WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Roche Products Inc. v. RX World, Nils Bor

Case No. D2010-1893

1. The Parties

The Complainant is Roche Products Inc. of Hamilton, Bermuda, Panama, represented by Lathrop & Gage L.C., United States of America.

The Respondent is RX World, Nils Bor of Nashville, Tennessee, United States of America.

2. The Domain Name and Registrar

The disputed domain name <valium-drugstore.com> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 5, 2010. On November 8, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On November 8, 2010, eNom 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 November 9, 2010, providing the registrant and contact information disclosed by the eNom and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on November 13, 2010.

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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 17, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 7, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 8, 2010.

The Center appointed Beatrice Onica Jarka as the sole panelist in this matter on December 15, 2010. 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 member of the Roche Group. The Complainant together with its affiliated companies is one of the leaders in research and development of pharmaceutical and diagnostic products and has global operations. The Complainant holds several VALIUM trademark registrations for pharmaceutical psychotherapeutic agent worldwide, such as the United States Patent and Trademark Office trademark registration No. 725,548 and No. 1,314,271 (a design trademark consisting of a circular shaped tablet with a stylized “v” punched through the center of the tablet).

The parent company of the Complainant, F. Hoffmann-La Roche AG, owns and has registered the domain name <valium.com>.

Advertising and promotion for the Complainant’s Valium psychotherapeutic agent using the mark VALIUM has been extensively used and widely circulated by the Complainant in the United States of America, and the product has acquired fame and celebrity, symbolizing the goodwill that the Roche group has created in the United States and throughout the world.

For the purposes of this proceeding, this Panel considers the VALIUM trademark as a famous mark. In this sense, see F. Hoffmann-La Roche AG v. NetMarketing cc, WIPO Case No. D2005-1216, where the panel determined the VALIUM mark to be “well-known and notorious”; F. Hoffmann-La Roche AG v. Ashima Kapoor, WIPO Case No. D2005-1351; and Roche Products Inc. v. Slava c/o Dynadot Privacy, WIPO Case No. D2010-1862, where the Panel considered the VALIUM trademark a famous one.

The disputed domain name was registered on March 20, 2007. The Respondent is according to the information provided by eNom at the official request of the Center RX World, Nils Bor.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

- The trademark VALIUM has been in use in the United States since 1961;

- The trademark VALIUM designates a psychotherapeutic agent indicate for treatment and prevention of anxiety;

- The disputed domain name contains the entire VALIUM trademark of the Complainant and therefore is identical or confusingly similar to this mark;

- The Respondent has no rights or legitimate interests in the disputed domain name as the Complainant did not authorize the Respondent to use the VALIUM trademark;

- The website to which the disputed domain name resolves uses the VALIUM trademark and as a part of a copyright notice;

- The Respondent’s use of the disputed domain name is disreputable. The Respondent’s website to which the disputed domain name resolves offers the Complainant’s Valium drug and Valium generic drug (diazepam) and the Complainant’s competitors’ anti anxiety products and other pharmaceutical products of the competitors for sale through the linked site “www.dprixe.net”;

- The Respondent’s link sales site offers the Valium drug without a prescription or based on an online prescription by a “cyber doctor” which is illegal in the United States. Such use of the disputed domain name is an act of unfair competition which may cause significant harm to the Complainant’s reputation and negative consequences to those taking medication which may not be appropriate to them;

- The Complainant’s mark VALIUM is not a generic word but an invented and coined famous mark that enjoys an extremely strong reputation worldwide;

- There exists no relationship whatsoever between the Respondent and the Complainant, and the Complainant has not given the Respondent permission to use in any way its famous mark VALIUM in a domain name to sell any Valium product;

- The Respondent was aware of the VALIUM trademark, and seeks to divert Internet users to its website at the disputed domain name for its own commercial gain, all to the confusion of the public and detriment of the Roche group;

- By operating the disputed domain name the Respondent has intentionally attempted to attract for financial gain Internet users to the Respondent’s website at the disputed domain name by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or the goods on the Respondent’s website;

- Such website to which Internet users are directed through the Respondent’s website has no legitimate business connection with the Complainant or its Valium psychotherapeutic agent product. Such unauthorized use of the Complainant’s mark suggests opportunistic bad faith.

The Complainant requests that the disputed domain name be transferred to it.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

A.1.The Complainant holds rights in the VALIUM trademark

The Complainant has provided sufficient evidence showing that it is the owner of the VALIUM mark. The Panel is satisfied that the Complainant holds rights in the VALIUM trademark.

A.2. The disputed domain name is confusingly similar to the Complainant’s VALIUM trademark.

The disputed domain name incorporates the Complainant trademark in its entirety and adds a descriptive word “drugstore” and the gTLD suffix “.com”.

Many UDRP panels have recognized that the incorporation of a trademark in its entirety in a domain name may be sufficient to establish that the domain name is identical or confusingly similar to that mark. See EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047; F. Hoffmann-La Roche AG v. George McKennitt, WIPO Case No. D2005-1300; Hoffmann-La Roche Inc. v. Patsy Hail, WIPO Case No. D2008-1343; and Roche Products Inc. v. Slava c/o Dynadot Privacy, supra.

Moreover, the addition of the term “drugstore” to the VALIUM mark does not mitigate the confusing similarity between the disputed domain name and the Complainant’s trademark. Consequently, the addition of the term to the Complainant’s trademark does not negate the confusing similarity between the VALIUM trademark and the disputed domain name. Rather, it strengthens the association by having people think that it relates to buying the VALIUM drug online. See Hoffmann-La Roche Inc. v. Patsy Hail, supra, and Roche Products Inc. v. Slava c/o Dynadot Privacy, supra.

It is also now well-established that the confusing similarity thus created is not negated by the presence in the domain name of suffixes such as the gTLD suffix “.com”.

As the Complainant clearly has rights in the VALIUM trademark as its owner, the Panel finds that the disputed domain name is confusingly similar to the said trademark and that the Complainant has accordingly established the first of the three elements that it must prove.

B. Rights or Legitimate Interests

The Complainant must first establish a prima facie showing under paragraph 4(a)(ii) of the Policy, and then the evidential onus shifts to the Respondent to rebut the presumption of absence of rights or legitimate interests.

The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) has been made by the Complainant. It cannot be contested that the Respondent has not been authorized to use the Complainant’s VALIUM mark on the Respondent’s website or to appropriate the mark for use as a domain name, and there is no indication that the Respondent has ever been commonly known by the domain name.

The Panel notes that at the time the Complaint was filed, the Respondent’s website to which the disputed domain name resolved offered the Complainant’s VALIUM drug as well as the Complainant’s competitors’ anti anxiety products and other pharmaceutical products of the competitors for sale through the linked site “www.dprixe.net”.

Moreover, the website to which the disputed domain name resolved offered the Complainant’s Valium product without a prescription or based on a cyber doctor prescription which is illegal in the United States.

Such use of the Complainant’s trademark on the website at the disputed domain name may be considered as acts of unfair competition which may cause significant harm to the Complainant’s reputation and negative consequences to those taking medication which may not be appropriate to them.

The Respondent has not submitted a Response to deny the Complainant’s assertions concerning the inappropriate nature of such use of the Complainant’s trademark or to explain why the disputed domain name was used in such a way when there is no obvious connection between the Respondent and the Complainant.

Under these circumstances, the Panel finds that the Respondent is not in any way engaged with, or preparing for, a bona fide offering of goods or services using the disputed domain name.

The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that that the Complainant has accordingly established, also, the second of the three elements that it must prove.

C. Registered and Used in Bad Faith

The Panel finds on the present record in this case that the Respondent registred and is using the disputed domain name in bad faith.

The Panel is persuaded by the Complainant’s contentions that:

- The website to which the disputed domain name resolved through the linked sites offered the Complainant’s Valium product without a prescription or based on a cyber doctor prescription which is illegal in the United States. Such use of the disputed domain name may be considered as an act of unfair competition which may cause significant harm to the Complainant’s reputation and negative consequences to those taking medication which may not be appropriate to them;

- The Complainant’s mark VALIUM is not a generic word but an invented and coined mark that enjoys a strong reputation worldwide;

- There exists no relationship whatsoever between the Respondent and the Complainant, and the Complainant has not given the Respondent any permission to use in any way its famous mark VALIUM in a domain name to sell any Valium product;

- The Respondent must have been aware of the VALIUM trademark, and sought to divert Internet users to its website at the disputed domain name for its own commercial gain, all to the confusion of the public and detriment of the Roche group.

- By operating the disputed domain name the Respondent has intentionally attempted to attract for financial gain Internet users to the Respondent’s website at the disputed domain name by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or the goods on the Respondent’s website;

- Such website to which Internet users were directed through the Respondent’s website has no legitimate business connection with the Complainant or its Valium psychotherapeutic agent product.

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

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <valium-drugstore.com> be transferred to the Complainant.

Beatrice Onica Jarka
Sole Panelist
Dated: December 28, 2010