WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. Florian Stecher, Medic45 gmbh / WhoisGuard Protected, WhoisGuard, Inc.
Case No. D2017-0080
1. The Parties
The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, internally represented.
The Respondent is Florian Stecher, Medic45 gmbh of Barcelona, Spain / WhoisGuard Protected, WhoisGuard, Inc. of Panama, Panama.
2. The Domain Name and Registrar
The disputed domain name <valium-kaufen.net> (the "Domain Name") is registered with NameCheap, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 17, 2017. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 19, 2017, 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 January 25, 2017 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 January 26, 2017.
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 27, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 16, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 17, 2017.
The Center appointed Jon Lang as the sole panelist in this matter on February 24, 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.
VALIUM is protected as a 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 mark VALIUM designates a sedative and anxiolytic drug belonging to the benzodiazepine family. The Complainant has built a world-wide reputation in psychotropic medications through its VALIUM product.
The Domain Name <valium-kaufen.net> was registered on January 7, 2017. The Domain Name resolves to a website which has been described as an on-line pharmacy.
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 term "kaufen", which means "to buy" in the German language (and a hyphen) does not sufficiently distinguish the Domain Name from the trademark.
- In any event, as a previous WIPO UDRP case has found, "the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to the Complainant's registered mark".
- Furthermore, in F. Hoffmann-La Roche AG v. Katharina Mertens, WIPO Case No. D2015-0486 the Panel found that "Ignoring the generic Top Level Domain ("gTLD") ".com", the disputed domain name comprises the Complainant's mark VALIUM together with a hyphen and the term "kaufen", which means "to buy" in the German language. The Panel accepts that the use of this descriptive term is ineffective to distinguish the disputed domain name from the Complainant's trademark, as the term is merely suggestive of an online source of the Complainant's product".
- The mark VALIUM is well known and famous which will increase the likelihood of confusion.
- The Complainant's use and registration of the mark VALIUM predates the Respondent's registration of the Domain Name.
The Respondent has no rights or legitimate interests in respect of the Domain Name:
- The Complainant has exclusive rights for VALIUM and no licence or consent was granted to use VALIUM in the Domain Name.
- It is obvious that the Respondent uses the Domain Name for commercial gain and with the purpose of capitalizing on the fame of the Complainant's VALIUM mark.
- Internet users are directed to an on-line pharmacy.
- In Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784, it was said that "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".
- The Respondent did not reply to the Complainant's cease and desist letter and thus has not availed itself of the opportunity to present a case of legitimate interest.
- The Domain Name clearly alludes to the Complainant and there is no reason why the Respondent should have any right or interest in such Domain Name.
The Domain Name was registered and is being used in bad faith:
- The Domain Name was registered in bad faith since at the date of registration, on January 7, 2017, the Respondent had, no doubt, knowledge of the Complainant's well known product/mark VALIUM.
- The Domain Name is being used in bad faith – it is obvious from a review of the website to which the Domain Name resolves, that the Respondent has intentionally attempted (for commercial purpose) to attract Internet users to its website, by creating a likelihood of confusion with the Complainant's well known mark as to the source, affiliation and endorsement of that website or of products or services posted on or linked thereto.
- In Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784, it was said that bad faith is established when the "Respondent is using the domain names as a forwarding address to a for-profit on-line pharmacy".
- Moreover, it was said in Pfizer Inc v. Juan Gonzales, WIPO Case No. D2004-0589 that "Furthermore, the printout of the relevant pages of Respondent's website "generic-viagra-online.com" shows that Respondent has been using the Domain Name to promote and sell, for commercial gain, sildenafil citrate pharmaceutical products as "generic Viagra", which directly compete with Complainant's genuine Viagra … This is further evidence of Respondent's bad faith registration and use of the Domain Name under paragraph 4 (c) (iii) of the Policy".
- The Respondent, by using the Domain Name, is intentionally misleading consumers and confusing them by making them believe that linked websites are associated or recommended by the Complainant. As a result, the Respondent may generate unjustified revenues and is therefore illegitimately capitalizing on the fame of the VALIUM trademark.
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.
Ignoring the gTLD ".net" (as the Panel may do for comparison purposes), the Domain Name comprises the Complainant's VALIUM trademark, followed by the German word "kaufen", with VALIUM and "kaufen" separated by a hyphen. 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 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 confusing similarity. 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 well known VALIUM trademark is clearly recognizable within the Domain Name. The only real issue is therefore whether the word "kaufen" which follows it (separated by a hyphen), renders the Domain Name something other than confusingly similar (to that mark). Clearly, it does not.
Indeed, given the meaning of the German word "kaufen", i.e., "to buy", its inclusion in the Domain Name may well enhance, rather than lessen, the risk of confusing similarity.
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 is entitled to consider whether there would be anything inappropriate in such a finding.
Despite a respondent not having been 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 nature of the website to which the Domain Name resolves, which appears to be very much commercial in nature (being an online pharmacy offering for sale various pharmaceutical products), 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, in this case, Internet users into believing there is some form of association between the Respondent 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 pharmaceutical products from a variety ofmanufacturers,to which a confusingly similar domain name resolves, (particularly one that is confusingly similar because it incorporates a famous mark of one particular pharmaceutical manufacturer out of those 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 <valium-kaufen.net> be transferred to the Complainant.
Date: March 2, 2017