WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

F. Hoffmann-La Roche AG v. Adam Scott

Case No. D2019-2420

1. The Parties

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

Respondent is Adam Scott, India.

2. The Domain Names and Registrar

The disputed domain names <valiummeds.com> and <valiumstore.org> are registered with Uniregistrar Corp.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 7, 2019. On October 7, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 9, 2019, 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 Complainant on October 9, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on October 10, 2019.

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 October 11, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 31, 2019. Respondent did not submit any response. However, an informal email communication from Respondent was received on October 11, 2019, was forwarded to the Center by Complainant. Respondent wrote “I have deleted domain name” and Complainant asked if Respondent was willing to transfer the disputed domain names. On October 18, 2019, Complainant informed the Center that Respondent had not contacted it. The Center informed the Parties that it will proceed to Panel Appointment on October 18, 2019.

The Center appointed Scott R. Austin as the sole panelist in this matter on November 4, 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

Complainant states in its Complaint, and provides evidence in the respective Annexes attached to its Complaint sufficient to support:

1) that “Complainant is together with its affiliated companies one of the world’s leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics and having global operations in more than 100 countries”;

2) that “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” (the “VALIUM Mark”);

3) that the VALIUM Mark “is protected as a registered trademark in a multitude of countries worldwide including International Registration No. R250784, certificate of which is submitted in copy as [Annex attached to Complaint]. Priority date for the [VALIUM Mark] is October 20, 1961”;

4) that both disputed domain names, were registered on September 9, 2019, by Respondent and as of the time of filing of the Complaint resolve to online pharmacy websites which offer VALIUM Mark products, implying that Respondent’s pharmaceutical products are related or similar to those of Complainant.

5. Parties’ Contentions

A. Complainant

1. The disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights because:

a) The VALIUM Mark is a well-known trademark world wide through its long and extensive use as evidenced by the numerous registrations submitted by Complainant, including but not limited to, International Registration No. R250784, showing use of the VALIUM Mark since at least as early as October 20, 1961;

b) The VALIUM Mark is and has become famous world wide over the past 50 years as shown by extensive independent media and press coverage submitted in Complainant’s Annex to its Complaint and such notoriety “increases the likelihood of confusion between Complainant’s [VALIUM Mark] and the disputed domain names”;

c) The disputed domain names each incorporate the VALIUM Mark in its entirety and the addition of the terms “meds” (i.e. medicine/medication) and “store” (associating with selling products via an online pharmacy) in the respective disputed domain names does not sufficiently distinguish either of the disputed domain names from the VALIUM Mark.

2. Respondent has no rights or legitimate interests in the disputed domain names because:

a) “Complainant has exclusive and prior rights in the trademark VALIUM, which precede Respondent’s registration of the disputed domain names”;

b) “Respondent has no connection or affiliation with Complainant and has not received any license or consent, express or implied, to use Complainant’s [VALIUM Mark]”;

c) “By redirecting to online pharmacy websites which offers VALIUM products [as show in the Annex attached to Complainant’s Complaint], Respondent is falsely implying that its pharmaceutical products are related or similar to those of Complainant and is using the domain with the purpose of capitalizing on the reputation of Complainant’s [VALIUM Mark]”; and

d) “Respondent did not reply to Complainant’s cease and desist letter and hence has not availed itself of the opportunity to present any case of legitimate interest that it might have.”

3. The disputed domain names have been registered and are being used in bad faith because:

a) Respondent’s registration of the disputed domain names on September 9, 2019, is decades after Complainant’s registrations of the VALIUM Mark;

b) Given that Complainant’s VALIUM Mark is highly distinctive and famous world wide and has been continuously and extensively used since at least as early as 1961 in connection with Complainant’s psychotropic medications, specifically a sedative and anxiolytic drug belonging to the benzodiazepine family, “it is obvious that Respondent is intending to gain profit in relation to Complainant’s reputation and goodwill in its trademark”;

c) Prior UDRP panels have found that bad faith is established when “Respondent is using the domain names as a forwarding address to a for profit online pharmacy”; and

d) The contents of the online pharmacies found at the website accessed through each disputed domain name suggest Respondent is generating unjustified revenues and therefore is illegitimately capitalizing on the fame of the VALIUM Mark.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested:

(i) each of the disputed domain names is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) Respondent has no rights or legitimate interests in respect of each disputed domain name; and

(iii) each disputed domain name has been registered and is being used in bad faith.

Policy, paragraph 4(a).

A. Identical or Confusingly Similar

Based upon the trademark registrations cited by Complainant, as well as supporting documents, the Panel finds that Complainant has established trademark rights in and to the VALIUM Mark used by Complainant in connection with the sale of its sedative and anxiolytic drug belonging to the benzodiazepine family.

Complainant contends that the disputed domain names are confusingly similar to its VALIUM Mark in which Complainant has rights because each disputed domain name contains the VALIUM Mark in its entirety. In the first disputed domain name, <valiummeds.com> appends to the VALIUM Mark the term “meds”, a descriptive term for Complainant’s business of providing psychotropic “medications” under the VALIUM Mark, along with a generic Top-Level Domain (“gTLD”), neither of which additions prevents a finding of confusing similarity between Respondent’s disputed domain name and the VALIUM Mark.

In like manner, the second disputed domain name <valiumstore.org> appends to the VALIUM Mark the dictionary term “store”, descriptive of Respondent’s online pharmacy website accessed through that disputed domain name along with the gTLD “.org”. Again, neither the dictionary term nor the gTLD prevents a finding of confusing similarity.

For the disputed domain name to be found identical or confusingly similar to the VALIUM Mark, the relevant comparison is with the second-level portion, “valiummeds” of the first disputed domain name, <valiummeds.com> and “valiumstore” of the second disputed domain name <valiumstore.org>, as it is well established that the gTLDs “.com” and “.org” may generally be disregarded for this purpose. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, section 1.11 (“WIPO Overview 3.0”), (Top-Level Domain as technical requirement for domain name registration is disregarded under the confusing similarity test).

Prior UDRP panels have found that where a disputed domain name incorporates a complainant’s mark in its entirety, adding a descriptive term and a gTLD to complainant’s mark, does not negate confusing similarity between the disputed domain name and the mark under Policy, paragraph 4(a)(i). See Roche Products Inc. v. RX World, Nils Bor, WIPO Case No. D2010-1893(addition of the term “drugstore” to the VALIUM mark does not negate the confusing similarity between the disputed domain name <valium-drugstore.com> and complainant’s trademark).

Essentially, once a disputed domain name is found to incorporate a complainant’s mark in its entirety, analysis of any appended terms on a more complex level, such as likelihood of confusion is unnecessary for a finding of confusing similarity under the first element of the Policy, but may be applied to a finding under the second or third element. See Wal-Mart Stores, Inc. v. MacLeod, WIPO Case No. D2000-0662 (“The issue in the analysis of the first factor is not whether there is confusion in the trademark infringement sense (an issue more properly considered under the legitimate interest and bad faith factors), but rather whether there is sufficient similarity between the domain name and the trademark to advance to consideration of the second and third factors.”)

Section 1.7 of the WIPO Overview 3.0 provides: “It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name.” One panelist noted in a recent decision under the Policy citing section 1.7 of the WIPO Overview 3.0, “That straightforward test is met here because the Disputed Domain Name wholly incorporates the trademark at issue” Dover Downs Gaming & Entertainment, Inc. v. Domains By Proxy, LLC / Harold Carter Jr, Purlin Pal LLC, WIPO Case No. D2019-0633; see Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (“that a domain name wholly incorporates a complainant's registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks.”)

The disputed domain names here incorporate the entirety of Complainant’s VALIUM Mark and, for that reason, is sufficient for this Panel to find the disputed domain names confusingly similar to Complainant’s VALIUM Mark.

Accordingly, the Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Under this second element of the Policy, “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied the second element”, WIPO Overview 3.0, section 2.1. Respondent here has failed to present any evidence of its rights or legitimate interests in the disputed domain names, and such failure is tantamount to admitting the truth of Complainant’s assertions; see Do the Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624.

Complainant contends that Respondent has no rights or legitimate interests in the disputed domain names because:

a) “Complainant has exclusive and prior rights in the trademark VALIUM, which precede the Respondent’s registration of the disputed domain names”;

b) “Respondent has no connection or affiliation with Complainant and has not received any license or consent, express or implied, to use Complainant’s [VALIUM Mark]”;

c) “[b]y redirecting to online pharmacy websites which offers VALIUM products [as show in the Annex attached to Complainant’s Complaint], Respondent is falsely implying that its pharmaceutical products are related or similar to those of Complainant and is using the domain with the purpose of capitalizing on the reputation of Complainant’s [VALIUM Mark]”; and

d) “[r]espondent did not reply to Complainant’s cease and desist letter and hence has not availed itself of the opportunity to present any case of legitimate interest that it might have.”

Complainant argues that Respondent has no rights or legitimate interests in the disputed domain names, stating, without challenge by Respondent, that “Respondent has no connection or affiliation with Complainant and has not received any license or consent, express or implied, to use Complainant’s [VALIUM Mark]”. Respondent having defaulted in these proceedings, there is no evidence from Respondent that it has been commonly known by either disputed domain name. The Panel finds in review of the WhoIs record and other evidence submitted by Complainant that Respondent is not commonly known by either of the disputed domain names. See Marriott International, Inc. v. Thomas, Burstein & Miller, WIPO Case No. D2000-0610 (no legitimate interest when there is no evidence that respondent is commonly known by the domain name).

Neither is there any evidence Respondent is making any noncommercial or fair use of the disputed domain names. Indeed, it is clear from Complainant’s evidence submitted that Respondent’s use of each disputed domain name is for commercial purposes, each resolving to an online pharmacy website. The Panel finds that without the consent of Complainant, Respondent is using each confusingly similar disputed domain name to offer a product that competes with Complainant’s product to generate revenues by capitalizing on the notoriety and world wide fame of Complainant’s VALIUM Mark. Prior UDRP panels have found no legitimate interest in a disputed domain name used for such purposes. See Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. 2004-0784 (“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.”); Pfizer, Inc. v. Seocho and Vladimir Snezko, WIPO Case No. D2001-1199; AVENTIS Pharma S.A. and Merrell Pharmaceuticals Inc. v. Rx USA, WIPO Case No. D2002-0290. This Panel, therefore, cannot find Respondent’s use to be a bona fide use under these circumstances.

Accordingly, as a result of Complainant’s evidence sufficient to meet its burden for a prima facie case and without any evidence from Respondent to the contrary, the Panel finds that Respondent has no rights or interests in the disputed domain names and that Complainant has therefore satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy:

(i) circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or

(ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or

(iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).

The Panel finds that Respondent has registered the disputed domain names in bad faith for at least the following reasons.

Complainant contends that Respondent registered the disputed domain names in full knowledge of Complainant’s rights, stating, “Complainant has exclusive and prior rights in the trademark VALIUM, which precede Respondent’s registration of the disputed domain names”. To support this assertion Complainant has provided evidence sufficient to establish that its rights in the VALIUM Mark were established as early as 1961, decades prior to Respondent’s registration of the disputed domain names on September 9, 2019.

The Panel notes the media coverage materials submitted by Complainant demonstrate the pervasive world wide fame and historical impact of the VALIUM Mark and the drug it identifies upon everything from medicine to legislation and news regarding over-prescription abuse, to pop culture references in books and music since its introduction in 1961. The Panel also notes the fame of the VALIUM Mark is reflected in over 250 previous UDRP decisions to date by WIPO panels where the VALIUM Mark has been confronted with one or more disputed domain names.

The Panel also finds Complainant has provided sufficient evidence to establish its claim that the VALIUM Mark is notorious and famous world wide. Prior UDRP panels have acknowledged that it is highly unlikely that a respondent would not have had awareness of Complainant’s rights given Complainant’s popularity world wide. See e.g., F. Hoffmann-La Roche AG v. Web Marketing Limited, WIPO Case No. D2006-0005 (“With the widespread fame of the VALIUM trademark it is virtually inconceivable that Respondent was unaware of Complainant’s mark.”); Roche Products Inc. v. RX World, Nils Bor, WIPO Case No. D2010-1893 (“Complainant’s mark VALIUM is not a generic word but an invented and coined mark that enjoys a strong reputation worldwide”);F. Hoffmann-La Roche AG v. Elizabeth Gonzalez, Sky-IP, WIPO Case No. D2016-0563 (VALIUM trademarks “widely known”). Complainant’s evidence in support of its allegations is sufficient for this Panel to agree that Respondent could not plausibly argue that it did not have knowledge of Complainant’s VALIUM Mark at the time of registration of the disputed domain names in 2019.

The Panel finds that given the decades of use by Complainant of its VALIUM Mark prior to Respondent’s registration of the disputed domain names, the world wide fame of the VALIUM Mark and that each of Respondent’s disputed domain names incorporates the VALIUM Mark in its entirety, Respondent registered the disputed domain names with actual knowledge of Complainant’s VALIUM Mark in bad faith. See F. Hoffmann-La Roche AG v. Elizabeth Gonzalez, Sky-IP, WIPO Case No. D2016-0563; see also WIPO Overview 3.0, section 3.2.2; see, e.g. eBay Inc. v. Sunho Hong, WIPO Case No. D2000-1633 (actual knowledge of Complainant’s rights in its trademarks a factor supporting bad faith).

The Panel next considers Respondent’s selection of the dictionary terms appended to Complainant’s VALIUM Mark as additional factors supporting a finding of bad faith registration of the disputed domain names.

As explained by the WIPO Overview 3.0, section 3.2.1: “Particular circumstances panels may take into account in assessing whether the respondent’s registration of a domain name is in bad faith include:

(i) the nature of the domain name (e.g., a typo of a widely-known mark, or a domain name incorporating the complainant’s mark plus an additional term such as a descriptive or geographic term, or one that corresponds to the complainant’s area of activity or natural zone of expansion)…]

See, e.g. Georgia-Pacific Consumer Products LP v. Whois Privacy Services Pty Ltd. / Conquistador Sat, WIPO Case No. D2013-1458 (bad faith registration found where Respondent domain name added the dictionary terms “paper” and “towels” to complainant’s trademark BRAWNY because both terms “have an obvious connection with Complainant because they describe the products that Complainant sells under the trademark BRAWNY”); Marlette Funding, LLC v. Whois Privacy Corp, WIPO Case No. D2018-1907 (bad faith registration found where Respondent added terms descriptive of complainant’s activities, “loans” and “reviews”, to complainant’s BEST EGG mark in its entirety to create the disputed domain name, which resolved to website offering services similar to those of the complainant because “the Respondent is seeking to create a false association with the Complainant’s trading activities”).

As noted above in the Panel’s consideration of the first element, the first disputed domain name <valiummeds.com> appends to the VALIUM Mark the term “meds”, a descriptive term for Complainant’s business of providing psychotropic “medications” under the VALIUM Mark, and the second disputed domain <valiumstore.org> appends to the VALIUM Mark the dictionary term “store”, descriptive of Respondent’s online pharmacy website accessed through that disputed domain name. The Panel finds it is clear from the evidence that the disputed domain names were registered in bad faith with the intention that each would be confused with Complainant’s established rights in its famous VALIUM Mark. The Panel finds Respondent’s choice of these dictionary terms as additional factors showing that Respondent registered the disputed domain names in bad faith to create a false association with Complainant’s products and to attract Internet users to Respondent’s online pharmacy website by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website.

The Panel also finds that Respondent’s use of the disputed domain names is in bad faith. As noted above in the Panel’s discussion under Section 6.B, Respondent’s website landing page for each disputed domain name is an online pharmacy. Complainant contends that such use demonstrates bad faith use because “it is obvious that Respondent is intending to gain profit in relation to Complainant’s reputation and goodwill in its trademark”. The Panel agrees and finds that Respondent’s conduct constitutes bad faith use of the disputed domain names as envisaged by paragraph 4(b)(iv) of the Policy. See Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. 2004-0784 (bad faith use exemplified where “Respondent is using the domain names as a forwarding address to a for-profit online pharmacy.”);see also, CVS Pharmacy, Inc. v. WhoisGuard Protected / Andrey Molodavkin, WIPO Case No. D2009-1604(finding bad faith use in respondent’s domain name used to access an online pharmacy website because “the only reason Respondent wanted to register the disputed domain name was to gain some sort of advantage in relation to Complainant’s reputation and goodwill in its trademark.”).

Given the degree of distinctiveness and world-wide notoriety of Complainant’s VALIUM Mark, the failure of Respondent to submit a response, and Respondent’s use of the disputed domain names intentionally to attract, for commercial gain, Internet users to its online pharmacy websites, thereby creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website, a form of bad faith contemplated by paragraph 4(b)(iv) of the Policy, the Panel finds Respondent has registered and used the disputed domain names in bad faith. SeeWIPO Overview 3.0, section 3.1.4; seealso Walgreen Co. v. Muhammad Azeem / Wang Zheng, Nicenic International Group Co., Limited, WIPO Case No. D2016-1607 (finding bad faith use under paragraph 4(b)(iv) against disputed domain name hosting online pharmacy site incorporating complainant’s well known mark to create likelihood of confusion for commercial gain).

Accordingly, the Panel finds that Complainant has satisfied paragraph 4(a)(iii) 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 names <valiummeds.com> and <valiumstore.org> be transferred to Complainant.

Scott R. Austin
Sole Panelist
Date: November 18, 2019