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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

F. Hoffmann-La Roche AG v. Vasja Last, Home / Wuxi Yilian LLC

Case No. D2016-0723

1. The Parties

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

The Respondent is Vasja Last, Home of Cheljabinsk, Chekljabinskaja, Russian Federation / Wuxi Yilian LLC of Xiamen, Fujian, China.

2. The Domain Names and Registrar

The disputed domain names <buyvaliumonlineglp.com>, <buyvaliumwithoutprescriptiononlineglp.com> and <generivaliumglp.com> are registered with Bizcn.com, Inc. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 12, 2016. On April 12, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 13, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 15, 2016, 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 April 15, 2016.

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 April 22, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 12, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 13, 2016.

The Center appointed Dr. Hong Xue as the sole panelist in this matter on May 23, 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 a producer of pharmaceutical products and the owner of several registrations for the trademark VALIUM, including International Trademark VALIUM, Registration No. 250784, registered on December 20, 1961.

The Respondent registered the disputed domain names <buyvaliumonlineglp.com>, <buyvaliumwithoutprescriptiononlineglp.com> and <generivaliumglp.com> on January 5, 2016. The disputed domain name <buyvaliumwithoutprescriptiononlineglp.com> resolves to an online pharmacy where generic versions of the Complainant's products are offered for sale. The disputed domain names <buyvaliumonlineglp.com> and <generivaliumglp.com> resolve to websites that state "Site generivaliumglp.com [or buyvaliumonlineglp.com] just created. Real content coming soon."

5. Parties' Contentions

A. Complainant

The Complainant contends that the disputed domain names <buyvaliumonlineglp.com>, <buyvaliumwithoutprescriptiononlineglp.com> and <generivaliumglp.com> are confusingly similar to the trademark VALIUM seeing that they incorporate the Complainant's VALIUM trademark in its entirety.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

The Complainant contends that the disputed domain names were registered and are being used in bad faith.

The Complainant requests that the disputed domain names <buyvaliumonlineglp.com>, <buyvaliumwithoutprescriptiononlineglp.com> and <generivaliumglp.com> be transferred to it.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

Pursuant to the Policy, paragraph 4(a)(i), a complainant must prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.

The Panel finds that before the registration of the disputed domain names the trademark VALIUM had been registered and used together with the Complainant's pharmaceutical products in a number of countries.

The disputed domain names are <buyvaliumonlineglp.com>, <buyvaliumwithoutprescriptiononlineglp.com> and <generivaliumglp.com>. Apart from the generic Top-Level Domain suffix ".com", the disputed domain names consist of the element "valium" that is identical with the Complainant's VALIUM trademark and a series of generic terms, i.e., "buy", "online", "glp", "without prescription" or "generi". It is established by numerous decisions made under the Policy that adding a generic or descriptive word to a complainant's mark does not preclude a finding of confusing similarity (Prada S.A. v. Roderick G. Arnold, WIPO Case No. D2002-0928). The disputed domain names, which contain the Complainant's trademark VALIUM in its entirety and attach generic terms, i.e., "buy", "online", "glp", "without prescription", "generi" or "discount", to the mark, are unlikely to distinguish the disputed domain names from the trademark VALIUM.

The Panel therefore finds that the disputed domain names <buyvaliumonlineglp.com>, <buyvaliumwithoutprescriptiononlineglp.com> and <generivaliumglp.com> are confusingly similar to the Complainant's registered trademark VALIUM. Accordingly, the Complainant has proven the first element required by paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain names and, as stated above, the Respondent did not provide any information to the Panel asserting any rights or legitimate interests it may have in the disputed domain names.

It is apparent from the Complaint that there is no connection between the Respondent and the Complainant or its business. Paragraph 4(c) of the Policy lists a number of circumstances which can be taken to demonstrate a respondent's rights or legitimate interests in a domain name. However, there is no evidence before the Panel that any of the situations described in paragraph 4(c) of the Policy apply here. To the contrary, the lack of a Response leads the Panel to draw a negative inference.

Therefore, and also in light of the Panel's findings below, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names <buyvaliumonlineglp.com>, <buyvaliumwithoutprescriptiononlineglp.com> and <generivaliumglp.com>. Accordingly, the Complainant has proven the second element required by paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

The Complainant contends that the Respondent registered and is using the disputed domain names in bad faith. The Respondent did not respond.

Through examining the evidence submitted, the Panel notes that the website at the disputed domain name <buyvaliumwithoutprescriptiononlineglp.com> offers to sell so-called "generic Valium" drugs.

The Complainant has stated clearly that it had never granted the Respondent any license or other authorization to use the trademark VALIUM or sell Valium products.

The Panel finds that the Respondent's use of the disputed domain name <buyvaliumwithoutprescriptiononlineglp.com> that is confusingly similar to the Complainant's mark to attract consumers to a website that is using the identical trademark VALIUM to sell unauthorized pharmaceutical products for profits is highly likely to cause confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the Respondent's website or of the products on the Respondent's website.

The Panel also notes that the website at "www.buyvaliumwithoutprescriptiononlineglp.com", which may be read as "buy Valium without prescription online glp", ironically states that "Taking Valium it is inevitable to follow the recommendations on dosage and prescribed strength. Otherwise you risk experiencing some adverse reactions, such as fatigue, headache, dizziness, constipation, drowsiness." The Panel therefore finds that the Respondent's registration and use of the disputed domain name <buyvaliumwithoutprescriptiononlineglp.com> are not only in bad faith but may considerably damage the reputation of the Complainant's trademark VALIUM on pharmaceutical products and may endanger the public health.

Although the websites at "www.buyvaliumonlineglp.com" and "www.generivaliumglp.com" are almost blank except for the message "Welcome! Site buyvaliumonlineglp.com [or generivaliumglp.com] just created. Real content coming soon", the Panel finds that the two disputed domain names <buyvaliumonlineglp.com> and <generivaliumglp.com>, that were registered by the Respondent along with <buyvaliumwithoutprescriptiononlineglp.com> on the same date and are confusingly similar to the Complainant's trademark VALIUM, are unlikely to be used for legitimate purpose by the Respondent. The "real content" to be added onto the websites of <buyvaliumonlineglp.com> and <generivaliumglp.com> is most likely similar to that offered on <buyvaliumwithoutprescriptiononlineglp.com>. The Respondent's passive holding of the disputed domain names <buyvaliumonlineglp.com> and <generivaliumglp.com> is evidence of bad faith use in certain circumstances (VALIUM is a well-known trademark, no response to the Complaint has been filed, and the Respondent's use of a privacy service).

The Panel therefore finds that it is adequate to conclude that the Respondent has registered and is using the disputed domain names in bad faith under the Policy, paragraph 4(b)(iv). Therefore, the Complainant has successfully proven the third element required by paragraph 4(a) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <buyvaliumonlineglp.com>, <buyvaliumwithoutprescriptiononlineglp.com>, and <generivaliumglp.com> be transferred to the Complainant.

Dr. Hong Xue
Sole Panelist
Date: June 6, 2016

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