WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F.Hoffmann-La Roche AG v. WhoisGuard / Webintechs a.k.a. Rehmat Fatima
Case No. D2012-2253
1. The Parties
The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland.
The Respondent is WhoisGuard of Los Angeles, California, United States of America/ Webintechs a.k.a. Rehmat Fatima of Karachi, Sindh, Pakistan.
2. The Domain Name and Registrar
The disputed domain name <buyvalium10mg.com> (“the Domain Name”) is registered with eNom, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 15, 2012. On November 15, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 16, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent in the Complaint. The Center sent an email communication to the Complainant on November 20, 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 November 21, 2012.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name 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 November 22, 2012. On December 4, 2012, the Respondent sent an email communication to the Center. The Center sent a possible settlement email to the parties on December 4, 2012. The Complainant submitted a suspension request to the Center by email on December 4, 2012. On December 5, 2012, the Center notified the Parties of the suspension of the proceedings.
On December 18, 2012, the Complainant submitted a reinstitution request to the Center by email. The Center notified the Parties of the reinstitution of proceedings on December 21, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 28, 2012. The Center has received email communications from the Respondent dated December 21 and 22, 2012 and January 3, 2013.
The Center appointed Teruo Doi as the sole panelist in this matter on January 14, 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, with its affiliated companies, is one of the leading research-focused health-care groups of the world in the field of pharmaceutical and diagnostics, and has global operations in more than 100 countries.
The Complainant’s mark VALIUM designates a sedative and anxiolytic drug of the benzodiazepine family. The production of this drug enabled the Complainant to build a world-wide reputation in psychotropic medications.
The Complainant’s trademark VALIUM is protected in many countries of the world. One of the registrations of this trademark is the international trademark No. 250784 VALIUM, registered with priority claim of October 20, 1961 in International Classes 1, 3 and 5.
The Domain Name was registered on October 16, 2012.
5. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to the Complainant’s well-known VALIUM trademark, which it incorporates in its entirety. The addition of the descriptive terms “buy” and “10mg” do not sufficiently distinguish the Domain Name from the VALIUM trademark.
According to the Complainant, the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant has exclusive rights in its trademark, and has not granted any permission to the Respondent to use VALIUM in the Domain Name. The Respondent uses the Domain Name for commercial gain. Internet users visiting the website associated to the Domain Name are directed to an on-line pharmacy.
The Complainant submits that the Domain Name was registered and is being used in bad faith. At the time of the registration, the Respondent had knowledge of the Complainant’s well-known product and trademark VALIUM. The Respondent is using the Domain Name to forward Internet users to a for-profit on-line pharmacy website. The Respondent has thus intentionally attempted for commercial purpose to attract Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s well-known mark as to the source, affiliation and endorsement of the Respondent’s website or of the products offered on the Respondent’s website. This is evidence of bad faith registration and use pursuant to the Policy, paragraph 4(b).
The Complainant requests transfer of the Domain Name to it.
The Respondent did not submit a formal response, and did not put forward any substantive submissions in reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant is required to prove that each of the following elements exists in seeking the transfer of the Domain Name at issue:
(i) The Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Domain Name registered by the Respondent consists of a combination of the Complainant’s trademark VALIUM, preceded by the word “buy”, and followed by “10mg.com”. In view of the distinctive quality of the word VALIUM, the addition of these descriptive or non-distinctive words before or after the word VALIUM does not affect the finding that the Domain Name at issue is identical or confusingly similar to the Complainant’s trademark VALIUM.
B. Rights or Legitimate Interests
The Complainant submits that in registering the Domain Name, the Respondent did not have any right or legitimate interest in the Domain Name, hence, the Respondent obtained registration of the Domain Name combined with a set of descriptive words such as: “buy” and “10mg.com”.
This Panel finds that the Complainant has made a prima facie showing of the Respondent’s lack of rights or legitimate interests in the Domain Name, which showing has remained unrebutted by the Respondent.
The Panel finds that the second element of the Policy has been met.
C. Registered and Used in Bad Faith
In view of the distinctive quality possessed by the word VALIUM which is the Complainant’s well-known trademark, the Respondent’s registration of the Domain Name consisting of this word combined with a set of descriptive words is a clear indication of the Respondent’s bad faith in obtaining the Domain Name registration at issue.
The Panel notes that the Respondent has failed to respond to the Complainant within the stipulated time, and, as such, does not contest the facts asserted by the Complainant in the Complaint.
For the foregoing reasons, in accordance with paragraph (4)(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the Domain Name <buyvalium10mg.com> be transferred to the Complainant.
Date: January 31, 2013