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WIPO Arbitration and Mediation Center


F. Hoffmann-La Roche AG v. Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org / Conan Corrigan

Case No. D2015-2316

1. The Parties

The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally.

The Respondent is Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org of Nobby Beach, Queensland, Australia / Conan Corrigan of London, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <valiumuk10.com> (the “Disputed Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 21, 2015. On December 21, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 22, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 28, 2015 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 December 29, 2015.

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”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 7, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 27, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 28, 2016.

The Center appointed Nicholas Weston as the sole panelist in this matter on February 4, 2016. 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 operates a pharmaceuticals and diagnostics business with operations in more than 100 countries. The Complainant holds registrations for the trademark VALIUM in numerous countries internationally including Switzerland, which it uses to designate a sedative and anxiolytic drug belonging to the benzodiazepine family. The Swiss registration (forpharmaceuticals) has been in effect since 1961.

The Respondent registered the Disputed Domain Name <valiumuk10.com> on December 3, 2015.

The Respondent uses the Disputed Domain Name for an online pharmacy that sells VALIUM branded pharmaceutials.

5. Parties’ Contentions

A. Complainant

The Complainant cites its International trademark registration no. 250784 for the mark VALIUM in various countries as prima facie evidence of ownership.

The Complainant submits that the mark VALIUM is well-known and that its rights in that mark predate the Respondent’s registration of the Disputed Domain Name <valiumuk10.com>. It submits that the Disputed Domain Name is confusingly similar to its trademark, because the Disputed Domain Name incorporates in its entirety the VALIUM trademark (citing Wal-Mart Stores, Inc vs. Kuchora, Kal, WIPO Case No. D2006-0033) and that the similarity is not removed by the addition of the geographic term “uk”, an abbreviation of “United Kingdom” or the number “10”, which it says refers to “a 10 milligram tablet”.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it is misleadingly directing Internet users to an online pharmacy that sells VALIUM branded pharmaceuticals and thereby attempting illegitimately to “attract Internet users seeking the Complainant’s VALIUM product”. The Complainant contends that the Respondent is using the Disputed Domain Name with the purpose of trading on the Complainant’s goodwill by falsely implying that its pharmaceutical products are related or similar to those of the Complainant.

Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to the Policy and Rules.

B. Respondent

The Respondent did not reply to the Complainant’s contentions within the timeframe permitted by the Rules. Three brief emails were forwarded by the Respondent to the Center on February 7, 2016, after close of submissions. These disclose nothing substantive or even indicate why evidence was not presented within the permitted timeframe.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the complainant has the burden of proving the following:

(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) that the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark VALIUM in Switzerland and in many countries throughout the world. The propriety of a domain name registration may be questioned by comparing it to a trademark registered in any country: (see Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358).

Turning to whether the Disputed Domain Name is identical or confusingly similar to the VALIUM trademark, the Panel observes that the Disputed Domain Name comprises (a) an exact reproduction of the Complainant’s trademark VALIUM followed by (b) the geographical contraction for United Kingdom “uk” (c) followed by the number “10” and (d) the generic Top-Level Domain (“gTLD”) “.com”, all in one continuous domain name.

It is well-established that the gTLD used as part of a domain name may be disregarded (see Hoffmann-La Roche Inc. v. Andrew Miller, WIPO Case No. D2008-1345). The relevant comparison to be made is with the second-level portion of the Disputed Domain Name: “valiumuk10”.

It is also well-established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it is confusingly similar to that mark despite the addition of words or numbers such as, in this case, “uk10”: (see Wal-Mart Stores, Inc. v. Kuchora, Kal, WIPO Case No. D2006-0033; Hoffmann-La Roche Inc. v. Andrew Miller, WIPO Case No. D2008-1345).

The Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists the ways that the respondent may demonstrate rights or a legitimate interest in the disputed domain name. The Policy also places the burden on the complainant to establish the absence of respondent’s rights or legitimate interest in the disputed domain name. Because of the inherent difficulties in proving a negative, the consensus view is that the complainant need only put forward a prima facie case that the respondent lacks rights or legitimate interests. The evidential burden then shifts to the respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc v. Ringside Collectibles, WIPO Case No. D2000-1306; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.)

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it is misleadingly directing Internet users to an online pharmacy selling VALIUM branded medications for commercial gain and with the purpose of capitalizing on the fame of the Complainant’s mark VALIUM. The Complainant further contends that the Respondent is falsely implying that its pharmaceutical products are related or similar to those of the Complainant. In this respect, the Panel notes that website at the Disputed Domain Name does not accurately and prominently disclose the nature of the Respondent’s relationship with the Complainant.

In Lilly ICOS LLC v. East Coast Webs, Sean Lowery, WIPO Case No. D2004-1101, the Panel stated: “While mere resale of genuine branded products might give rise to a legitimate debate over whether the use of the mark was ‘nominative’, any such contention is undermined by Respondent’s sale of products directly competing with Complainant’s through the same website. This principle may have particular weight in the pharmaceutical context, where risks to the public may be enhanced by the lack of regulatory safeguards assuring the safety or efficacy of the purported “generic” version of Complainant’s CIALIS brand product, thus further undermining any argument (had Respondent made such an argument, which it did not) that it was making a bona fide offering of goods. See Lilly ICOS LLC v. Dan Eccles, WIPO Case No. D2004-0750.”

In Lilly ICOS LLC v. Tudor Burden d/b/a BM Marketing/Burden Marketing, WIPO Case No. D2005-0313, the panel found that “the Respondent is making a non legitimate commercial use of the disputed domain names that misleadingly diverts consumers … (finding that) [b]ecause the Respondent was using the infringing domain name to sell prescription drugs, it could be inferred that the Respondent was opportunistically using Complainant’s mark in order to attract Internet users to its website.”

The Panel finds for the Complainant on paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The third element of the Policy that the complainant must also demonstrate is that the disputed domain name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both.

The evidence that the Respondent registered and has used the Disputed Domain Name in bad faith is overwhelming. The trademark VALIUM is so famous a mark for pharmaceuticals that it would be inconceivable that Respondent might have registered the mark without knowing of it. (see F. Hoffmann-La Roche AG v. Samir Kumar, samirnet - domain names for sale, WIPO Case No. D2008-0919; F. Hoffmann-la Roche AG v. Popo, WIPO Case No. D2008-0423; F. Hoffmann-La Roche AG v. TMNET, Anton Gorodov, WIPO Case No. D2008-0995; F. Hoffmann-La Roche AG v. DNS Administrator/Turvill Consultants Ltd-RD, WIPO Case No. D2006-0047; F. Hoffmann-La Roche AG v. George Stiegman WIPO Case No. D2008-1572)

Further, a gap of ten years between registration of a Complainant’s trademarks and Respondent’s registration of the disputed domain name (containing the trademark) can indicate bad faith: (see Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415). In this case, the Respondent registered the Disputed Domain Name more than five decades after the Complainant established trademark rights in the VALIUM mark.

Basically, the Respondent generates revenue from the Complainant’s goodwill and Internet users’ inaccurate guessing of the correct domain name associated with Complainant’s VALIUM branded pills (see Paragraph 4(b)(iv) of the Policy). Moreover, given the obvious danger of consumers being afforded inaccurate, incomplete or misleading information about prescription pharmaceuticals, this Panel regards such conduct as constituting bad faith and also being against the public interest.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

7. Decision

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, <valiumuk10.com> be transferred to the Complainant.

Nicholas Weston
Sole Panelist
Date: February 21, 2016