WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. Sandra V Alvarez R
Case No. D2014-2186
1. The Parties
Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally.
Respondent is Sandra V Alvarez R of Los Lagos, Chile.
2. The Domain Name and Registrar
The disputed domain name <ebuyvalium.info> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 15, 2014. On December 15, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 15, 2014, 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 December 19, 2014. Also on December 19, 2014, in response to its having notified Respondent of the proceedings, the Center received the following email: “Your free Internet Pharmacy Buyer’s Guide is attached. To your health!” from the email address [ ]. A PDF attachment InternetPharmacyBuyersGuide.pdf was transmitted with this email. In accordance with the Rules, paragraph 5(a), the due date for Response was January 8, 2015. Except for the aforementioned email transmitted from [ ] on December 19, 2014, no other communication was received by the Center from Respondent and Respondent did not submit any response to the Complaint. Accordingly, the Center notified Respondent’s default on January 9, 2015.
The Center appointed Dina Leytes as the sole panelist in this matter on January 30, 2015. 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 Swiss pharmaceutical company, which together with its affiliated companies, has global operations in more than 100 countries. The trademark VALIUM is used by Complainant in connection with a well-known sedative and anxiolytic drug. Complainant is the owner of trademark registrations for the word mark VALIUM in numerous jurisdictions worldwide and holds International Registration Number 250784 for the word mark VALIUM under the WIPO Madrid International Trademark System, with a registration date of December 20, 1961 in International Classes 1, 3, and 5.
Respondent appears to be an individual or entity located in Chile.
The disputed domain name resolves to a website with the words “Buy Cheap Valium,” “Purchase Generic Valium No Prescription,” and “Buy Valium Without a Prescription,” and contains links that redirect users to an online pharmacy at <cheapscrips.com>.
The disputed domain name <ebuyvalium.info> was registered on or about November 24, 2014.
5. Parties’ Contentions
Complainant alleges that the disputed domain name fully incorporates and is confusingly similar to its well-known trademark VALIUM and that the addition of the letter “e” to the descriptive term “buy” is probably intended as an abbreviation for “electronic.”
Complainant alleges that it has exclusive rights in and to the VALIUM trademark, that Respondent has no rights or legitimate interests in the disputed domain name, and that Complainant has not licensed or otherwise permitted Respondent to use its VALIUM mark or to register a domain name incorporating that mark.
Complainant further alleges that the disputed domain name was registered and is being used in bad faith by Respondent because Respondent has intentionally attempted to attract for financial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s mark as to source, affiliation, or endorsement of Respondent’s website at “www.ebuyvalium.info” or the products described on Respondent’s website.
Complainant also maintains that Respondent’s bad faith is evidenced by the fact that Respondent registered <ebuyvalium.info> on November 14, 2014, less than two months after a WIPO panel ordered the transfer of <ebuyvalium.com>, from Respondent to Complainant in F. Hoffman-Law Roche AG v. Sandra V. Alvarez R, WIPO Case No. D2014-1427.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, a complainant must prove that:
(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.
The complainant bears the burden of proof on each of these elements. If a respondent does not submit a response to the complaint, a panel may draw appropriate inferences from such a default. However, the complainant must still support its assertions with actual evidence to succeed in a UDRP proceeding. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (the “WIPO Overview, 2.0”), at paragraph 4.6 and the cases cited therein.
A. Identical or Confusingly Similar
The Panel finds that Complainant has trademark rights in the well-known mark VALIUM. The Panel further finds that the disputed domain name is confusingly similar to Complainant’s VALIUM trademark. The disputed domain name incorporates Complainant’s trademark in its entirety and merely adds descriptive terms for electronic commerce, “e” and “buy,” in combination with the generic Top Level Domain “.info.”
Accordingly, the Panel finds that the requirements of paragraph 4(a)(i) of the Policy have been met by Complainant.
B. Rights or Legitimate Interests
There is no evidence to show that Complainant has authorized Respondent’s use of the VALIUM mark or that Respondent has any independent basis for using the term “valium.” Moreover, UDRP panels have previously held that “a registrant has no legitimate interest in a domain name that is similar to a pharmaceutical manufacturer’s mark and that is being used to direct consumers to an on-line pharmacy.” (See Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784 and the cases cited therein.) The Panel finds that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. The prima facie case presented by Complainant is sufficient to shift the burden of production to Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name. However, by failing to file a response, Respondent has not presented any evidence of any rights or legitimate interests it may have in the disputed domain name.
Accordingly, the Panel finds that the requirements of paragraph 4(a)(ii) of the Policy have been met by Complainant.
C. Registered and Used in Bad Faith
The Panel finds that Complainant has demonstrated that Respondent registered and is using the disputed domain name in bad faith pursuant to paragraph 4(b)(iv) of the Policy. By using its website at “www.ebuyvalium.info” to promote the sale of unauthorized “generic Valium,” Respondent is seeking to trade on and profit from the name and reputation of Complainant’s well-known VALIUM mark, as well as to compete directly with Complainant. The Panel also accepts Complainant’s contention that Respondent’s bad faith registration and use is evidenced by the fact that Respondent registered the disputed domain name shortly after a WIPO panel transferred the domain name <ebuyvalium.com> to Complainant.
Accordingly, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy have been met by Complainant.
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.info>, be transferred to Complainant.
Date: February 13, 2015