WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. Elizabeth Gonzalez, Sky-IP
Case No. D2016-0563
1. The Parties
The Complainant is F. Hoffmann-La Roche AG of Grenzacherstrasse, Basel, Switzerland, internally represented.
The Respondent is Elizabeth Gonzalez, Sky-IP of Panama, Panama.
2. The Domain Names and Registrar
The disputed domain names <klonopin-rx.com> and <valium-rx.com> (the "Domain Names") are registered with 1API GmbH (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 22, 2016. On March 22, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On March 23, 2016, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on March 29, 2016.
The Center verified that the amended 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 March 30, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 19, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 21, 2016.
The Center appointed Mathias Lilleengen as the sole panelist in this matter on May 10, 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 is together with its affiliated companies one of the world's leading healthcare groups in the fields of pharmaceuticals and diagnostics, having global operations in more than 100 countries. The Complainant owns trademarks in VALIUM (including International trademark VALIUM, registered on October 20, 1961 and KLONOPIN including International trademark KLONOPIN, registered on November 4, 1986, respectively.
The Domain Names were both registered on March 2, 2016. The Domain Name <valium-rx.com> resolves to an online pharmacy where products are offered for sale under the Complainant's VALIUM trademark. The Domain Name <klonopin-rx.com> resolves to a website displaying only the numbers "23456".
5. Parties' Contentions
According to the Complainant, it is together with its affiliated companies one of the world's leading research focused healthcare groups in the fields of pharmaceuticals and diagnostics and having global operations in more than 100 countries. The Complainant has built up a world-wide reputation in psychotropic medications through the VALIUM trademark which designates a sedative and anxiolytic drug belonging to the benzodiazepine family. The Complainant has established rights in the trademarks VALIUM and KLONOPIN, and claims that the Domain Names are confusingly similar to the Complainant's mark seeing that they incorporate the Complainant's marks VALIUM and KLONOPIN in their entirety.
The Respondents have no rights or legitimate interests in respect of the Domain Names. The Complainant has exclusive and prior rights in the trademarks VALIUM and KLONOPIN. The Respondent has no connection or affiliation with the Complainant. Furthermore, the Respondent has not replied to the Complainant's cease and desist letter.
The Complainant argues that the Domain Names were registered in bad faith as the Respondent's registration of the disputed domain names on March 2, 2016 is well after the Complainant's registrations of the marks VALIUM and KLONOPIN. Furthermore, the Respondent could not ignore the Complainant's mark because the Respondent registered Domain Names just consisting of the reproduction of the Complainant's well-known mark with the addition of "-rx". The Complainant claims the Domain Names have been used in bad faith in as much as the Respondent tries to attract Internet users for commercial gain by misleading them into believing that the websites at the Domain Names are authorised by or somehow connected to the Complainant.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has rights in the trademarks VALIUM and KLONOPIN.
The test for confusingly similarity involves the comparison between the trademark and the domain name itself such that the trademark would generally be recognizable within the domain name. In this case the Complainant's registered trademarks are reproduced in their entirety in the Domain Names, with the addition "-rx". The addition does not reduce the risk of confusing similarity.
For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the genericTop-Level Domain ".com".
The Panel finds that the Domain Names are confusingly similar to trademarks in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant has not authorized the Respondent to use its trademarks or register the Domain Names. The Respondent is not making any legitimate noncommercial or fair use of the Domain Names. With regard to the Domain Name <valium-rx.com>, the Respondent's intention seems to be to mislead and confuse customers that will also be likely to have a detrimental effect on consumers, not to mention the reputation of the Complainant.
The Panel finds that the Complainant has made out a prima facie case. The Respondent has not responded and the Panel is unable to conceive how the Respondent could have any rights or legitimate interests in respect of the Domain Names. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names.
Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
The Panel is satisfied that the Respondent was aware of the Complainant's trademarks when it registered the Domain Names. The Complainant has used these trademarks decades before the registration of the Domain Names. The trademarks are also widely known. The very incorporation of the trademarks in the Domain Names confirms the Respondent's awareness of the Complainant's trademarks. The Panel finds that the Respondent registered the Domain names in bad faith.
The Panel also finds that the use of the Domain Names is in bad faith. It is more probable than not that the Domain Names have been used to try to attract Internet users for commercial gain by misleading them into believing that the website at the Domain Name is authorised by or somehow connected to the Complainant. Regarding the Domain Name <klonopin-rx.com>, the Panel cannot conceive of any potential use of the Domain Name, incorporating the Complainant's trademark, that would amount to good faith use of the Domain Name for purposes of the Policy. Furthermore, the Respondent did not reply to the Complainant's cease and desist letter, nor the complaint.
The Panel concludes that the Domain Names were registered and are 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 Domain Names, <klonopin-rx.com> and <valium-rx.com> be transferred to the Complainant.
Date: May 20, 2016