WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. Sandra V Alvarez R
Case No. D2014-1427
1. The Parties
1.1 The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally.
1.2 The Respondent is Sandra V Alvarez R of Los Lagos, Chile.
2. The Domain Name And Registrar
2.1 The disputed domain name <ebuyvalium.com> (the “Domain Name”) is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 20, 2014. At about that time the publically available WhoIs details for the Domain Name recorded “Contact Privacy Inc. Customer 0136274154” as the registrant of the Domain Name. This appeared to be the name of a privacy service associated with the Registrar.
3.2 On August 20, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 20, 2014, the Registrar transmitted by email to the Center its verification response disclosing “Sandra V Alvarez R” as the registrant and providing associated contact information. The Center sent an email communication to the Complainant on August 25, 2014 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 August 26, 2014.
3.3 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”).
3.4 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 August 29, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 18, 2014. On September 5, 2014, the Registrar submitted a “Response” on behalf of “Contact Privacy Inc.” that requested that “Contact Privacy Inc. Customer 0136274154” be removed as a named Respondent from the Complaint. In reply, the Complainant filed a second amendment to the Center on September 9, 2014 agreeing to remove “Contact Privacy Inc. Customer 0136274154” from the Complaint..
3.5 The remaining Respondent “Sandra V Alvarez” did not submit any Response and accordingly, the Center notified the Respondent’s default on September 19, 2014.
3.6 The Center appointed Matthew S. Harris as the sole panelist in this matter on September 25, 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
4.1 The Complainant is a company incorporated in Switzerland and forms part of a pharmaceutical group with operations in over 100 countries. One of the Complainant’s pharmaceuticals is a well-known sedative and anxiolytic drug sold under the name “Valium”.
4.2 The Complainant is the owner of the numerous registered trade marks for the word mark VALIUM. These trade marks include International Registration NO. 250784 under WIPO’s Madrid System dated December 20, 1961 in classes 1, 3 and 5 designating over 40 countries.
4.3 The Respondent appears to be an individual or entity located in Chile.
4.4 The Domain Name was registered on July 28, 2011. Since that date the Domain Name has been used for a website that purports to promote the sale “generic Valium”. As at August 20, 2014 the website displayed the following text:
“Buy Cheap Valium
Purchase Generic Valium No Prescription
Buy Valium Online Without Prescription”
It also contained links to an online pharmacy where “generic Valium” was said to be available for purchase.
5. Parties’ Contentions
5.1 The Complainant refers to its trade marks and contends that the VALIUM mark is “well known and notorious”. In support of that contention it exhibits various press articles. One of these is an article that appeared in the New York Times on February 22, 2005, which described the drug as one that became “the country’s best selling drug” and a “cultural icon”.
5.2 The Complainant claims that the Domain Name is confusingly similar to its VALIUM mark, contending that the addition of the letter “e” (which it is said most probably intended to be an abbreviation for the word “electronic”) and the word “buy” does not sufficiently distinguish the Domain Name from the trade mark.
5.3 The Complainant further maintains that the Respondent’s use of the Domain Name has not been authorised by the Complainant and that given the Respondent’s use of the Domain Name to direct Internet users to an online pharmacy, “there is no reason why the Respondent should have any right or interest in [the Domain Name].”
5.4 The Complainant also contends that the Respondent had knowledge of the Complainant’s mark at the time that the Domain Name was registered and that in light of this and the use since made of the Domain Name, the Domain Name was both registered and has been used in bad faith.
5.5 The Complainant also relies upon the decision in F. Hoffmann-La Roche AG v Pinetree Development, Litd WIPO Case No. D2006-0049, which was a case in which the relevant online pharmacy offered the sale of drugs that competed with the complainant. The Complainant claims that the facts of that case are similar to those now before the Panel.
5.6 The Respondent did not reply to the Complainant’s contentions.
6. Discussion And Findings
6.1 There are no exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel from determining the present dispute based upon the Complaint, notwithstanding the failure of any person to lodge a Response.
6.2 Notwithstanding this default, it remains incumbent on the Complainant to make out its case in all respects under paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (Policy, paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (Policy, paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).
6.3 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the panel shall “draw such inferences therefrom as it considers appropriate”.
A. Identical or Confusingly Similar
6.4 The Complainant clearly has trade mark rights in the word mark VALIUM and the Panel accepts that the Domain Name can only sensibly be read as the terms “e” and “buy” in combination with the term “Valium” and the “.com” generic Top-Level Domain. Given this, the Complainant has established that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights. The Complainant has, therefore, made out the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
6.5 As is addressed in greater detail under the heading “Registered and Used in Bad Faith” below, the Panel accepts that the Domain Name was chosen with the Complainant’s trade mark in mind with a view to being used, and has subsequently been used, by the Respondent without the Complainant’s consent in order to promote a generic version of the Complainant’s branded pharmaceutical that competes with the Complainant’s own products. Such activity does not provide a right or legitimate interest with the scope of the Policy (see for example Sanofi-aventis v. ALEX and DomainsByProxy.com, WIPO Case No. D2007-1453 and the various cases referred to therein). The Complainant has, therefore, made out the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
6.6 The Panel accepts that the fame and reputation of the Complainant’s VALIUM mark and the fact that the term is not one that has some obvious reading or meaning that is unconnected with the Complainant’s product, makes it clear that the Domain Name was registered with the Complainant’s mark in mind.
6.7 Further, the use of the Domain Name to promote “generic Valium” that competes with the Complainant’s own products is clearly use that falls within the scope of the example of circumstances that evidence bad faith use set out in paragraph 4(b)(iv) of the Policy.
6.8 Given that use and the fact that the Domain Name intrinsically suggests the sale of something associated with the Complainant’s product (in which respect the Panel accepts the Complainant’s contention that the “e” in the “ebuy” element of the Domain Name is most probably an abbreviation for the word “electronic”), the only reasonable conclusion is that the Domain Name was registered with the promotion of such generic products in mind.
6.9 In the circumstances, the Panel concludes that the Domain Name was both registered and has been used in bad faith and that the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy.
6.10 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 <ebuyvalium.com> be transferred to the Complainant.
Date: September 26, 2014