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WIPO Arbitration and Mediation Center


F. Hoffmann-La Roche AG v. Domain Administrator, See PrivacyGuardian.org / James Bobson

Case No. D2020-2598

1. The Parties

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

The Respondent is Domain Administrator, See PrivacyGuardian.org, United States of America / James Bobson, United States of America.

2. The Domain Name and Registrar

The disputed domain name <valiumpharma.com> (“Disputed Domain Name”) is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 7, 2020. On October 7, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On the same day, 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 October 9, 2020, 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 October 9, 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 October 13, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 2, 2020. On October 16, 2020, the Center received an email from a third party.

The Center appointed Nicholas Weston as the sole panelist in this matter on November 26, 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 is a healthcare group which operates a pharmaceuticals and diagnostics business with operations in more than 100 countries. The Complainant holds registrations for the trademark VALIUM in numerous countries internationally including Switzerland, which it uses to designate a sedative and anxiolytic drug belonging to the benzodiazepine family. The Swiss registration (for pharmaceuticals) has been in effect since 1961.

The Respondent registered the Disputed Domain Name <valiumpharma.com> on June 21, 2020.

The Respondent uses the Disputed Domain Name to resolve to an online pharmacy that offers VALIUM branded pharmaceuticals for sale.

5. Parties’ Contentions

A. Complainant

The Complainant cites its International trademark registration No. 250784 for the mark VALIUM in various countries as prima facie evidence of ownership.

The Complainant submits that the trademark VALIUM is well-known, and that its rights in that mark predate the Respondent’s registration of the Disputed Domain Name <valiumpharma.com>. It submits that the Disputed Domain Name is confusingly similar to its trademark, because the Disputed Domain Name incorporates in its entirety the VALIUM trademark (citing Wal-Mart Stores, Inc vs. Kuchora, Kal, WIPO Case No. D2006-0033) and that the similarity is not removed by the addition of the dictionary term “pharma”.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it has exclusive and prior trademark rights in the word VALIUM, the Respondent has no connection or affiliation with the Complainant and has not received its license or consent to use the mark, and that the Respondent has not presented any legitimate interest it might have despite being afforded an opportunity to do so.

Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to the Policy and Rules. On the issue of registration, the Complainant submits that “the Respondent could not ignore the VALIUM mark and its notoriety because the respondent’s registration of the domain name, on 21st June 2020, is well after the Complainant’s trade mark registration” and, on the issue of use, that “the Respondent is using the disputed domain name to capitalize on the Complainant’s reputation and goodwill in its famous Trademark”.

B. Respondent

The Respondent did not reply to the Complainant’s contentions. On October 16, 2020, the Center received an email from a third party, which is reproduced in redacted form below:

I am the IT Director for [redacted] and today we received this written notice in relation to the “www.valiumpharma.com” site.

This is not a website that we own or have registered – however we are very concerned that this site ha[s] taken the address of one of our pharmacies ([redacted]) and is illegally selling medication through it. It also looks to have copied some of the verbiage from our website.

We are more tha[n] happy to coordinate to get this website taken down and have already reported it to the authorities in [redacted].

Please let me know how we should proceed.
Many Thanks”

Given this communication is from a third party, discloses nothing substantive, or indicates why evidence was not presented within the permitted timeframe, this Panel will not receive the communication as a formal Response.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the complainant has the burden of proving the following:

(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the 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. Identical or Confusingly Similar

The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark VALIUM in Switzerland and in many countries throughout the world. The propriety of a domain name registration may be questioned by comparing it to a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358).

Turning to whether the Disputed Domain Name is identical or confusingly similar to the VALIUM trademark, the Panel observes that the Disputed Domain Name comprises (a) an exact reproduction of the Complainant’s trademark VALIUM followed by (b) the term “pharma”, and (c) followed by the generic
Top-Level Domain (“gTLD”) “.com”, all in one continuous domain name.

It is well-established that the gTLD used as part of a domain name is generally disregarded (see Hoffmann-La Roche Inc. v. Andrew Miller, WIPO Case No. D2008-1345). The relevant comparison to be made is with the Second-Level portion of the Disputed Domain Name: “valiumpharma”.

It is also well-established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it is confusingly similar to that mark despite the addition of words such as, in this case, “pharma” (see Wal-Mart Stores, Inc. v. Kuchora, Kal, WIPO Case No. D2006-0033; Hoffmann-La Roche Inc. v. Andrew Miller, WIPO Case No. D2008-1345). This Panel finds that the addition of the word “pharma”, connoting a company that makes and sells pharmaceuticals, located after the Complainant’s registered trademark, is an additional element that does not serve to prevent a finding of confusing similarity of the Disputed Domain Name (see F. Hoffmann-La Roche AG v. Holy & Blessed Corp. Holy & Blessed Corp., WIPO Case No. D2007-0234).

The Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists the ways that the Respondent may demonstrate rights or legitimate interests in the Disputed Domain Names. The Policy also places the burden on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the Disputed Domain Names. Because of the inherent difficulties in proving a negative, the consensus view is that the Complainant needs only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production then shifts to the Respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306; WIPO Overview of WIPO Panel Views on Selected URDP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1).

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it is misleadingly directing Internet users to an online pharmacy selling VALIUM branded medications for commercial gain and with the purpose of capitalizing on the fame of the Complainant’s mark VALIUM. The Panel notes that website at the Disputed Domain Name does not accurately and prominently disclose the nature, if any, of the Respondent’s relationship with the Complainant.

In Lilly ICOS LLC v. East Coast Webs, Sean Lowery, WIPO Case No. D2004-1101, the Panel stated: “While mere resale of genuine branded products might give rise to a legitimate debate over whether the use of the mark was ‘nominative’, any such contention is undermined by Respondent’s sale of products directly competing with Complainant’s through the same website. This principle may have particular weight in the pharmaceutical context, where risks to the public may be enhanced by the lack of regulatory safeguards assuring the safety or efficacy of the purported ‘generic’ version of Complainant’s CIALIS brand product, thus further undermining any argument (had Respondent made such an argument, which it did not) that it was making a bona fide offering of goods. See Lilly ICOS LLC v. Dan Eccles, WIPO Case No. D2004‑0750.”

In Lilly ICOS LLC v. Tudor Burden d/b/a BM Marketing/Burden Marketing, WIPO Case No. D2005-0313, the panel found that “the Respondent is making a non-legitimate commercial use of the disputed domain names that misleadingly diverts consumers… (finding that) [b]ecause the Respondent was using the infringing domain name to sell prescription drugs, it could be inferred that the Respondent was opportunistically using Complainant’s mark in order to attract Internet users to its website.”

On any objective view, the Respondent is not a reseller with a legitimate interest in a domain name incorporating a manufacturer’s mark, such that it could meet the tests set out in Oki Data Americas, Inc. v. ASD, Inc., D2001-0903. Nor, alternatively, is the Respondent commonly known by the Disputed Domain Name. Even if it was selling an unauthorized generic product, this would not be VALIUM. In F. Hoffmann-La Roche AG v. Ve Patel, WIPO Case No. D2006-0096, the Panel made the point that “Respondent’s website offers for sale a ‘…generic VALIUM.’ This Panel notes that there is no such thing as generic VALIUM. There is either VALIUM, a diazepam product, manufactured only by Complainant, or diazepam, a product that can be manufactured by anyone. Thus, while VALIUM is a diazepam product, diazepam is not VALIUM unless it is manufactured by Complainant. It is clear to this Panel that Respondent is using Complainant’s famous trademark to sell diazepam – not VALIUM; and this Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.”

This Panel finds that the Respondent is making an illegitimate commercial use of the Disputed Domain Name. By misleadingly diverting consumers, it can be inferred that the Respondent is opportunistically using the Complainant’s well-known mark in order to attract Internet users to its website and has been using the Disputed Domain Name to divert Internet traffic to its online pharmacy.

The Panel finds for the Complainant on paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The third element of the Policy that the Complainant must also demonstrate is that the Disputed Domain Name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both of these conjunctive requirements.

The Panel finds that the evidence in the case shows the Respondent registered and has used the Disputed Domain Name in bad faith.

On the issue of registration, the trademark VALIUM is so famous a mark for pharmaceuticals that it would be inconceivable that the Respondent might have registered the mark without knowing of it. (see F. Hoffmann-La Roche AG v. Samir Kumar, samirnet - domain names for sale, WIPO Case No. D2008-0919; F. Hoffmann-la Roche AG v. Popo, WIPO Case No. D2008-0423; F. Hoffmann-La Roche AG v. TMNET, Anton Gorodov, WIPO Case No. D2008-0995; F. Hoffmann-La Roche AG v. DNS Administrator/Turvill Consultants Ltd-RD, WIPO Case No. D2006-0047; F. Hoffmann-La Roche AG v. George Stiegman, WIPO Case No. D2008‑1572).

Further, a gap of tens of years between registration of a Complainant’s trademarks and the Respondent’s registration of the Disputed Domain Name (containing the trademark together with a term related to the trademark) can indicate bad faith (see Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415). In this case, the Respondent registered the Disputed Domain Name nearly six decades after the Complainant established trademark rights in the VALIUM mark.

On the issue of use, the Panel notes that the Disputed Domain Name used to resolve to an online website that offers sleeping medications for sale. In line with prior UDRP panel decisions, the Panel finds that the obvious danger of online consumers being afforded inaccurate, incomplete or misleading information about medical products, services and applications and the probable diversion of actual sales reinforces the Respondent’s bad faith (see Pfizer Inc v. Juan Gonzales, WIPO Case No. D2004-0589; Lilly ICOS LLC v. Tudor Burden, Burden Marketing, WIPO Case No. D2004-0794, Roche Products Inc. v. Michael Robert, WIPO Case No. D2008-1155; Parrot S.A. v. Whois Service, Belize Domain WHOIS Service, WIPO Case No. D2007-0779; Serta Inc. v. Charles Dawson, WIPO Case No. D2008-1474).

This Panel finds that the Respondent has taken the Complainant’s trademark VALIUM and incorporated it in the Disputed Domain Name without the Complainant’s consent or authorization, for the very purpose of capitalizing on the reputation of the trademark by diverting Internet users for commercial gain.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of 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 Name, <valiumpharma.com> be transferred to the Complainant.

Nicholas Weston
Sole Panelist
Date: December 17, 2020