WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

F. Hoffmann-La Roche AG v. Domains By Proxy, LLC / Daniel Kertzman

Case No. D2012-1900

1. The Parties

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

The Respondent is Domains By Proxy, LLC / Daniel Kertzman of Scottsdale, Arizona, United States of America and Marina del Rey, California, United States of America, respectively.

2. The Domain Name and Registrar

The disputed domain name <valiumsale.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the”Center”) on September 25, 2012. On September 25, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 27, 2012, the Registrar 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 September 27, 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 September 27, 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 October 1, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 21, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 31, 2012.

The Center appointed David Williams as the sole panelist in this matter on November 21, 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 a global research-focused healthcare company that operates worldwide in the fields of pharmaceuticals and diagnostics with operations in numerous countries worldwide. The VALIUM trademark designates a sedative and anxiolytic drug belonging to the benzodiazepine family. The VALIUM trademark is registered in favour of the Complainant in numerous countries around the world. The registrations include an international registration with a priority date of December 20, 1961.

The disputed domain name <valiumsale.com> was registered on September 18, 2012.

5. Parties’ Contentions

A. Complainant

i. The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights:

The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s mark because it incorporates this mark in its entirety. The Complainant cites F. Hoffman-La Roche AG v. NetMarketing cc, WIPO Case No. D2005-1216, which concerned a similar domain name <valium-sale.com>. The mark VALIUM is well-known and notorious as supported by newspaper articles, copies of which have been provided to the Panel. The notoriety of the mark increases the likelihood of confusion.

The Complainant further contends that its use and registration of its mark predate the Respondent’s registration of the disputed domain name.

ii. The Respondent has no rights or legitimate interests in respect of the disputed domain name:

The Complainant has exclusive rights for the VALIUM mark. No consent was granted to the Respondent to use VALIUM in the disputed domain name. The Complainant alleges it is obvious that the Respondent uses the disputed domain name for commercial gain and with the purpose of capitalizing on the fame of the Complainant’s VALIUM mark. The Respondent’s website, to which the disputed domain name directs, is a “search engine” with sponsored links. The Complainant can see no reason why the Respondent should have any right or interest in this disputed domain name.

iii. The disputed domain name was registered and is being used in bad faith:

The Complainant further contends that the disputed domain name was registered in bad faith since at the time of the registration, on September 18, 2012, the Respondent was bound to have knowledge of the Complainant’s well-known product and VALIUM mark. The Complainant argues that the disputed domain name is being used in bad faith because when viewing the website at the disputed domain name, one realises that the Respondent is intentionally attempting (for commercial purposes) to attract Internet users to this website by causing confusion as to the source, affiliation and endorsement of the Respondent’s website, or the products or services posted on, or linked to, the Respondent’s website.

The use of the disputed domain name seems to be to display advertising links to websites promoting and/or offering products and services of third parties, especially in the pharmaceutical field, being the business of the Complainant. The Complainant alleges that, by using the disputed domain name, the Respondent is intentionally misleading the consumers and confusing them so as to attract them to other websites making them believe that the websites behind those links are associated with or recommended by the Complainant. As a result, the Complainant fears that the Respondent may generate unjustified revenues for each click-through by online consumers on the sponsored links. The Complainant claims that the Respondent is therefore illegitimately capitalising on the fame of the VALIUM mark.

B. Respondent

The Respondent, having been duly notified of the Complaint and these proceedings, did not reply to the Complainant’s contentions or take any part in these proceedings.

6. Discussion and Findings

To qualify for a cancellation or transfer of the disputed domain name, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) The disputed domain name has been registered and is being used in bad faith.

In accordance with paragraph 14(a) of the Rules in the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the Panel, the Panel shall proceed to a decision on the Complaint; and (b) if a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under the Rules, or any request from the Panel, the Panel shall draw such inferences as it considers appropriate.

The Panel must not decide in the Complainant’s favour solely based on the Respondent’s failure to reply to the Complainant’s contentions, see Cortefield, S.A. v. Miguel Garcia Quitas, WIPO Case No. D2000-0140). The Panel must decide whether the Complainant has introduced elements of proof, which allow the Panel to conclude that its allegations, on balance of the probabilities, have merit.

A. Identical or Confusingly Similar

In order to transfer the disputed domain name to the Complainant, the Panel must be satisfied that with regard to this element: (a) the Complainant has rights in a trade mark or service mark; and (b) that the disputed domain name is identical or confusingly similar to that trade mark or service mark.

The disputed domain name incorporates the VALIUM trade mark, which is owned and has been commercially used and promoted by the Complainant, in and for the purposes of its business, and the sale of its products as a trade mark for many years. There is no question, in the Panel’s view, that the disputed domain name is confusingly similar to the Complainant’s VALIUM mark for the purposes of the Policy. The disputed domain name incorporates in its entirety the VALIUM mark. The UDRP panel in Wal-Mart Stores, Inc. v. Kuchora, Kal, WIPO Case No. D2006-0033 found that “if a domain name incorporates a complainant’s mark in its entirety, it is confusingly similar to that mark despite the addition of other words.”

For the purposes of the Policy, the question of identity or confusing similarity requires a comparison of the disputed domain name and the Complainant’s trade mark rights, which have been proven. In this case, the disputed domain name has two differences from the Complainant’s VALIUM trade mark: the addition of the “.com” suffix and the addition of the word “sale” to the trademark. As the panel found in F. Hoffmann-La Roche AG v. George Stiegman, WIPO Case No. D2008-1572, when comparing the disputed domain name to VALIUM, “the addition of the generic top-level domain (gTLD) ‘.com’ is not legally significant since use of a gTLD is required of domain name registrants. The ‘.com’ gTLDs is one of several such gTLDs, and ’.com’ does not serve to identify a specific enterprise as a source of goods or services.” See also Ticketmaster Corporation v. DiscoverNet, Inc., WIPO Case No. D2001-0252, concerning the inclusion of a gTLD.

The fact that a domain name wholly incorporates a Complainant’s trademark has been found sufficient to establish identity or confusing similarity for the purpose of the Policy, despite the addition of other words to such marks. Many UDRP panels have found that the addition of words or letters to a mark used in a domain name does not generally alter the fact that the domain name is confusingly similar to the mark. The addition of a generic term does not serve to distinguish the domain name from the trademark. In this case, notwithstanding the gTLD, the disputed domain name consists of the Complainant’s VALIUM trade mark and the suffix “sale”. The Panel finds that the suffix “sale” is of a descriptive nature only, and the distinctive element of the disputed domain name is obviously the term “valium.” In these circumstances, the Panel concludes that Internet users finding the disputed domain name <valiumsale.com> are likely to be misled into believing that the Complainant is the registrant or is otherwise affiliated or associated with the disputed domain name. This was also found by the panel in F. Hoffmann-La Roche AG v. NetMarketing cc, WIPO Case No. D2005-1216. There the panel found the addition of the word “sale”, in that case with a hyphen to make a compound word, was descriptive and provides no distinctiveness or source of original elements whatsoever to the domain name at issue there, <valium-sale.com>.

In view of this, the Panel finds that the disputed domain name, registered by the Respondent, is identical or confusingly similar to the VALIUM trade mark, in which the Complainant has clearly demonstrated, to the satisfaction of the Panel, that it has well-established rights through registration and long, exclusive commercial use.

B. Rights or Legitimate Interests

The Panel must make its determination based only upon its own inferences and the Complainant’s allegations, since the Respondent failed to respond to the Complaint. The consensus view of UDRP panelists concerning the burden of establishing no rights or legitimate interests in respect of the domain name is as follows:

“While the overall burden of proof rests with the complainant, 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. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.”

(See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") at paragraph 2.1.)

In the present case the Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights.

By declining to submit a Response, the Respondent has failed to invoke any circumstances, which could demonstrate any right or legitimate interest in the disputed domain name. The only evidence in this connection is that provided in the Complaint, and that which is self-evident from the website to which the disputed domain name refers.

The Complainant has exclusive rights to the VALIUM trade mark and has not licensed or otherwise permitted the Respondent to use its trade mark. Likewise, no evidence has been adduced that the Respondent has commonly been known by the disputed domain name; it is not making a legitimate noncommercial or fair use of the disputed domain name; nor has the Respondent been authorised or licensed by the Complainant to use the Complainant’s well-known VALIUM trade mark as part of the disputed domain name.

Furthermore, the Panel finds that the Respondent’s adoption of a domain name confusingly similar to the Complainant’s trademark inevitably leads to the diversion of the Complainant’s consumers to the Respondent’s website. In other words, the Respondent is, without justification, taking advantage of the good name and reputation of the Complainant and unfairly attempting to link to its own business and activities the substantial goodwill that the Complainant has established over many years in its registered marks.

In Sigikid H. Scharrer & Koch GmbH & Co. KG, MyBear MyBear Marketing-und Vertriebs GmbH, Mr. Thomas Dufner v. Bestinfo, WIPO Case No. D2004-0990, the panel was of the view that:

“the sole diversion of Internet traffic by Respondent to other, unrelated websites, does not represent a use of the Domain Name in connection with a bona fide offering of goods and services. Rather, the conduct of Respondent serves the purpose of generating revenues, for example from advertised pay-per-click products. Further, it misleads Internet users by diverting traffic intended for the Complainants to websites, which are in no way connected with the word ‘sigikid’, and it creates the impression of association with the Complainants’ group.”

Therefore, the Panel finds for the Complainant on the second element, that the Respondent has neither rights to nor legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out a number of circumstances that shall, in particular but without limitation, be evidence of registration and use of a domain name in bad faith; e.g.,

(i) Circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the Complainant who is the owner of the trademark, or to a competitor of the Complainant, for a valuable consideration in excess of the Respondents documented out-of-pocket costs directly related to the domain name; or

(ii) Circumstances indicating that the Respondent has registered the domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) Circumstances indicating that the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) By using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his 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 the said website location or of a product or service on that website location.

The Panel finds that the VALIUM trade mark is well known in the field of pharmaceutical products. Therefore, the Respondent most likely knew of the Complainant, its products and trade marks prior to registering the disputed domain name. The Respondent registered the disputed domain name almost half a century after the Complainant registered its VALIUM trade mark. In view of the fame of the Complainant’s trade mark, there is no doubt that the Respondent was aware of the trade mark VALIUM prior to registering the disputed domain name. Indeed, in the Panel’s estimation, there could be no other reason for the Respondent’s registration of the disputed domain name other than to use it to direct Internet traffic to the Respondent’s website.

Consistent with the opinions of previous panels (see F. Hoffmann-La Roche AG v. George Stiegman, WIPO Case No. D2008-1572; and F. Hoffmann-La Roche TMNET, Anton Gorodov, WIPO Case No. D2008-0995), it seems indeed that by using the Complainant’s trademark in the disputed domain name, the Respondent has intentionally created a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.

The deliberate diversion of Internet users constitutes bad faith, by creating confusion that takes advantage of the Complainant’s goodwill. It is well established in prior UDRP decisions that such confusion, and the resultant misdirection of Internet traffic, is independently sufficient to establish bad faith. See e.g. Sony Ericsson Mobile Communications International AB, Telefonaktiebloaget LM Ericsson, Sony Corporation v. Party Night Inc., WIPO Case No. D2002-1128.

Therefore, in this case, the following circumstances were considered when assessing the existence of bad faith:

- The Complainant’s trademark VALIUM is an internationally well-known mark in the field of pharmaceuticals. See F. Hoffmann-la Roche AG v. Popo, WIPO Case No. D2008-0423; F. Hoffmann-La Roche AG v. TMNET, Anton Gorodov, WIPO Case No. D2008-0995; and F. Hoffmann-La Roche AG v. DNS Administrator/Turvill Consultants Ltd-RD, WIPO Case No. D2006-0047.

-The Respondent appears to be trading on the Complainant's goodwill and reputation, which the Complainant has built up over many years. This, without any explanations by the Respondent to the contrary, of which none have been forthcoming, constitutes bad faith. See e.g., eBay Inc. v. Sunho Hong, WIPO Case No. D2000-1633.

Furthermore, the failure of the Respondent to file any answer to the present Complaint or otherwise participate in the present proceedings, in the view of the Panel, also suggests bad faith on the part of the Respondent.

For all the reasons, the Panel concludes that the Respondent registered and is using the disputed domain name in bad faith.

7. Decision

For all 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, <valiumsale.com> be transferred to the Complainant.

David Williams QC
Sole Panelist
Dated: November, 29, 2012