WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

F. Hoffmann-La Roche AG v. Whois Protection / Andrey Nyrkov

Case No. D2013-0834

1. The Parties

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

Respondent is Whois Protection of Pardubice, Czech Republic / Andrey Nyrkov of Moscow , Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <valiumonline247.com> is registered with Gransy, s.r.o. d/b/a subreg.cz (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 14, 2013. On May 14, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 14, 2013, 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 Complainant on May 16, 2013, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. On May 21, 2013, the Complainant submitted an amendment to the Complaint.

The Center verified that the Complaint and 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 Respondent of the Complaint, and the proceedings commenced on May 22, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 11, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 13, 2013.

The Center appointed Sandra A. Sellers as the sole panelist in this matter on June 19, 2013. 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, with its affiliates, is one of the world’s largest pharmaceutical companies, with operations in over 100 countries. One of its most well-known drugs is covered by the VALIUM trademark, for which it holds registrations throughout the world.

The disputed domain name was registered on May 5, 2013. Its website shows “Valium generic” for sale in various quantities.

5. Parties’ Contentions

A. Complainant

Complainant asserts that it has exclusive rights in the VALIUM trademark. It contends that the disputed domain name is confusingly similar to Complainant’s marks because it consists of Complainant’s VALIUM mark in its entirety, and that the only difference between Complainant’s mark and the disputed domain name is the addition of the descriptive term “online” and the figure “247,” which do not sufficiently distinguish the disputed domain name from Complainant’s mark. Complainant further alleges that Respondent has no rights or legitimate interests in the disputed domain name, and that it registered and uses the disputed domain name in bad faith.

B. Respondent

Respondent did not reply to Complainant’s contentions.

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.

A. Identical or Confusingly Similar

The Panel finds the disputed domain name confusingly similar to Complainant’s VALIUM mark. It contains Complainant’s VALIUM mark in its entirety. The only difference between Complainant’s mark and the disputed domain name is the addition of the descriptive term “online” and the figure “247,” which do not sufficiently distinguish the disputed domain name from the complainant’s mark. Numerous previous UDRP decisions have held that the addition of a common word does not distinguish a domain name from Complainant’s mark or preclude a finding of confusing similarity. See, e.g., Hoffmann–La Roche Inc. v. Hightech Industries, Andrew Browne, WIPO Case No. D2010-0240; Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662.

Accordingly, the Panel finds that Complainant has rights in the VALIUM mark and that the disputed domain name is confusingly similar to Complainant’s mark. Complainant has established the first element of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Because it is generally difficult for a complainant to prove the fact that a respondent does not have any rights or legitimate interests in a domain name, previous UDRP panels have found it sufficient for a complainant to make a prima facie showing of its assertion where there has been no response.

Complainant has exclusive rights in the VALIUM mark. Respondent is not affiliated with or related to Complainant, nor is Respondent licensed or authorized to use the VALIUM mark. In a particularly appropriate case cited by Complainant, the panel found that “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 jg a/k/a/ Josh Green, WIPO Case No. D2004-0784. On the evidence before the Panel, Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name.

The Panel is satisfied that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in the disputed domain name.

Respondent is in default, and has not provided any evidence in its own favor.

The Panel finds that the evidence in the record is sufficient to establish that Respondent has no rights or legitimate interests in the disputed domain name, and thus Complainant meets the second criterion of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

The Panel finds it difficult to conceive that Respondent did not know of Complainant’s mark and products when Respondent registered the disputed domain name. As set forth above, the VALIUM mark is protected by various United States and international trademark registrations. A sample registration for the VALIUM mark carries a priority date of October 20, 1961. VALIUM drugs are marketed through Complainant’s global operations in over one hundred countries. All of this occurred before the disputed domain name <valiumonline247.com> was registered in May 2013. Further, this disputed domain name reverts to web pages selling drugs advertised as “Valium generic”, which reinforces the inference that Respondent was aware of Complainant’s marks. Based on these facts, this Panel infers that Respondent was aware or must have been aware of Complainant’s mark when Respondent registered the disputed domain name, and therefore registered it in bad faith. See, e.g., Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574, in which the panel found it “inevitable that [r]espondent registered the domain names in full knowledge of [c]omplainant’s rights and interests”.

It is clear to this Panel that Respondent, by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of a product or service on Respondent’s website, thus using Complainant’s marks in bad faith. This disputed domain name reverts to a web page showing generic products identical to Complainant’s product, and which are sold under Complainant’s VALIUM mark. This content appears designed to reinforce the Internet user’s impressions that the disputed domain name is affiliated with or approved by Complainant. The resulting confusion is grounds for a finding of bad faith use under paragraph 4(b)(iv) of the Policy. See Pandora Jewelery, LLC v ke ying, no, bing jin, fcgem, Wei Pang, na no and fcg, xiong mao, WIPO Case No. D2010-0642.

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 <valiumonline247.com> be transferred to Complainant.

Sandra A. Sellers
Sole Panelist
Date: July 3, 2013