WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche v. Max Lucky
Case No. D2011-0218
1. The Parties
The Complainant is F. Hoffmann-La Roche of Basel, Switzerland, represented internally.
The Respondent is Max Lucky of Manila, Philippines.
2. The Domain Names and Registrar
The disputed domain names <buyvaliumdiazepam.com>, <buy-valium-online.org>, <cheap-valium.net>, <generic-valium.org>, <valiumonlineuk.com>, <valiumuk.org>, <valiumvsclonazepam.com>, <valiumwithoutrx.com> and <valiumxanax.com> (the “Domain Names”) are 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 2, 2011. On February 3, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On February 11, 2011 and February 22, 2011, 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 March 1, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 21, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 22, 2011.
The Center appointed José Carlos Erdozain as the sole panelist in this matter on April 4, 2011. 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.
Paragraph 11 (a) of the Rules provides that, unless otherwise agreed by the parties, or specified otherwise in the registration agreement for the disputed domain name, the language of the administrative proceeding shall be the language of the registration agreement. This is subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the case. The language of the registration agreement for each of the Domain Names is Russian. The Center sent a language communication to both parties in both English and Russian. The Complainant has requested that English be the language of the proceeding. In this case, the language communication from the Center, informed the Respondent that if the Respondent did not object by the due date to a language request by the Complainant, the Center would proceed on the basis that the Respondent did not object to the Complainant’s request that English be the language of the proceeding. The Respondent did not object. The Panel further notes that the content of the web sites at the Domain Names is in English. Therefore, the Panel concludes that English should be the language of the proceeding.
4. Factual Background
The Complainant is one of the largest leading companies in the world in the field of pharmaceutical products. It leads operations in more than 100 countries.
The Complainant is owner of the trademark VALIUM since October, 20, 1961. It was registered on an international basis (registration number R250784). This trademark has been duly renovated and was in force at the moment of registration of the Domain Names.
The trademark VALIUM is a distinctive sign and the Complainant has gained reputation throughout the world with the distribution and commercial use of this medicament.
The Respondent has not been licensed nor authorized to use the trademark VALIUM.
The Domain Names were registered in November 30, 2010.
The web sites at the Domain Names include links and contents referred to pharmaceutical web sites.
One of the Domain Names, specifically <valiumxanax.com>, includes a third party’s trademark, namely the word “xanax”.
One of the Domain Names, specifically <valiumvsclonazepam.com>, includes the international non-proprietary name of the Complainant’s drug Rivotril.
One of the Domain Names, specifically <buyvaliumdiazepam.com>, includes the international non-proprietary name of the Complainant’s drug Valium.
5. Parties’ Contentions
The Complainant contends that:
The Domain Names are confusingly similar to its trademark VALIUM. This trademark is duly registered since 1961.
The Complainant is one of the leading companies in the pharmaceutical field, having global operations in more than 100 countries.
The trademark VALIUM is protected in more than 100 countries and is considered a well-known trademark.
The Domain Names include descriptive terms or references to international non-proprietary terms of Complainant’s drugs, Valium and Rivotril, respectively. Globally considered, these terms do not sufficiently distinguish the Domain Names from the trademark of the Complainant VALIUM.
The Respondent has no rights or legitimate interests in the Domain Names. The Respondent has not been licensed, nor authorized to use on a commercial basis the trademark VALIUM.
The Domain Names were registered and are being used in bad faith, since at the time of the registration of the Domain Names the trademark VALIUM was very well-known. In addition, the web sites corresponding to the Domain Names include links and references to products or services related to the pharmaceutical field. As a result, the Respondent is intentionally misleading the consumers and confusing them by making them believe that the web sites in question and the links are associated or recommended by the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Panel renders its decision on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any relevant principles of law that it deems applicable.
A. Identical or Confusingly Similar
The first element of the Policy is that the Domain Names are identical or confusingly similar to any of the Complainant’s trademarks.
The Complainant owns exclusive trademark rights with respect to the word VALIUM in more than 100 countries. Said trademark was registered in 1961 and is valid and in force to date.
The Complainant has submitted full proof of the fact that said trademark is well-known throughout the world and that it covers activities which are related to clinic products, medicaments et al.
A significant number of UDRP WIPO decisions regarding the requirement of identity or confusingly similarity has been produced. In the Panel’s opinion, following the doctrine settled by the European Court of Justice, and in accordance with UDRP WIPO decisions, a mark used by a respondent is identical with a complainant’s mark if the former reproduces without any modification or addition all the elements constituting the trademark or, where, viewed as a whole, it contains differences so insignificant that they go unnoticed by an average consumer (see Viacom International Inc. v. Mo-Team, WIPO Case No. D2009-1420).
All the Domain Names include the word “valium”, which is, as previously said, the Complainant’s trademark. In fact, the Domain Names also include references to descriptive terms (see <generic-valium.org> or <cheap-valium.net> or <buy-valium-online.org>) or references to international non-proprietary terms of the Complainant’s drugs (see <buyvaliumdiazepam.com>, <valiumvsclonazepam.com> and <valiumwithoutrx.com>) or references to country codes internationally accepted (see <valiumonlineuk.com> and <valiumuk.org>). As to the domain name <valiumxanax.com>, it includes a third party’s trademark, which may lead to confusion to any consumer accessing the web site..
The Panel comes to the conclusion that all of the words that are added in the Domain Names to the word “valium” are irrelevant to produce a significant difference (or any difference) for a medium type consumer of the product offered by the Complainant and covered by the trademark VALIUM. Moreover, by having access to each and any of the web sites at the Domain Names such a consumer could be confused as to the commercial source of the product or as to whether or not the Complainant and the Respondent are somehow linked. This confusion may increase by the fact that the Domain Names include links and contents referred to pharmaceutical web sites.
Taking into consideration the above, and specifically the jurisprudence of the European Court and UDRP WIPO decisions rendered in similar cases, the Panel concludes that the Domain Names are confusingly similar with the trademark of the Complainant.
The Panel finds that the Complainant has established the first element of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that respondent may establish rights or legitimate interests in the disputed domain names by proof of any of the following non-exclusive list of circumstances: (i) before any notice to respondent of the dispute, respondent used, or made demonstrable preparations to use, the domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or (ii) respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if respondent has not acquired trademark or service mark rights; or (iii) respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. If the circumstances are sufficient to constitute a prima facie showing by the complainant of absence of rights or legitimate interests on the part of the respondent, the evidentiary burden shifts to the respondent to show, by plausible, concrete evidence, that it does have a right or a legitimate interest.
In this case, the Respondent has not filed any response to the Complaint, which means that no proof of any right or legitimate interests in the Domain Names has been filed by the Respondent. Moreover, the Complainant alleges that it has never licensed the use of its trademark to the Respondent. Also to be taken into account is the fact that the Respondent has never been commonly known by any of the Domain Names, and that the use of the same is strictly commercial (the Domain Names include links and contents referred to pharmaceutical web sites).
The Respondent has failed to establish any of the circumstances listed above as i), ii) and iii). The Respondent has not submitted any evidence or proof of any of those circumstances (see Casa Tarradellas, S.A. / D. José Tarradellas Arcarons v. Indices de Gestión, S.L., WIPO Case No. D2001-0151; Compaigne Gervais Danone. v. Danup.com, WIPO Case No. D2008-0076).
These circumstances lead the Panel to the conclusion that the Respondent does not have any rights or legitimate interests in the Domain Names (see Guerlain, S.A. v. Peikang, WIPO Case No. D2000-0055, and Bayer Akiengesellschaft v. K Dango, WIPO Case No. D2002-0138).
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove that the Disputed Domain Names have been registered and are being used in bad faith. Paragraph 4(b) lists four circumstances that, without limitation, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
In this case, the Complainant has evidenced that the trademark VALIUM was a well-known trademark when the Domain Names were registered (on November 30, 2010). The Respondent had to be aware of the Complainant’s activities and of the Complainant’s well known trademark.
The Complainant has also filed convincing proof that the Respondent’s commercial activity is in the same area of business, that is, medicaments and pharmaceutical products. The web sites at the Domain Names include links and contents referred to pharmaceutical web sites. Therefore, it is beyond any reasonable doubt that by registering and using the Domain Names the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the web sites at the Domain Names by creating a likelihood of confusion with the Complainant’s trademark VALIUM as to the source of the web sites in question and the product covered by the trademark VALIUM. This conclusion is reasonable in view of the evidence in the case (see also Guardant, Inc. v. youngcho kim, WIPO Case No. D2001-0043 and Pfizer Inc. v. Phillip Pizzurro, WIPO Case No. D2004-0600).
Therefore, the Panel concludes that the Domain Names were registered and are being used in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <buyvaliumdiazepam.com>, <buy-valium-online.org>, <cheap-valium.net>, <generic-valium.org>, <valiumonlineuk.com>, <valiumuk.org>, <valiumvsclonazepam.com>, <valiumwithoutrx.com> and <valiumxanax.com> be transferred to the Complainant.
Dr. José Carlos Erdozain
Dated: April 18, 2011