WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. Morell Kontori
Case No. D2015-1183
1. The Parties
The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally.
The Respondent is Morell Kontori of Belize.
2. The Domain Name and Registrar
The disputed domain name <diazepamvaliumonlinepharmacy.com> is registered with Bizcn.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 9, 2015. On July 9, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 10, 2015, 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 July 21, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 10, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on August 11, 2015.
The Center appointed Dennis A. Foster as the sole panelist in this matter on August 20, 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
A Swiss company, the Complainant is a world leader in pharmaceutical research and development. One of its primary products is sold under the mark VALIUM, for which the Complainant has many trademark registrations, including an International Registration (i.e., Registration No. R250784; registered on December 20, 1961).
The disputed domain name, <diazepamvaliumonlinepharmacy.com>, is owned by the Respondent, who registered it on June 3, 2015. The disputed domain name resolves to a website that offers pharmaceuticals, including those resembling the Complainant’s products, for purchase online.
5. Parties’ Contentions
- The Complainant requests that English be designated as the proper language for use in this decision, as the disputed domain name and the attached website are written in English.
- The Complainant, based in Switzerland, is one of the world’s leading pharmaceutical research and production companies. It has trademark registrations in many jurisdictions worldwide for the mark VALIUM, which is used for a well-known sedative produced and sold by the Complainant.
- The disputed domain name, <diazempamvaliumonlinepharmacy.com>, is confusingly similar to the VALIUM mark. The name contains the full mark and adds merely descriptive (i.e., “online” and “pharmacy”) and non-proprietary (i.e., “diazepam”) words. Such minor distinctions do not mitigate the confusing similarity.
- The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not licensed or granted permission to the Respondent to use the VALIUM mark. The Respondent’s website, which poses as an online pharmacy that seeks to sell products similar to the Complainant’s trademarked goods, is not a bona fide offering of goods or services. Instead, it is an illegitimate attempt to capitalize on the reputation of the Complainant’s mark.
- Also, the Respondent has failed to respond to the Complainant’s cease and desist letter.
- Furthermore, the disputed domain name was registered and is being used in bad faith. There is no doubt that the Respondent knew of the Complainant, its mark and its products before registering the name. Moreover, the use to which the disputed name is being put is merely an attempt to profit unfairly from the reputation and goodwill created by the Complainant in its VALIUM mark. Such profit will be gained as a result of confusion concerning the source, affiliation or endorsement of the disputed domain name with respect to the Complainant and its mark.
The Respondent did not reply to the Complainant’s contentions.
6. Language of the Proceeding
Paragraph 11 of the Rules stipulates that, barring an agreement between the parties, the language used in a proceeding shall be that in which the disputed domain name was registered. In this case, the Complainant concedes that there is no agreement between the parties as to language usage and that the registration of the name is in Chinese. However, the Complainant requests of the Panel that the proceeding be conducted in English. The Respondent, who has not filed a Response, is silent on the issue.
In supporting its request, the Complainant contends and presents evidence (Annex 6 to the Complaint), without contradiction, that the disputed domain name contains English language words, as does the website to which the name is attached. This suggests to the Complainant, and to the Panel, that the Respondent is capable of reading and writing English. The Panel notes this circumstance is very similar to that encountered in the prior UDRP case, Ebay Inc. v. Wangming, WIPO Case No. D2006-1163, where the panel decided that the proceeding should be conducted in English after noting:
“The language of the Registration Agreement is Chinese. The Complainant requested that the proceeding be conducted in English and presented argument in support of that request, including that the domain name is in English, that it resolves to an English language website, and that the Respondent, on its website, has made changes to the Complainant’s text that are syntactically and grammatically correct in English.”
In this case, the Panel is inclined to follow that reasoning and shall exercise its discretion to grant the Complainant’s request that this proceeding be conducted in English. See also, Moncler S.r.l. v. zhuo muniao, WIPO Case No. D2010-1678; and Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432.
7. Discussion and Findings
Pursuant to Policy paragraphs 4(a)(i) – (iii), the Complainant may prevail in this proceeding and the Panel may order a transfer of the disputed domain name, <diazepamvaliumonlinepharmacy.com>, provided the Complainant demonstrates that:
- The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- The disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel notes that several prior UDRP panels have ruled that the Complainant has rights in the VALIUM trademark sufficient to meet the requirements of Policy paragraph 4(a)(i). See, for example, F. Hoffmann-La Roche AG v. Sandra V Alvarez R, WIPO Case No. D2015-0630; F. Hoffmann-La Roche AG v. Med2shop, Thomas Donald Stenzel, WIPO Case No. D2013-2120 (“The disputed domain name <buy-online-valium.net> fully incorporates the well-known VALIUM Mark in which the Complainant has exclusive rights.”); and F. Hoffmann-La Roche AG v. Private Whois buyvaliumdiazepam.org, WIPO Case No. D2011-1463. Moreover, the Complainant has submitted to the Panel pertinent evidence (Annex 3 to the Complaint) that the Complainant has an International Registration for the mark. Thus, the Panel concludes that the Complainant does possess said rights.
Clearly, the disputed domain name, <diazepamvaliumonlinepharmacy.com>, is not identical to the Complainant’s VALIUM trademark. In fact, although fully contained in the name, the mark appears to be overwhelmed by the other verbiage. However, upon closer inspection, the Panel discerns that the added terms, “diazepam”, “online” and “pharmacy”, are merely descriptive words that serve only to increase, not reduce, confusion as to the role of the main term, “valium”.
Again, previous UDRP panels have faced cases where other respondents have attempted to usurp the Complainant’s VALIUM mark in domain names that include descriptive terms. Those panels have held consistently that the respective disputed domain names are confusingly similar to the mark. In this case, the Panel views the combined term, “online pharmacy”, as simply an attempt to confuse Internet users into believing that the disputed domain name is a location at which the Complainant is attempting to sell its trademarked product. Moreover, the term, “diazepam”, is merely a generic term for that product, which only adds to the confusion as to whether the disputed domain name is connected to the trademark. Therefore, the Panel finds little reason to deviate from the reasoning of those previous panels and determines that the disputed domain name is confusingly similar to the VALIUM trademark. See, F. Hoffmann-La Roche AG v. Private Whois buyvaliumdiazepam.org, supra, (finding <buyvaliumdiazepam.org> to be confusingly similar to the VALIUM mark); F. Hoffmann-La Roche AG v. Private Whois Service, WIPO Case No. D2011-0355 (finding <valiumdiazepam.net> to be confusingly similar to the VALIUM mark); and F. Hoffmann-La Roche AG v. Den, WIPO Case No. D2006-0182 (finding <diazepam-valium-online.net> to be confusingly similar to the VALIUM mark).
Accordingly, the Panel finds that the Complainant has demonstrated that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Respondent has chosen not to file a Response in which it might have established rights or legitimate interests in the disputed domain name. On the other hand, the Complainant has demonstrated that the name is confusingly similar to the Complainant’s trademark. Moreover, the Complainant has asserted that it has not licensed or permitted the Respondent to use that mark. Finally, it does not appear, upon the Panel’s inspection, that the Respondent, Morell Kontori, would likely be commonly known as the disputed domain name <diazepamvaliumonlinepharmacy.com>. Ergo, the Panel concludes that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, to which the Respondent offers no rebuttal.
Furthermore, the Panel detects no evidence in the record that the Respondent might comply, even without the submission of any evidence, with the requirements of Policy paragraphs 4(c)(i) or 4(c)(iii) that might sustain a finding of rights or legitimate interests in the disputed domain name. The Complainant has submitted compelling evidence (Annex 6 to the Complaint) that the name resolves to a website that offers for sale sedatives that compete directly with the products sold by the Complainant under its VALIUM trademark. Such use is certainly not noncommercial, so paragraph 4(c)(iii) fails to apply.
Also, such use is not a “bona fide offering of goods or services” in compliance with 4(c)(i). Many prior UDRP panels have found that marketing products that compete directly with the trademark holder’s products under a domain name that is confusingly similar to that trademark fails to constitute such an offering. For example, see, Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784 (“...several cases have found 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”).
Accordingly, the Complainant’s prima facie case prevails, and the Panel finds the Complainant has demonstrated that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Referencing the circumstance giving rising to finding of bad faith delineated in Policy paragraph 4(b)(iv), the Complainant contends that the Respondent is attempting to achieve commercial gain by creating a likelihood of confusion between the disputed domain name and the Complainant’s VALUM mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. The Panel agrees. The credible and unchallenged evidence submitted by the Complainant describes the Respondent’s website, attached to the disputed domain name, as dispensing for remuneration drugs that are the same, or nearly the same, as the Complainant’s offerings, which are sold under a trademark that is likely to be confused with said name. As a result, the Panel determines that paragraph 4(b)(iv), and thus bad faith registration and use, do apply in this case. See F. Hoffmann-La Roche AG v. PrivacyProtect.org / TBA Corp., WIPO Case No. D2010-1378 (“...it is clear to this Panel that the Respondent has, by using the Complainant’s Trademark in the Disputed Domain Name, attempted to divert Internet users to an online pharmacy, and has intentionally created a likelihood of confusion with the Complainant’s Trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s online pharmacy website, whereby the deliberate diversion of Internet users constitutes bad faith use...”).
Accordingly, the Panel finds that the Complainant has demonstrated 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, <diazepamvaliumonlinepharmacy.com>, be transferred to the Complainant.
Dennis A. Foster
Date: September 3, 2015