WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. WhoisGuard Protected, WhoisGuard, Inc. / Vladimir Talko
Case No. D2017-0678
1. The Parties
The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, internally represented.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama, Panama / Vladimir Talko of Zhytomyr, Ukraine.
2. The Domain Name and Registrar
The disputed domain name <valium.online> (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 April 4, 2017. On April 4, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same day, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 6, 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 April 10, 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 April 11, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 1, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 2, 2017.
The Center appointed Gareth Dickson as the sole panelist in this matter on May 16, 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 is the registered proprietor of International trade mark number 250784 for VALIUM, which was registered on December 20, 1961 (the “Trade Mark”). The Trade Mark is registered for, inter alia, medicaments and chemical products for medicine and hygiene.
The Domain Name was registered on January 26, 2017, using a privacy service. The Complainant was notified of the underlying registrant data on April 6, 2017. The Complainant added the underlying registrant as the Respondent but did not otherwise substantially amend the Complaint in light of that information. The fax number given by the underlying registrant is invalid.
The Domain Name directs users to “www.toprxonlinemeds24.com”. The site available at that address offers for sale a variety of drugs, including drugs bearing the VALIUM trade mark and drugs bearing marks with whose proprietors the Complainant is in competition.
5. Parties’ Contentions
The Complainant argues that the Domain Name is confusingly similar to the Trade Mark since the addition of the generic Top-Level Domain (“gTLD”) “.online” does not sufficiently distinguish the Domain Name from the Trade Mark, which is otherwise incorporated in its entirety and clearly refers to the Complainant’s VALIUM trade mark. The Complainant argues that the notoriety of VALIUM as a trade mark increases the likelihood of confusion and notes that the Trade Mark predates the Domain Name.
The Complainant states that no license, permission, authorization or consent has been given for the use of VALIUM in the Domain Name. The Complainant also states that Respondent’s use of the Domain Name as set out in section 4 above is for commercial gain and with the purpose of capitalizing on the fame of the Trade Mark.
Finally, the Complainant asserts that the Domain Name was registered in bad faith because the Respondent had knowledge of the Trade Mark when registering the Domain Name; and that the Domain Name is being used in bad faith because the Respondent has intentionally attempted to attract users to the Respondent’s website for commercial gain, by creating a likelihood of confusion as to the source, affiliation and endorsement of those websites and the products, including products of the Complainant’s competitors, offered for sale on said websites.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under Paragraph 4(a) of the Policy, the Complainant bears the burden of proving that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
These criteria are cumulative. The failure of the Complainant to prove any one of them means the Complaint must be denied.
A. Identical or Confusingly Similar
The Domain Name contains an identical reproduction of the Trade Mark together with the gTLD “.online”. In the Panel’s view, the addition of “.online” in a domain name that incorporates a Trade Mark in full and without any other distinguishing elements does not distinguish the Domain Name from the Trade Mark in any way. Accordingly, the Panel finds that the Domain Name is identical to the Trade Mark.
The Panel also finds that the Complainant has rights in the Trade Mark.
Accordingly, the Panel finds that the Domain Name is identical to a trade mark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Panel accepts the Complainant’s statement that it has not licensed or given any other authorization or permission to the Respondent to use the Trade Mark in the Domain Name.
The Panel notes, however, that the Domain Name is being used to sell what the Complainant describes as “Complainant’s product”. Since the Complainant has raised the possibility that the Respondent is using the Complainant’s VALIUM trade mark to sell genuine VALIUM products, which use can, in some circumstances, amount to a bona fide offering of goods or services under the domain name and therefore establish rights or legitimate interests in respect of a domain name, further discussion on this point is required.
The leading decision on whether a respondent’s sale of a complainant’s goods can be bona fide is Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (“Oki Data”). That decision sets out four requirements which must be met before a contested use of a domain name can be held to be bona fide. These requirements may be stated briefly as follows:
1. The Respondent must actually be offering the goods or services at issue.
2. The Respondent must use the site to sell only the trade marked goods; bait and switch is not permitted.
3. The site must accurately disclose the registrant’s relationship with the trade mark owner.
4. The Respondent must not try to corner the market in all domain names, thus depriving the trade mark owner of reflecting its own mark in a domain name.
The Complaint establishes that the Respondent is selling goods other than those bearing the Complainant’s trade marks – and which in fact compete with the Complainant – and that the Respondent has not disclosed that it has no relationship with the Complainant. As such, the Respondent cannot benefit from the decision in Oki Data.
In the absence of any authorization for its use of the Trade Mark in the Domain Name, and with Respondent having failed to provide any basis for the Panel to find that it has rights or legitimate interests in respect of the Domain Name, whether under Oki Data or otherwise, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
The Panel accepts the Complainant’s argument that the Respondent is using the Domain Name in bad faith. Such bad faith use is evidenced by a number of factors. First, the Domain Name incorporates the Trade Mark in its entirety and without any distinguishing elements, thereby needlessly, and falsely, giving the impression that the website to which the Domain Name directs users is authorized or connected to the Complainant. Secondly, the Domain Name uses the Trade Mark to attract users to a website that sells products that compete with products sold by the Complainant under the Trade Mark. Such uses are plainly incompatible with the Complainant’s exclusive right to use the Trade Mark to advertise and sell goods protected by that mark. Since the Respondent knows of the Trade Mark yet persists in using the Domain Name in this way, its use of the Domain Name is in bad faith.
The Panel cannot accept the Complainant’s assertion that the Domain Name has been registered in bad faith simply because the Respondent knew about the Trade Mark when registering the Domain Name. There are some instances where a domain name incorporating a third party trade mark may be registered in good faith, including for the resale of genuine products under license from the trade mark owner or for some other legitimate noncommercial or fair use.
Nonetheless, there is sufficient evidence of the Respondent’s bad faith use of the Domain Name in the Complaint to infer that the Respondent’s registration of the Domain Name must also have been in bad faith, and the Respondent has submitted no evidence to refute that inference.
Accordingly, the Panel finds that the Domain Name has been registered and is 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 disputed domain name, <valium.online>, be transferred to the Complainant.
Date: May 30, 2017