WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

F. Hoffmann-La Roche AG v. WhoisGuard Protected, WhoisGuard, Inc. /Benito Graffagnino

Case No. D2019-0629

1. The Parties

The Complainant is F. Hoffmann-La Roche AGl, Switzerland, internally represented.

The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Benito Graffagnino, Georgia.

2. The Domain Name and Registrar

The disputed domain name <msjvalium.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 21, 2019. On March 21, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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 March 25, 2019 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 the same date.

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 2, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 22, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 30, 2019.

The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on May 13, 2019. 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 leading pharmaceutical company having global operations in more than 100 countries. One of its marks is VALIUM, originally registered in Switzerland on October 20, 1961 and later subject of the international registration No. R250784, of December 20, 1961, subsequently renewed and valid until December 20, 2021 to cover in class 05 medicines (inter alia) (Annex 3 to the Complaint).

The disputed domain name <msjvalium.com> was registered on February 17, 2019 and has been used in connection with an online pharmacy. Presently, no active webpage resolves from the disputed domain name.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the mark VALIUM is used to distinguish a sedative from the benzodiazepine family largely sold in various countries throughout the world (Annex 5 to the Complaint). The mark is so well‑known that it has been depicted in the prestigious “The New York Times” as an “American cultural icon” in addition to being “the best-selling drug in the United States of America” (Annex 5 to the Complaint) and a constant reference in movies and novels.

According to the Complainant, the disputed domain name is confusingly similar to its notorious trademark since it incorporates the mark in its entirety and the addition of the term “msj” does not sufficiently distinguish the disputed domain name from the trademark.

The Complainant further asserts that the Respondent has no rights or legitimate interests over the disputed domain name since no authorization, license, permission or consent was granted for the use of VALIUM in a domain name.

In the Complainant’s point of view the disputed domain name has thus been used for commercial gain and with the purpose of capitalizing on the fame of the Complainant’s VALIUM mark since the respective website redirected users to an online pharmacy where the tablets with the active ingredient “diazepam” of the Complainant’s product were being offered for sale (Annex 7 to the Complaint).

Such use of the disputed domain name, in the Complainant’s point of view, clearly alludes to the Complainant and there is no reason that legitimate interests or rights can be found in favor of the Respondent, having the Complainant sent a cease and desist letter to the Respondent (Annex 6 to the Complaint).

As to the Respondent’s bad faith, the Complainant argues that the Respondent has intentionally attempted for commercial purposes to attract Internet users to its website creating a likelihood of confusion with the Complainant’s well-known trademark as to the source, affiliation and endorsement of its website to the products and services available there. Moreover, the use of the disputed domain name can also raise questions of public health and safety given the possibility of acquisition of “diazepam-tablets” without prescriptions, what may lessen the reputation associated with the Complainant’s trademark.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy sets forth the following three requirements, which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.

The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present so as to have the disputed domain name transferred to it, according to paragraph 4(i) of the Policy.

In accordance with paragraph 14(b) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.

A. Identical or Confusingly Similar

The Complainant has established its rights in the trademark VALIUM according to the International Registration No. R 250784, of December 20, 1961, subsequently renewed and valid until December 20, 2021 to cover in class 05 medicines (inter alia) (Annex 3 to the Complaint).

The Complainant’s mark is entirely reproduced in the disputed domain name and the addition to it of the term “msj” in this Panel’s point of view does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark.

For the reasons above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a non‑exclusive list of circumstances that indicate the Respondent’s rights to or legitimate interests in the disputed domain name. These circumstances are:

(i) before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, in spite of not having acquired trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to and/or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden is still on the Complainant’s side to make a prima facie case against the Respondent.

In that sense, the Complainant indeed states that no authorization, license, permission or consent was granted to the Respondent for the use of VALIUM in the disputed domain name.

Moreover, the Respondent is clearly aware of the Complainant’s trademark and product since that the webpage that resolved from the disputed domain name served as an on-line pharmacy that sold tablets with the active ingredient “diazepam”, which relate to the Complainant’s product without prescription (Annex 7 to the Complaint). Such use in this Panel’s view cannot be considered – absent any evidence to the contrary – good faith.

Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name.

C. Registered and Used in Bad Faith

The Policy indicates in paragraph 4(b)(iv) that bad faith can be found in the use of the disputed domain name, with an intentional attempt to attract, for commercial gain, Internet users to the website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.

In the present case, Annex 7 to the Complaint clearly shows that the page corresponding to the disputed domain name has served as an online pharmacy selling tablets with the active ingredient “diazepam”, which relate to the Complainant’s product without prescription.

Such use in this Panel’s view constitutes an attempt to profit from the fame and goodwill associated with the Complainant’s notorious trademark, thus capitalizing on the fame of the Complainant’s VALIUM mark by creating a likelihood of confusion in Internet users who likely believe that the disputed domain name is either connected, endorsed or authorized by the Complainant.

Also, the fact that the website at the disputed domain name has been subsequently deactivated does not preclude the Panel’s finding of the bad faith registration and use by the Respondent.

Further, as already mentioned, the Respondent did not file any response to the Complaint, failing thereby to invoke any circumstance, which could demonstrate its good faith in the registration or use of the disputed domain name.

For the same reasons as those stated above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use pursuant to paragraph 4(b)(iv) of the Policy.

7. Decision

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 <msjvalium.com> be transferred to the Complainant.

Wilson Pinheiro Jabur
Sole Panelist
Date: May 27, 2019