopting a language other than that of the registration agreement, the Panel must exercise discretion in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs.1 In this case, the language of the registration agreement is Russian. There is no agreement between the parties as to the use of a different language in this proceeding. Under these circumstances, the language of the proceeding would typically be Russian. However, the Complainant submitted its Complaint in English and requested that English be the language of the proceeding. The Respondent did not object to, or comment on, that request. The Panel, therefore, now must determine the appropriate language for this proceeding.
The Panel finds English to be an appropriate language for this proceeding based on the Respondent’s apparent ability to understand the English language; absence of any objection from the Respondent to use of English as the language of the proceeding; absence of prejudice to the Respondent; and significant delay of the proceeding and expenses to be incurred by the Complainant should the proceeding be conducted in Russian. Based on the printouts of the Respondent’s website presented by the Complainant, it appears that the Respondent understands English because the content of the Respondent’s website was in English. The content of the websites linked to the Respondent’s website is also in English. Further, according to the registration information provided by the Respondent, he is a resident of the United States where English is the official language. In addition, the Respondent did not object to use of English as the language of the proceeding. Finally, to force the Complainant to translate the Complaint and accompanying documents into Russian, will both significantly delay the proceeding and result in significant expenses for the Complainant.
Taking into account the circumstances of this case and in the spirit of fairness and justice to both parties, the Panel determines English to be the appropriate language for the proceeding.
6.2. Analysis of the Complaint
According to paragraph 15(a) of the Rules, “A Panel shall 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.” In case of a respondent’s default, “the respondent’s default does not automatically result in a decision in favor of the complainant.”2 The complainant must establish “each of the three elements required by paragraph 4(a) of the UDRP.”3 Thus, to succeed on its claim, the Complainant must prove that: (1) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (2) the Respondent has no “rights or legitimate interests in respect of the Domain Name”; and (3) the Domain Name “has been registered and is being used in bad faith.”4
A. Identical or Confusingly Similar
To satisfy the first UDRP element, a domain name must be “identical or confusingly similar” to a trademark, in which a complainant has rights. Under paragraph 1.1 of the WIPO Overview 2.0, if the complainant owns a registered trademark, then it satisfies the threshold requirement of having trademark rights. Here, the Complainant has provided as evidence a copy of US trademark registration No. 725548 dated June 20, 1961 in the VALIUM trademark belonging to the Complainant as an assignee of the trademark. The Panel, therefore, finds that the Complainant has established its rights in the VALIUM trademark.
The test for confusing similarity should be a comparison between the mark and the domain name, which involves a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name.5 The Domain Name consists of 1) the VALIUM trademark in its entirety; 2) the prefix “buy”; 3) the suffix “info”; and 4) the generic top-level domain suffix “.com.” It is a consensus view among UDRP panelists that the addition of merely generic or descriptive wording to a complainant’s trademark, where the mark constitutes the dominant part of the domain name, is insufficient to avoid a finding of confusing similarity.6 In this case, the addition of the generic words “buy” and “info” to the Complainant’s trademark does not create a new or different mark, and is insufficient to avoid a finding of confusing similarity. It is also well established that the addition of the generic top-level domain suffix “.com” or its equivalent would usually be disregarded under the confusing similarity test, as it is a technical requirement of registration.7 Therefore, the Panel finds the Domain Name to be confusingly similar with the VALIUM trademark.
The Panel, therefore, finds that the Complainant has proven that the Domain Name is confusingly similar to the VALIUM mark in which the Complainant has rights, and that the first element of paragraph 4(a) of the UDRP has been satisfied.
B. Rights or Legitimate Interests
To establish the second element required by paragraph 4(a) of the UDRP, the “Complainant must show that the Respondent has no rights or legitimate interests in the Domain Name.8 “Panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent.”9 Therefore, to satisfy this requirement, the Complainant may make out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name.10 If such prima facie case is not rebutted by the Respondent, the Complainant will be deemed to have satisfied paragraph 4(a)(ii) of the Policy.
Paragraph 4(c) of the Policy provides an open list of circumstances which demonstrate rights or legitimate interests of a respondent in a domain name. Nothing in the record of this case demonstrates that the Respondent has been commonly known by the Domain Name pursuant to paragraph 4(c)(ii) or that the Respondent made a legitimate noncommercial use of the Domain Name pursuant to paragraph 4(c)(iii); nor did the Respondent use the Domain Name in connection with a bona fide offering of goods pursuant to paragraph 4(c)(i).
The Complainant submitted printouts from Internet science encyclopaedias and websites showing the fame of the VALIUM trademark and its wide use. Given the notoriety and distinctiveness of the VALIUM trademark and the fact that the word “Valium” is a made-up word, the Panel finds that it is unlikely that the Respondent has been commonly known by the Domain Name. In addition, according to the submitted printout from the “www.buyvaliuminfo.com,” the Respondent’s website provides no information about its owner. The website, however, offers information about the Complainant’s Valium drug which creates an impression of affiliation between the Complainant’s business and the Respondent’s sale activities. Thus, it is likely that the Respondent has not been commonly known by the Domain Name.
It is also unlikely that the Respondent is making a legitimate noncommercial or fair use of the Domain Name. The Domain Name resolves to a website that offers for sale both the Valium drug and other anti-anxiety products. Such use is clearly not a noncommercial or fair use.
Finally, the Respondent is not using the Domain Name in connection with bona fide offering of goods or services. The evidence submitted by the Complainant shows that the Respondent used the Domain Name in connection with the “www.buyvaliuminfo.com” website, which sells the branded and generic Valium drug and other drugs. It is a consensus view among UDRP panelists that “a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site’s accurately and prominently disclosing the registrant’s relationship with the trademark holder.”11
Here, according to the Complainant, the Respondent is not its authorized distributor. It has been held in previous UDRP cases that, an unauthorized party cannot claim a legitimate interest in a domain name that intentionally contains, or is confusingly similar with, a complainant’s mark, as the activities of such party cannot be said to constitute a good faith offering of goods or services.12 Since it is undisputed that the Domain Name is confusingly similar to the mark in which the Complainant has rights, the Respondent’s use of the Domain Name without the Complainant’s authorization cannot constitute bona fide offering of goods or services in the circumstances of this case.
The Respondent is also not a reseller who is making a bona fide offering of the Complainant’s goods, because the Respondent’s website contained no disclaimers concerning the relationship between the parties. Furthermore, the Respondent’s website is far from selling only the trademarked goods. The “www.buyvaliuminfo.com” displays a picture of a VALIUM pill, the Complainant’s product, but in fact supplies “Generic Valium,” which is a third party product. The Respondent also offers for sale other third-party drugs. Therefore, the Respondent does not have legitimate rights or interests in the Domain Name as a reseller or distributor of trademarked goods.
The Complainant, therefore, has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. Without contrary evidence from the Respondent, the Panel finds that the second element of the paragraph 4(a) of the UDRP has been established.
C. Registered and Used in Bad Faith
The third element of paragraph 4(a) of the UDRP requires “a positive finding that both the registration and use were in bad faith.”13 Paragraph 4(b) of the UDRP provides an open list of the circumstances that “shall be evidence of the registration and use of a domain name in bad faith.” The Panel finds that circumstances present in this case correspond to those described in paragraph 4(b)(iv) of the UDRP. More specifically, the Panel finds that by using the Domain Name, the Respondent intentionally attempted to attract, for commercial gain, Internet users to his website 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 location or of a product or service on [the Respondent’s] web site or location.”
The Panel finds that it is more likely than not that the Respondent registered the Domain Names in bad faith because the Respondent was aware of the Complainant’s well-known VALIUM trademark. It is not likely that the Respondent chose the word VALIUM to be the main element of its Domain Name by chance, because “Valium” is a coined term and is not an actual word. In addition, the Domain Name that incorporates the VALIUM trademark was registered fifty years after the Complainant registered its VALIUM trademark. During the fifty years the Complainant invested enormous time and efforts to promote the VALIUM trademark. Printouts from various Internet-based science encyclopedias and news websites submitted by the Complainant show that the Valium drug is well-known and widely used. Based on the long history of the mark and its wide recognition, the Panel finds the VALIUM mark to be a well-known mark. “Opportunistic bad faith” is shown when a domain name incorporating a well-known mark is registered” by someone with no connection with the product.14 Because the Respondent, who as discussed above has no connection with the Valium drug, registered the Domain Name which incorporated the Complainant’s well-known trademark, bad faith registration has been shown.
Despite its current passive holding of the Domain Name, the Respondent is using the Domain Name in bad faith. It is a consensus view among the UDRP panelists that bad faith use of a domain name can be found even if the domain name is not actively used.15 The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant's concealment of its identity. All of these examples are present in this case.
Furthermore, as discussed more fully below, the Respondent already used the Domain Name in bad faith and nothing prevents him from resuming such bad faith use. The Panel finds that the Respondent is more likely than not to be related to, if not the same person, as Mark Valin, an individual who registered and used domain name <valiumtabs.com> in bad faith. See, Roche Products Inc. v. Mark Valin, WIPO Case No. 2011-1835. Similar to this case, the Respondent in the Valin case registered the domain name <valiumtabs.com> with the Center of Ukrainian Internet Names. Like the <buyvaliuminfo.com> domain name here, the <valiumtabs.com> domain name redirected to the linked sites “www.lifestylesales.net”, “www.medicalmedicine.org” and “www.101generic.com.” Mark Valin provided the Registrar with a false postal address in the United States. Similarly, a printout from the WhoIs database and copies of the UPS communication received by the Center show that the postal address provided by the Respondent to the Registrar is false (in the sense that it apparently refers to a non-existent location). Furthermore, both websites “www.buyvaliminfo.com” and ““www.valiumtab.com” at some point in time displayed an identical description of the Valium drug. Finally, the Domain Name was registered shortly after commencement of the UDRP proceeding in the Valin. Therefore, it is likely that the Respondent in the present case and Mark Valin in the previous proceeding are either related to or are the same person. By registering the Domain Name, this person has shown that if given the chance, he will resume bad faith use of the Domain Name.
The Panel also finds that the Respondent used the Domain Name in bad faith because he intentionally attempted to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s mark “as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.” It is likely that potential consumers were misled into believing that the Respondent was affiliated with, or endorsed by, the Complainant, because the Domain Name incorporated the Complainant’s well-known mark in its entirety and the Respondent’s website offered the brand and generic Valium drug for sale. It is also plausible that Internet users were diverted to the Respondent’s website instead of reaching the Complainant’s legitimate website. The Panel finds it likely that the Respondent intended to benefit from this confusion by offering Valium for sale because, after his first attempt to benefit from the Complainant’s trademark in “www.valiumtabs.com” was disrupted, he created another chain of interlinked websites offering Valium and other anti-anxiety drugs. Finally, the Respondent’s website displayed a depiction of the Complainant’s VALIUM pill, but sold only third party “Generic Valium,” thus making public purchase a less expensive product at the price of more expensive one. Panel, therefore, finds that the Domain Name is being used in bad faith.
Accordingly, the Panel concludes that the Domain Name was registered and is being used in bad faith, and that the Complainant has therefore established the third element of paragraph 4(a) of the UDRP.
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 <buyvaliuminfo.com> be transferred to the Complainant.
Olga Zalomiy
Sole Panelist
Dated: April 23, 2012
1 See, paragraphs 10(a) and 10(b) of the Rules; Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004. See also, Biotechnology and Biological Sciences Research Council v. Kim Jung Hak, WIPO Case No. D2009-1583.
2 See, Paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
3 Id.
4 See, Paragraph 4(a) of the UDRP.
5 See, Paragraph 1.2 of WIPO Overview 2.0.
6 See, Paragraph 1.9 of the WIPO Overview, 2.0.
7 See, Paragraph 1.2 of the WIPO Overview, 2.0.
8 Paragraph 4(a)(ii) of the Policy.
9 Paragraph 2.1 of the WIPO Overview, 2.0.
10 See, Paragraph 2.1 of the WIPO Overview, 2.0.
11 See, Paragraph 2.3 of the WIPO Overview, 2.0.
12 Research In Motion Limited v. Blackberry World, WIPO Case No. D2006-1099; See also Telstra Corporation Limited. v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
13 See, Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.
14 Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co. , WIPO Case No. D2000-0163. See also, General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087; Microsoft Corporation v. Montrose Corporation, WIPO Case No. D2000-1568.
15 See, Paragraph 3.2 of the WIPO Overview, 2.0.