WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. Veselko Dragic, Wuntux Trade Ltd.
Case No. D2017-0034
1. The Parties
The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, internally represented.
The Respondent is Veselko Dragic, Wuntux Trade Ltd. of Belgrade, Serbia.
2. The Domain Name and Registrar
The disputed domain name <norxvalium.com> (the "Domain Name") is registered with Rebel Ltd (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 10, 2017. On January 10, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 11, 2017, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 17, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 6, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 7, 2017.
The Center appointed Jon Lang as the sole panelist in this matter on February 15, 2017. 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, together with its affiliated companies, is one of the world's leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics and has 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.
VALIUM is protected as a registered trademark in a multitude of countries including by way of International Registration No. 250784, with a priority date of October 20, 1961, registered on December 20, 1961.
The Domain Name was registered on December 1, 2016.
5. Parties' Contentions
The Domain Name is confusingly similar to the Complainant's mark:
- it incorporates the Complainant's trademark VALIUM in its entirety;
- the addition of the descriptive terms "no" and "rx" does not sufficiently distinguish the Domain Name from the Complainant's mark - the symbol "rx" is often taken to refer to the Latin word "recipe" meaning "to take" and is customarily part of the superscription (or heading) of a prescription. Thus the prefix "norx" has been held to be, in earlier F. Hoffmann-La Roche AG vs. Roik Brin, WIPO Case No. D2012-0721, an abbreviation for "no prescription";
- furthermore, VALIUM is a well-known trademark through its long and extensive use and its fame will increase the likelihood of confusion;
- it is possible that Internet users will believe that the Domain Name is related to the Complainant.
The Respondent has no rights or legitimate interests in respect of the domain name:
- the Complainant has exclusive and prior rights in the trademark VALIUM, which precede the Respondent's registration of the Domain Name;
- the Respondent has no connection or affiliation with the Complainant and has not been granted any license or consent, express or implied, to use the Complainant's VALIUM mark;
- the Domain Name resolves to an online pharmacy which promotes and sells, among others, VALIUM drugs;
- by falsely implying that its pharmaceutical products are related or similar to those of the Complainant, the Respondent is using the Domain Name for the purposes of trading on the Complainant's goodwill;
- the Respondent did not reply to the Complainant's cease and desist letter and thus has not availed itself of the opportunity to present any case of legitimate interest that it might have.
The domain name was registered and is being used in bad faith:
- the domain name was registered in bad faith as there is no doubt that at the time of registration of the Domain Name, the Respondent had knowledge of the Complainant's VALIUM mark;
- registration of a domain name that is confusingly similar or identical to a famous trademark by an entity which has no relationship with that mark, is itself sufficient evidence of bad faith registration and use;
- the domain name is being used in bad faith - the choice of Domain Name by the Respondent was not a coincidence in that it contains the term "valium" and resolves to an online pharmacy in order to attract Internet users seeking (among other products) the Complainant's VALIUM product;
- a previous UDRP case has found that bad faith is established when the "Respondent is using the domain names as a forwarding address to a for-profit on-line pharmacy", Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2017-0784;
- the Respondent is using the disputed domain name to capitalize on the Complainant's reputation and goodwill in its well-known trademark and is deliberately using the Domain Name in order to mislead consumers by creating a likelihood of confusion as to the source, affiliation or endorsement of the Respondent's website or of products or services available thereon.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is: (i) identical or confusingly similar to a trademark or service mark in which a 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 complainant must prove each of these three elements to succeed.
A. Identical or Confusingly Similar
The Complainant clearly has rights in the VALIUM trademark as evidenced by its registrations described above.
Ignoring the generic Top-Level Domain ".com" (as the Panel may do for comparison purposes), the Domain Name comprises the Complainant's VALIUM trademark, preceded by the letters "norx". As the VALIUM trademark and Domain Name are not identical, the issue of confusing similarity must be considered. Under the UDRP, the test for confusing similarity involves a comparison between the trademark and the domain name to determine the likelihood of Internet user confusion. To satisfy the test, the trademark to which the domain name is said to be confusingly similar, would generally need to be recognizable as such within the domain name. The addition of common, dictionary, descriptive, or negative terms are usually regarded as insufficient to prevent Internet user confusion. Application of the confusing similarity test under the UDRP typically involves a comparison, on a visual or aural level, between the trademark and the domain name.
The VALIUM trademark is clearly recognizable within the Domain Name. The only real issue is therefore whether the letters "norx", preceding the mark VALIUM, renders the Domain Name something other than confusingly similar to that mark. Clearly, it does not.
Indeed, given what is said by the Complainant to be the meaning of "rx" in a pharmaceuticals context, the addition of "norx" immediately before the mark VALIUM, may even enhance, rather than lessen, the risk of association with the Complainant.
Accordingly, the Panel finds that the Domain Name is confusingly similar to the VALIUM mark for the purposes of the Policy and thus paragraph 4(a)(i) of the Policy has been established.
B. Rights or Legitimate Interests
By its allegations, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name and, as such, the burden of production shifts to the Respondent to come forward with arguments or evidence demonstrating that it does in fact have such rights or legitimate interests. The Respondent has not done so and accordingly, the Panel is entitled to find, given the prima facie case made out by the Complainant, that the Respondent indeed lacks rights or legitimate interests in the Domain Name. Despite the lack of any answer to the Complaint however, the Panel should consider whether there would be anything in the case file that would support the Respondent's rights or legitimate interests.
Despite a respondent not being licensed by or affiliated with a complainant, he might still be able to demonstrate rights or legitimate interests. For instance, a respondent can show that he has been commonly known by the domain name or that he is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers. However, in this case, the Respondent is not known by the Domain Name and, given the website to which the Domain Name resolves, which appears to be very much commercial in nature (being an online pharmacy on which appears an invitation to "Get brand and generic mediciations [sic] from legit manufacturers Asia Pharma Pharmaceuticals, British Dispensary, Eli Lilly and Company, Sanofi, Janssen-Cilag EMEA and others"), it cannot be said that there is legitimate noncommercial use. Indeed, it can readily be assumed that the overriding purpose of the website to which the Domain Name resolves is to produce a commercial gain. There must also be an absence of an intent to mislead (for commercial gain) but in fact the Respondent's choice of Domain Name may well suggest the opposite. In other words, that there is an intent to mislead i.e. Internet users into believing there is some form of association between him and the Complainant when there is not. In these circumstances, "use" could not be regarded as "fair" either.
A respondent can also show that it was using a domain name in connection with a bona fide offering of goods or services. However, it is difficult to accept that an online pharmacy, selling or purporting to sell "brand and generic mediciations [sic] ..." from a variety of"legit manufacturers ...", to which a confusingly similar domain name resolves, (particularly one that is confusingly similar because it incorporates a widely-known mark of one particular pharmaceutical manufacturer out of many mentioned on the website concerned), could amount to a bona fide offering of goods or services.
In Drexel University v. David Brouda, WIPO Case No. D2001-0067, the panel stated that "rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant".
There is no evidence before this Panel that suggests that the Respondent has rights or legitimate interests in the Domain Name or that there would be anything inappropriate in a finding that reflects this. Accordingly, this Panel finds that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
One way a complainant may demonstrate bad faith registration and use is to show that a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with a complainant's mark as to the source, sponsorship, affiliation or endorsement of its website or of products or services on it.
The Respondent was clearly aware of the Complainant's VALIUM trademark given the (unauthorized) use to which the Domain Name has been put. The purpose behind the registration appears to have been to attract Internet users to the Respondent's website using a domain name confusingly similar to the Complainant's VALIUM trademark. In other words, the very circumstances envisaged above.
The Panel finds that, for the purposes of the Policy, there is evidence of both registration and use of the Domain Name in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <norxvalium.com> be transferred to the Complainant.
Date: February 27, 2017