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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

F. Hoffmann-La Roche AG v. Identity Protection Service, Identity Protect Limited / Paul Wax

Case No. D2020-0183

1. The Parties

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

The Respondent is Identity Protection Service, Identity Protect Limited, United Kingdom / Paul Wax, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <valiumsleepingpillsuk.com> is registered with 123-Reg Limited (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 24, 2020. On January 24, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 27, 2020, 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 28, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Center received several email communications from the Respondent on January 28, 2020. The Complainant filed an amendment to the Complaint on January 29, 2020.

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 February 3, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 23, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Commencement of Panel Appointment Process to the Parties on February 25, 2020.

The Center appointed Reyes Campello Estebaranz as the sole panelist in this matter on March 3, 2020. 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 a leading research-focused healthcare pharmaceutical group based in Switzerland, which operates globally in more than 100 countries. Among other products, the Complainant’s group produces a sedative and anxiolytic drug belonging to the benzodiazepine family commercialized under the trademark VALIUM.

The Complainant holds registrations for the mark VALIUM in over 100 countries on a worldwide basis, of which it is sufficiently representative for the present proceeding International trademark No. 250784 VALIUM, word, registered on December 20, 1961, in classes 1, 3, and 5.

The disputed domain name was registered on November 8, 2019, and it is currently inactive. However, according to the evidence provided by the Complainant, the disputed domain name was linked to a website in English, providing information about buying sleeping pills online and redirecting to an online pharmacy, indicating, “valiumsleepingpillsuk.com is the only store that sells genuine medicines and nothing fake, so, the users can relax and order them without fear”. This website included on its home page an “introductory offer” for buying sleeping pills (GBP 17.99 for 10 tablets including free delivery) with a photograph of various persons wearing doctors’ coats or gowns and stethoscopes.

5. Parties’ Contentions

A. Complainant

Key contentions of the Complaint may be summarized as follows:

The trademark VALIUM is well-known and notorious. The disputed domain name incorporates this mark in its entirety being confusingly similar. The addition of the terms “sleepingpills” and “uk” does not sufficiently distinguish the disputed domain name from the mark.

The Respondent has no rights or legitimate interests in the disputed domain name, not having any license or authorization for using the mark VALIUM. The disputed domain name is used for commercial gain with the purpose of capitalizing on this mark’s reputation. The Respondent has not replied to the Complainant’s cease and desist letter.

The disputed domain name was registered and is being used in bad faith. The Respondent targeted the Complainant’s well-known trademark intentionally attempting (for commercial purpose) to attract Internet users to the Respondent’s site. Further, the disputed domain name was linked to a website offering products of competitors of the Complainant, which is likely to cause confusion among Internet users as to the source of products or to confusingly suggest sponsorship by the Complainant. This may generate unjustified revenues to the Respondent, illegitimately capitalizing on the VALIUM trademark fame.

The Complainant has cited previous decisions under the Policy that it considers supportive of its position.

The Complainant requests the transfer of the disputed domain name.

B. Respondent

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

In various communications to the Center, the Respondent alleged not having intended to infringe the Complainant’s rights and not having effectively sold any of the Complainant’s products, without providing any evidence in support of these allegations. Further, the Respondent removed the content of the website linked to the disputed domain name, not proceeding to transfer the disputed domain name to the Complainant.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that, in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:

(i) the 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 domain name; and

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

The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has authority to decide the dispute.

Paragraph 15(a) of the Rules provides that “a Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. The Panel has taken into consideration all of the evidence, annexed material and submissions provided by the Parties, and has performed some limited independent research under the general powers of the Panel articulated inter alia in paragraphs 10 and 12 of the Policy. See section 4.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

A. Identical or Confusingly Similar

In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered identical or confusingly similar to that mark for purposes of the Policy. In such cases, the addition of terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element, although the nature of such additional term(s) may bear on assessment of the second and third elements. See sections 1.7 and 1.8 of WIPO Overview 3.0.

Further, the applicable generic Top-Level Domain (“gTLD”) in a domain name is considered a standard technical registration requirement and, as such, is generally disregarded under the first element confusing similarity test. See section 1.11, WIPO Overview 3.0.

The Complainant indisputably has rights in the registered trademark VALIUM, incorporated in the disputed domain name followed by the term “sleepingpillsuk”, which does not prevent a finding of confusing similarity with the mark. The Complainant’s mark VALIUM is directly recognizable in the disputed domain name, and the gTLD “.com” is a technical requirement, generally disregarded for the purpose of the analysis of confusing similarity. Accordingly, this Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark, and the first element of the Policy under paragraph 4(a)(i) has been satisfied.

B. Rights or Legitimate Interests

Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the Respondent’s knowledge. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production of evidence of rights or legitimate interests in the disputed domain name to the Respondent, once the Complainant has made a prima facie showing indicating the absence of such rights or legitimate interests.

The Complainant has alleged that the Respondent is not a licensee nor has he been otherwise authorized to use the trademark VALIUM, and that the disputed domain name has been used for commercial gain with the purpose of capitalizing on this mark’s reputation. This effectively shifts the burden of producing evidence of rights or legitimate interests in the disputed domain name to the Respondent.

However, the Respondent did not reply to the cease and desist letter and has taken down the website linked to the disputed domain name, since being notified of this proceeding, not replying to the Complaint and not providing any explanation or evidence of rights or legitimate interests in the disputed domain name.

The Panel further notes that a core factor in assessing fair use of a domain name is whether the domain name falsely suggests affiliation with the Complainant’s trademark. See section 2.5, WIPO Overview 3.0. The disputed domain name incorporates the Complainant’s trademark in its entirety, followed by terms that refer to the Complainant’s products (“sleeping pills”) and a geographical indication (“uk”), which may point to an intention to confuse Internet users seeking for or expecting the Complainant, corroborated by the website content that was linked to the disputed domain name. Therefore, the Panel considers that there is a high risk of implied affiliation and confusion that may lead Internet users to believe that the disputed domain name is owned or related to the Complainant or to a subsidiary of the Complainant (probably operating in or related to the United Kingdom market).

All the above-mentioned circumstances lead the Panel to conclude that the Respondent has not produced evidence to rebut the Complainant’s prima facie case, and all the cumulative facts and circumstances indicate that the Respondent lacks any rights or legitimate interests in the disputed domain name. Therefore, the second element of the Policy under paragraph 4(a)(ii) has been established.

C. Registered and Used in Bad Faith

The Policy, paragraph 4(a)(iii), requires that the Complainant establish that the disputed domain name “has been registered and is being used in bad faith”.

At the time of the disputed domain name’s registration, the Panel considers unlikely that the Respondent did not know about the VALIUM mark, and did not have it in mind. The circumstances of this case lead to this conclusion. Particularly, the extensive presence of this trademark over the Internet and its well-known character worldwide, including in the United Kingdom where the Respondent is located (according to the WhoIs information), as well as the inclusion in the disputed domain name of the terms “sleeping pills” (products in a field similar to Complainant’s goods) and the content of the website liked to the disputed domain name.

The disputed domain name was linked to an online pharmacy specialized in sedative drugs, where not only the Complainant’s products but also other sedative or anxiolytic drugs belonging to competitors of the Complainant were offered for sale. These circumstances point to an intention to create confusion or affiliation with the Complainant to misleadingly attract Internet users to the Respondent’s site.

The Panel further notes the reaction of the Respondent to the Complaint, taking down the website linked to the disputed domain name and not providing any explanation or evidence supporting any rights or legitimate interests in the disputed domain name.

It is further relevant that the non-use of a domain name (including a blank or “coming soon” page) does not prevent a finding of bad faith under the doctrine of passive holding. See section 3.3 of the WIPO Overview 3.0.

Taking into account all cumulative circumstances of this case, the Panel considers that the disputed domain name was very likely registered and used, targeting the mark VALIUM, with the intention of creating a likelihood of confusion as to the affiliation or association with the Complainant and its trademark, trying to misleadingly attract Internet users to the Respondent’s website, and disrupting the Complainant’s business.

These are circumstances of bad faith in accordance to paragraph 4(b)(iv) of the Policy.

All the above-mentioned leads the Panel to conclude that the disputed domain name was registered and is being used in bad faith. Accordingly, the Panel concludes that the Complainant has met its burden of establishing that the Respondent registered and is using the disputed domain name in bad faith under the third element 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 <valiumsleepingpillsuk.com> be transferred to the Complainant.

Reyes Campello Estebaranz
Sole Panelist
Date: March 10, 2020

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