WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. WhoisGuard Protected, WhoisGuard, Inc. / Smith Serah, Serah Is Perfect
Case No. D2018-0084
1. The Parties
The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, internally represented.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama, Panama / Smith Serah, Serah Is Perfect of New York, New York, United States of America.
2. The Domain Name and Registrar
The disputed domain name <valiumonlinetoday.com> (the “Disputed Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 16, 2018. On January 16, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 16, 2018, 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 18, 2018 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 January 19, 2018.
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 January 25, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 14, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 15, 2018.
The Center appointed Nick J. Gardner as the sole panelist in this matter on February 22, 2018. 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 relevant facts are straightforward and can be summarized very briefly as follows:
The Complainant together with its affiliate companies is one of the world‘s largest pharmaceutical companies.
One of its products is a sedative and anxiolytic drug belonging to the benzodiazepine family which it markets under the trademark VALIUM. It has marketed the drug under that name since at least 1961.
The Complainant has registered the word “valium” as a trademark in hundreds of countries. By way of example reference is made by the Complainant to the International Registration No. 250784, with a priority date for the mark VALIUM of October 20, 1961.
“Valium” is a made-up word with no other meaning, coined by the Complainant for its product.
The Respondent is using the Disputed Domain Name in connection with a website “www.valiumonlinetoday.com” which is in effect an online pharmacy offering for sale a wide range of products. These include what is, or purports to be, the Complainant’s “Valium” product as well as various drugs which are, or purport to be, from other manufacturers.
The Disputed Domain name was registered by the Respondent on December 12, 2017.
5. Parties’ Contentions
The Complainant’s contentions are equally straightforward and can be summarized as follows:
The Disputed Domain Name is confusingly similar to its trademark VALIUM in which it clearly has rights. Addition of the descriptive terms “online” and “today” does not distinguish the Disputed Domain Name.
The Respondent has no rights or legitimate interests in the term “valium”. There is no other meaning associated with “valium” or “valiumonlinetoday” other than in relation to the Complainant’s product.
The Disputed Domain Name was registered and is being used in bad faith. In this respect the Complainant relies upon various UDRP decisions that using a domain name which corresponds to or includes a pharmaceutical trademark in connection with a website which provides an online pharmacy amounts to bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Panel notes that no communication has been received from the Respondent. However, given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar then the Panel considers that this satisfies the requirement in paragraph 2(a) of the Rules to “employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent’s failure to file any Response. While the Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default (see e.g., Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909).
The Panel also notes this is a case where one of the named Respondents (WhoisGuard Protected, WhoisGuard, Inc.) appears to be a privacy or proxy registration service. The Panel in this case adopts the approach of most UDRP panels, as outlined in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 4.4.5, as follows:
In all cases involving a privacy or proxy service and irrespective of the disclosure of any underlying registrant, the appointed panel retains discretion to determine the respondent against which the case should proceed.
Depending on the facts and circumstances of a particular case, e.g., where a timely disclosure is made, and there is no indication of a relationship beyond the provision of privacy or proxy registration services, a panel may find it appropriate to apply its discretion to record only the underlying registrant as the named respondent. On the other hand, e.g., where there is no clear disclosure, or there is some indication that the privacy or proxy provider is somehow related to the underlying registrant or use of the particular domain name, a panel may find it appropriate to record both the privacy or proxy service and any nominally underlying registrant as the named respondent”.
In the present case the Panel finds the substantive Respondent to be Smith Serah, Serah Is Perfect – and references to the Respondent should be understood as being to that person.
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(i) the Disputed Domain Name is identical with or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the trademark VALIUM. Although no details have been provided as to turnover or sales figures, the drug under the name VALIUM has clearly been marketed on an international basis on a substantial scale and is well-known. Further, the Complainant has a wide range of registered trademark rights in the word “valium”.
The Disputed Domain Name is confusingly similar to the VALIUM trademark. Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trademark for purposes of the Policy, “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).
It is established that, where a mark is the distinctive part of a disputed domain name, the disputed domain name is considered to be confusingly similar to the registered mark (DHL Operations B.V. v. DHL Packers, WIPO Case No. D2008-1694).
It is also established that the addition of a descriptive term (such as here the words “online” and “today”) has little, if any, effect on a determination of legal identity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does not exclude the confusing similarity (PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189).
Accordingly the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark. Therefore, the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
“Valium” is a made-up word with no other meaning save in relation to the Complainant’s product. The addition of the words “online” and “today” do not provide any additional basis for the Respondent to claim rights in the composite word.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name:
(i) before any notice to the Respondent of the dispute, use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the VALIUM trademark. The Complainant has prior rights in the VALIUM trademark which precede the Respondent’s registration of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent has no rights and legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see for example Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Panel finds that the Respondent has failed to produce any evidence to establish its rights or legitimate interests in the Disputed Domain Name. Accordingly the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered and Used in Bad Faith
In the present circumstances, the distinctive nature of the VALIUM trademark, and the extent of the reputation the Complainant enjoys in the VALIUM trademark, and the confusingly similar nature of the Disputed Domain Name to the VALIUM trademark, and the lack of any explanation from the Respondent as to why it registered the Disputed Domain Name lead the Panel to conclude the registration and use was in bad faith.
In the present case, the Panel concludes the Respondent was aware of the Complainant’s VALIUM trademark when it registered the Disputed Domain Name. The Panel concludes that it is highly likely that the Respondent selected the Disputed Domain Name because of its similarity with the Complainant’s VALIUM trademark. The addition of only the words “online” and “today” suggests to the Panel that the Respondent was deliberately choosing a name with a close and confusing connection to the Complainant’s product. The Panel finds it difficult to conceive of any use which the Respondent could make of the Disputed Domain Name which would be legitimate. Further the Panel notes the Respondent has not filed a Response and hence has not availed itself of the opportunity to present any case of legitimate use that it might have. The Panel infers that none exists.
The website operated by the Respondent at the Disputed Domain Name is an online pharmacy offering a range of drugs for sale. The Panel agrees that this establishes bad faith registration and use – as previous cases have determined – see for example Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784 and the cases it cites under the statement 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”.
As a result, and applying the principles in the above noted decisions, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.
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, <valiumonlinetoday.com>, be transferred to the Complainant.
Nick J. Gardner
Date: March 9, 2018