WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. N/A, tomson eneriho
Case No. D2013-0483
1. The Parties
Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally.
Respondent is N/A, tomson eneriho of Virginia Beach, United States of America.
2. The Domain Name and Registrar
The disputed domain name <buyvaliumonline1.com> is registered with DomainContext, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on March 8, 2013. On March 8, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 11, 2013, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on March 12, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was April 1, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 5, 2013.
The Center appointed Ugur G. Yalçiner as the sole panelist in this matter on April 22, 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
Complainant is a company established in Switzerland, engaged in research and development of pharmaceutical and diagnostic products. It is a member of the Roche Group, one of the worlds’s leading research-focused healthcare groups and having global operations in more than 100 countries.
Complainant has rights over the VALIUM trademark for which it holds several trademark registrations and first usage in 1961.
Respondent appears to be an individual located in Virginia Beach, United States of America.
The disputed domain name was created on January 14, 2013.
5. Parties’ Contentions
Complainant’s assertions may be summarized as follows:
Complainant is a member of the Roche Group, one of the world’s leading research-focused healthcare groups and having global operations in more than 100 countries. Complainant’s mark VALIUM is registered on behalf of Complainant in the United States Patent and Trademark Office as of June 20, 1961. The disputed domain name <buyvaliumonline1.com> incorporates Complainant's trademark VALIUM in its entirety. The disputed domain name is confusingly similar to the trademark of Complainant.
Complainant has exclusive rights for VALIUM, and no license/permission/authorization respectively was granted to use VALIUM in the disputed domain name. The disputed domain name clearly alludes to Complainant. Respondent's website is offering "Valium 10 mg (Generic)". Upon clicking on a product, Internet users are redirected to a pharmacy online: “www.generictab.com” offering generic Valium as well as other drugs.
The disputed domain name was registered in bad faith since at the time of the registration i.e. on January 14, 2013, Respondent had knowledge of Complainant's well-known product/mark VALIUM. The disputed domain name is being used in bad faith. Respondent is intentionally attempting to attract Internet users to Respondent's website, by creating a likelihood of confusion with Complainant's well-known mark as to the source, affiliation and endorsement of Respondent's website for commercial purpose. Respondent, by using the disputed domain name, is intentionally misleading the consumers and confusing them by making them believe that the websites behind those links are associated or recommended by Complainant.
Respondent did not respond.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The burden for Complainant, under paragraph 4(a) of the Policy, is to show:1 (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that 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.
A. Identical or Confusingly Similar
The Panel finds that Complainant has rights in the VALIUM mark considering the trademark registrations in the United States of America since 1961.
The disputed domain name entirely incorporates the term “valium” together with the words “buy” and “online” and the number “1”. Considering that the disputed domain name carries the aim of offering Internet users/consumers to buy some goods; “buy”, “online” and “1” are not distinctive and obviously do not add distinctiveness to disputed domain name.2 VALIUM is not a common used word for customers. The Panel also finds that the trademark VALIUM is also well-known in the pharmaceutical sector.
Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark.
B. Rights or Legitimate Interests
The Panel notes that Complainant did not grant any licence, permission or authorization to Respondent to use the VALIUM mark in the disputed domain name.
The Panel also notes that Respondent does not appear to have either a trademark application nor a trademark registration for the word “valium”.
Therefore, the Panel finds that Respondent lacks rights or legitimate interests in the dispute domain name.
C. Registered and Used in Bad Faith
Complainant asserts that Respondent registered and used the disputed domain name in bad faith.
The evidence adduced by Complainant shows that before the registration date of the disputed domain name (2013) Complainant had obtained registration for the mark VALIUM in 1961.
Since the trademark VALIUM is a well-known trademark in the pharmaceutical sector, Respondent was, or should have been, aware of Complainant’s marks at that time of the registration of the disputed domain name, which, in the circumstances of this case, is a proof of bad faith registration.
According to the evidence submitted by Complainant, the disputed domain name resolved to a website offering for sale “Valium10 mg (Generic)” and upon clicking on a product, Internet users were redirected to an online pharmacy offering for sale generic Valium, as well as other drugs. This is evidence of bad faith registration and use in accordance with paragraph 4(b)(iv) of the Policy.
The Panel notes that the disputed domain name was not active when he entered the web site on May 10, 2013. In accordance with previous UDRP WIPO decisions, inaction or passive holding of a domain name is also evidence of bad faith.3
Given the foregoing, this Panel finds that the disputed domain name was registered and is being used in bad faith.
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 <buyvaliumonline1.com> be transferred to the Complainant.
Ugur G. Yalçiner
Dated: May 13, 2013
1 See Koninklijke Philips Electronics N.V. v. Relson Limited, WIPO Case No. DWS2001-0003: “Each of the three stated elements are made up of a number of facts, each of which has to be proven in order for the Complainants to succeed [...] Facts are proven through evidence [...] Mere “assertions” are nothing more than argument and must in each case be based on facts proved through evidence”.
2 See Turkcell Iletisim Hizmetleri A.S. v. Vural Kavak, WIPO Case No. D2010-0010: “As a general expression, “mobile” does not distinguish Complaninant’s mark from the Disputed Domain Name. Additionally, general term “mobile” is related to Complainant’s business area, therefore, it can cause likelihood of confusion .
3 See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003: the point is that paragraph 4(b) recognises that inaction (e.g. passive holding) in relation to a domain name registration can, in certain circumstances, constitute a domain name being used in bad faith. Furthermore, it must be recalled that the circumstances identified in paragraph 4(b) are "without limitation" - that is, paragraph 4(b) expressly recognises that other circumstances can be evidence that a domain name was registered and is being used in bad faith.