WIPO Arbitration and Mediation Center


F. Hoffmann-La Roche AG v. John Delan, Web-Host / Contact Privacy Inc.

Case No. D2012-1259

1. The Parties

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

The Respondent is John Delan, Web-Host of Isle of Man, United Kingdom of Great Britain and Northern Ireland / Contact Privacy Inc. of Toronto, Ontario, Canada.

2. The Domain Name and Registrar

The disputed domain name <valiumuk.info> is registered with Tucows Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 20, 2012. On June 20, 2012, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On June 20, 2012, Tucows Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 22, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on June 22, 2012.

The Center verified that the Complaint together with the amendment to 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 July 2, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 22, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 26, 2012.

The Center appointed Simon Minahan as the sole panelist in this matter on August 3, 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

For the purposes of this proceeding, the Panel finds the following facts from the evidence presented by the Complainant, there having been no contradictory evidence from the Respondent.

The Complainant is the owner of the trade mark VALIUM which is the brand name of an internationally marketed pharmaceutical sedative which has been applied since the early 1960’s. VALIUM is registered as a trade mark in more than 100 jurisdictions including the European Union, United States of America and elsewhere throughout the world.

VALIUM is a famous or well-known mark within the meaning of Article 6bis of TRIPS.

The Respondent is not and has never been authorized, licensed or otherwise permitted by the Complainant to apply or make commercial use of the VALIUM trade mark or to act as a re-seller of Valium product.

The disputed domain name has been and is being used to direct traffic to an on-line pharmacy.

5. Parties’ Contentions

A. Complainant

The Complainant contends the disputed domain name should be transferred to it because, among other reasons:

a) the disputed domain name is confusingly similar to its VALIUM trade mark, the disputed domain name being comprised of the trade mark and the suffix “uk” - a generic geographical identifier indicating the United Kingdom which does nothing to distinguish the disputed domain name from the trade mark or otherwise diminish the inevitably confusing similarity/identity with the trade mark.

b) the VALIUM trade mark is famous and belongs exclusively to the Complainant and the Respondent has no direct interest or right in it and has not been authorized to use it and has selected the disputed domain name deliberately to illegitimately trade off the trade mark’s reputation and established goodwill.

c) as a general proposition a registrant has no legitimate interests in a domain name which is similar to a pharmaceutical trade mark and which is used to direct traffic to an on-line pharmacy (citing Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004–0784).

d) the disputed domain name was registered in bad faith since the Respondent is to be taken to have known of the trade mark at the time of registration and can have had no purpose for the registration other than taking illegitimate commercial advantage of the fame of the VALIUM trade mark.

e) the use of the disputed domain name and the inevitable confusion about its association with the Complainant to direct traffic to an on-line pharmacy is plainly done in bad faith ( again citing Pfizer Inc. v. jg a/k/a Josh Green, supra).

B. Respondent

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

6. Discussion and Findings

The Panel finds the Complaint to be properly constituted and further finds it has jurisdiction under the UDRP.

Notwithstanding that the Respondent has not replied to the claims of the Complainant, the Complainant nonetheless has the onus of making out the grounds for transfer of the disputed domain name under the UDRP.

A. Identical or Confusingly Similar

The Panel finds, in accordance with UDRP paragraphs 4(a)(iii) and 4(b), the disputed domain name is confusingly similar to the Complainant’s VALIUM trade mark for the following reasons.

The disputed domain name comprises the Complainant’s famous VALIUM trade mark and the suffix “uk” - which is a generic abbreviation for the United Kingdom. The suffix is essentially descriptive and used in combination with the VALIUM trade mark. It is highly suggestive of a variant or associated local offering of the Complainant’s product associated with the Complainant. As such the “uk” suffix does nothing to distinguish the disputed domain name or rescue it from confusing similarity to the Complainant’s VALIUM trade mark. Rather it deliberately seeks market leverage from it.

The Panel notes that it is a long-established precedent that confusing similarity is generally recognized when well-known trade marks are paired up with different kinds of generic prefixes and suffixes: e.g: Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488.

Numerous other UDRP decisions have confirmed that general contention, too e.g.:

Sanofi-Aventis v. Direct Response Marketing aka DRM, WIPO Case No. D2005-0661;

Sanofi-aventis v. Elizabeth Riegel and Andrew Riegel, WIPO Case No. D2005-1045;

Telstra Corporation Ltd v. Peter Lombardo, Marino Sussich and Ray Landers, WIPO Case No. D2000-1511;

Pepsico Inc. v. Pepsi SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS), WIPO Case No. D2003-0696;

Pepsico Inc. v. Diabetes Home care and DHC services, WIPO Case No. D2001-0174;

Sony Kabushiki Kaisha v. Kil Inja, WIPO Case No. D2000-1409;

America Online Inc. v. Chris Hoffman, WIPO Case No. D2001-1184;

Pfizer Inc. v. United Pharmacy Ltd, WIPO Case No. D2001-0446;

Wal-Mart Stores, Inc. v. Lars Stork, WIPO Case No. D2000-0628;

America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713;

Wal-Mart Stores, Inc. v. Yongsoo Hwang, NO-WALMART and NO-WALMART.COM, WIPO Case No. D2000-0838;

AltaVista Company v. S.M.A., Inc., WIPO Case No. D2000-0927.

Further, the presence of the gTLD identifier “.info” is to be disregarded as neutral and does not operate to distinguish the disputed domain name or to diminish or reduce confusion around it. See e.g.: Telecom Personal v. namezero.com, WIPO Case No. D2001-0015; Nokia Corporation v. Private Case, WIPO Case No. D2000-1271

B. Rights or Legitimate Interests

The Panel notes that the evidence of the Complainant is that it has exclusive rights in the trade mark and it has not licensed or otherwise authorized the Respondent to make any use of it. Under paragraph 4(a)(ii) of the Policy this set of circumstances shifts the burden to establish any rights or legitimate interests in the disputed domain name to the Respondent (see, e.g.: le, LLC v. Tropic Web, WIPO Case No. D2000-0624; Time Out Group Ltd. v. Marc Jacobson, WIPO Case No. D2001-0317).

The Respondent has not discharged this burden and so the Panel finds it has no rights or legitimate interests in the disputed domain name.

Further, the Panel accepts the Complainant’s contention that, because of its fame, the Respondent knew of the VALIUM trade mark when it registered the disputed domain name. It also accepts that as a general proposition use of a famous pharmaceutical trade mark to direct traffic to an on-line pharmacy, where the use is unauthorized by the trade mark owner, cannot give rise to rights or legitimate interests in the domain name registrant (see e.g. Pfizer. v. jg a/k/a Josh Green, supra and more generally regarding misuse of famous trade marks e.g.: Drexel University v. David Brouda, WIPO Case No. D2001-0067).

C. Registered and Used in Bad Faith

In the circumstances where, as here, the Respondent has registered the disputed domain name which is deliberately confusingly similar to a famous trade mark and then uses the disputed domain name to direct Internet traffic to an on-line store it is plain that the registration and use are both done for illegitimate commercial gain and in bad faith.

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 disputed domain name <valiumuk.info> be transferred to the Complainant.

Simon Minahan
Sole Panelist
Date: August 17, 2012