WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. Duggins Frank
Case No. D2014-0508
1. The Parties
The Complainant is F. Hoffmann-La Roche AG of Grenzacherstrasse, Basel, Switzerland, internally represented.
The Respondent is Duggins Frank of Moscow, the Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <buyvaliumbuy.com> is registered with EuroDNS S.A. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 31, 2014. On March 31, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 1, 2014, 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 April 2, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 22, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 8, 2014.
The Center appointed Rodrigo Azevedo as the sole panelist in this matter on May 22, 2014. 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 part of one of the world’s leading research-focused healthcare groups in the fields of pharmaceutical and diagnostics, operating in more than 100 countries.
The Complainant owns several registrations for the trademark VALIUM in multiple countries, with priority date of 1961.
The term “valium” is used by the Complainant to designate a sedative and anxiolytic drug with a worldwide reputation in psychotropic medications.
The disputed domain name was registered on November 24, 2011.
The Panel accessed the website displayed at the disputed domain name on June 2, 2014, it resolved to an online pharmacy offering pharmaceutical medications for sale, including Valium and competing medicines.
5. Parties’ Contentions
The Complainant makes the following contentions:
(i) The disputed domain name is confusingly similar to the trademark in which the Complainant has rights. The trademark VALIUM is well-known and notorious. The Complainant’s use and registration of the mark VALIUM predate the Respondent’s registration of the disputed domain name.
(ii) The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has never been licensed/permissioned/authorized by the Complainant to use the VALIUM trademark. 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 trademark. The disputed domain name directs to a webpage and pharmacy online offering/selling Complainant’s products as well as competing products. There is no reason why the Respondent should have any right or interest in the disputed domain name.
(iii) The Respondent registered and is using the disputed domain name in bad faith. At the time of the registration of the disputed domain name the Respondent had knowledge of the Complainant’s well-known product/mark VALIUM. The Respondent is intentionally attempting (for commercial purpose) to attract Internet users to his 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. As a result, the Respondent may generate unjustified revenues and therefore is illegitimately capitalizing on the VALIUM trademark fame.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant shall prove the following three elements:
(i) The disputed domain name 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 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 has no doubt that “valium” is a term directly connected with the Complainant’s pharmaceutical medication.
Annex 3 to the Complaint demonstrates trademark registrations of the VALIUM trademark, obtained by the Complainant decades before the registration of the disputed domain name.
The trademark is wholly encompassed within the disputed domain name. Although the disputed domain name also contains the descriptive word “buy” before and after the term “valium”, this is not sufficient to refute the confusingly similar requirement under paragraph 4(a)(i).
In previous UDRP cases, concerning the domain names <buy-xenical-000.biz> and <order-xenical-a.biz>, the panel stressed that “it is now well-established that the adoption of a trademark in its entirety as a domain name together with other descriptive material does not generally suffice to enable a respondent to overcome an allegation that the domain name is distinguishable from the Trademark in question” (F. Hoffmann-La Roche AG v. sysadmin admin, balata.com ltd., WIPO Case No. D2008-0954).
The same conclusion was reached in Hoffmann-La Roche Inc. v. UrProxy Domains, WIPO Case No. D2008‑0237, concerning the domain name <order-xenical.net>: “Use of the Complainant's XENICAL trademark with a non-distinctive term such as “order” is confusingly similar to the XENICAL mark. Further, Internet users are likely to believe that the Domain Name is affiliated with the Complainant”. See also Lilly ICOS LLC v. John Hopking/Neo net Ltd., WIPO Case No. D2005-0694.
Therefore, the Panel finds the disputed domain name to be confusingly similar to the Complainant's trademark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides some examples without limitation of how a respondent can demonstrate rights or legitimate interests in a domain name by showing one of the following circumstances:
(i) Before receiving any notice of the dispute, the respondent used or made preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) The respondent has been commonly known by the domain name; or
(iii) The respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue.
Based on the Respondent’s default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name.
The Panel notes that the present record provides no evidence to demonstrate the Respondent’s intent to use or to make preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Indeed, the webpage that is published at the disputed domain name offers even competing products for sale.
The Complainant has not licensed or authorized the use of its trademark to the Respondent, and it does not appear from the present record that the Respondent is commonly known by the disputed domain name.
Consequently, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, and the Complainant has proven the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:
(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 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 documented out-of-pocket costs directly related to the domain name; or
(ii) The respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) 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 its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location
When the disputed domain name was registered in November 2011, the trademark VALIUM was already strongly associated with the Complainant’s activities in the pharmaceutical business. Therefore, it is not feasible to this Panel that the Respondent could have been unaware of the Complainant’s reputation.
Furthermore, the website published at the disputed domain name reproduces the VALIUM brand, offering for sale not only VALIUM medications, but also several other competing drugs. Therefore, in doing so, the Respondent:
(i) creates a likelihood of confusion with the Complainant’s trademark;
(ii) most likely obtains revenues by selling medications using the Complainant’s brand as part of the disputed domain name; and
(iii) promotes products offered by the Complainant’s competitors.
In situations like this, former UDRP decisions have considered this type of use of a domain name enough to demonstrate bad faith. For reference on the subject, see Serta Inc. v. Charles Dawson, WIPO Case No. D2008‑1474; see also Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415.
Accordingly, the Panel finds that the Complainant has proved that the disputed domain name was registered and is being used in bad faith, satisfying the third element of the Policy.
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, <buyvaliumbuy.com> be transferred to the Complainant.
Date: June 5, 2014