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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

F. Hoffmann-La Roche AG v. DNS Administrator/Turvill Consultants Ltd-RD

Case No. D2006-0047

 

1. The Parties

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

The Respondent is DNS Administrator/Turvill Consultants Ltd-RD, Ontario, Canada.

 

2. The Domain Names and Registrar

The disputed domain names <purchasevalium.com>, <valiumdosage.com> and <valiuminformation.com> are all registered with Moniker Online Services, LLC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 12, 2006. On January 13, 2006, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain names at issue. On January 18, 2006, Moniker Online Services, LLC transmitted by email to the Center its verification response. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 January 26, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was February 15, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 16, 2006.

The Center appointed Ian Blackshaw as the sole panelist in this matter on February 24, 2006. 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 one of the world’s leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics, with global operations in more than 100 countries. The Complainant’s mark VALIUM is protected as a trademark in over 100 countries worldwide. By way of example, reference is made to the International Registration No. R250784 for the mark VALIUM, with a priority date of December 20, 1961. A copy of the corresponding Registration Certificate has been provided to the Panel.

The mark VALIUM designates a sedative and anxiolytic drug belonging to the benzodiazepine family, which has enabled the Complainant to build a world-wide reputation in psychotropic medications.

 

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

A.1. The domain name is confusingly similar to a trademark or service mark in which the Complainant has rights

(Policy, para. 4(a)(i), Rules, paras. 3(b)(viii), (b)(ix)(1))

The domain names of the Respondent are confusingly similar to the Complainant’s mark since they incorporate the VALIUM mark in its entirety.

Furthermore, the addition of the descriptive words “information”, “purchase” and “dosage” does not sufficiently distinguish the domain names from Complainant’s well-known mark.

According to Lilly ICOS LLC v. John Hopking / Neo net Ltd, WIPO Case No. D2005-0694: “generally, a user of a mark may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it”.

The mark VALIUM is well-known and notorious as evidenced, for example, by some newspaper articles, copies of which have been provided to the Panel. The notoriety of the mark increases the likelihood of confusion.

Furthermore, the Complainant’s use and registration of the mark VALIUM predate the Respondent’s registration of the domain names.

Therefore, the domain names are confusingly similar to the trademark of the Complainant.

A.2. The Respondent has no rights or legitimate interests in respect of the domain names

(Policy, para. 4(a)(ii), Rules, para. 3(b)(ix)(2))

The Complainant has exclusive rights for VALIUM, as mentioned above, and no license, permission, authorization or consent has been granted to the Respondent to use the mark VALIUM in the domain names. Furthermore, it is obvious that the Respondent uses the domain names for commercial gain and with the purpose of capitalizing on the fame of the Complainant’s mark VALIUM.

Therefore, the domain names in question clearly allude to the Complainant.

The Respondent’s websites are only composed of sponsored links, and according to Sigikid H. Scharrer & Koch GmbH & Co. KG, MyBear Marketing-und Vertriebs GmbH, Mr. Thomas Dufner v. Bestinfo, WIPO Case No. D2004-0990: “the sole diversion of Internet traffic by Respondent to other, unrelated websites, does not represent a use of the Domain Name in connection with a bona fide offering of goods and services. Rather, the conduct of Respondent serves the purpose of generating revenues, e.g. from advertised pay-per-click products”.

The Respondent’s only reason for registering and using the contested domain names is to benefit from the reputation of the trademark VALIUM and illegitimately trade on its fame for commercial gain and profit.

There is no reason why the Respondent should have any right or interest in such domain names.

A.3. The domain names were registered and are being used in bad faith

(Policy, paras. 4(a)(iii), 4(b); Rules, para. 3(b)(ix)(3))

The domain names were registered in bad faith since, at the time of the registrations i.e. for the domain name <valiuminformation.com> on November 23, 2004, for the domain name <purchasevalium.com> on November 19, 2004, and for the domain name <valiumdosage.com> on December 6, 2004, the defendant had, no doubt, knowledge of the Complainant’s well-known product/mark VALIUM.

The domain names are also being used in bad faith. This is obvious, since, when viewing the Internet-websites of the Respondent, copies of which have been provided to the Panel, one realizes that the Respondent is intentionally attempting (for commercial purpose) to attract Internet users to the Respondent’s websites, by creating a likelihood of confusion with the Complainant’s well-known mark as to the source, affiliation and endorsement of Respondent’s websites or of the products or services posted on or linked to the Respondent’s websites.

In the Respondent’s websites a link “Valium” appears, but it does not direct Internet users to any official website of the Complainant.

The use of the domain names at issue appears to be advertising links to websites promoting and/or offering products and services of third parties, especially in the pharmaceutical field, this being the business area of the Complainant. According to Gianfranco Ferre S.p.A. v. Unasi Inc., WIPO Case No. D2005-0622: “this use of the Domain Name (..) is unable to be considered as a bona fide use of the domain name in issue”.

The Respondent, by using the disputed domain names, is intentionally misleading the consumers and confusing them so as to attract them to other websites making them believe that the websites behind those links are associated or recommended by Complainant.

As a result, the Respondent may generate unjustified revenues for each click-through by on-line consumers of the sponsored links. The Respondent is, therefore, illegitimately capitalizing on the VALIUM trademark fame.

B. Respondent

The Respondent, having been duly notified of the Complaint and these proceedings, did not reply to the Complainant’s contentions or take any other part in them.

 

6. Discussion and Findings

To qualify for cancellation or transfer of the domain name at issue, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the domain name; and

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

In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

In accordance with paragraph 14(a) of the Rules, in the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the Panel, the Panel shall proceed to a decision on the Complaint; and (b) if a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences as it considers appropriate.

In accordance with paragraph 10(d) of the Rules, the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.

In previous UDRP cases in which the respondent failed to file a response, the panel’s decisions were based upon the complainant’s assertions and evidence, as well as inferences drawn from the respondent’s failure to reply. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064; and also Kцstritzer Schwarzbierbrauerei v. Macros-Telekom Corp, WIPO Case No. D2001-0936.

Nevertheless, the Panel must not decide in the Complainant’s favor solely based on the Respondent’s default (Cortefiel S.A. v. Miguel Garcнa Quintas, WIPO Case No. D2000-0140). The Panel must decide whether the Complainant has introduced elements of proof, which allow the Panel to conclude that its allegations are true.

A. Identical or Confusingly Similar

It is an established rule that, where a domain name incorporates a complainant’s registered mark, this is sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.

The domain names at issue incorporate the trademark VALIUM, which is owned and has been commercially used and promoted by the Complainant in and for the purposes of its business and the sale of its products as a trademark for many years. Furthermore, the Panel accepts and recognizes that the Complainant’s trademark VALIUM is well-known and has a good reputation in the pharmaceutical industry.

The Panel agrees with the Complainant’s contention that the addition of the suffixes “information”, “purchase” and “dosage” are descriptive and add no distinctiveness or source of origin elements whatsoever to the domain names at issue, which essentially incorporate the Complainant’s well-known trademark.

In view of this, the Panel finds that the domain names registered by the Respondent are identical or confusingly similar to the trademark VALIUM, in which the Complainant has clearly demonstrated, to the satisfaction of the Panel, that it has well-established and commercially valuable rights through registration and long exclusive commercial use.

B. Rights or Legitimate Interests

In order to determine whether the Respondent has any rights or legitimate interests in respect of the domain names at issue (paragraphs 3(b)(ix)(2) of the Rules and 4(c) of the Policy), attention must be paid to any of the following circumstances in particular but without limitation:

- Whether before any notice to the Respondent of the dispute, there is any evidence of the Respondent’s use of, or demonstrable preparations to use, the domain names or a name corresponding to the domain names in connection with a bona fide offering of goods or services;

- Whether the Respondent (as an individual, business, or other organization) has been commonly known by the domain names, even if the Respondent has acquired no trademark or service mark rights;

- Whether the Respondent is making a legitimate non-commercial or fair use of the domain names, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.

There is no evidence to show that the Respondent was acting in pursuance of any rights or legitimate interests when registering the domain names at issue. Indeed, in view of the notoriety of the Complainant’s trademark VALIUM and its product sold under that brand, the Respondent must have known, when registering the domain names at issue, that the Respondent could not have - or, indeed, claimed - any such rights or interests.

In particular, the Panel finds no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the domain names at issue in connection with a bona fide offering of goods or services. On the contrary, the Respondent has used the domain names at issue for websites that, through the use of the VALIUM links, give the impression of emanating from or being associated with the Complainant.

Likewise, no evidence has been adduced that the Respondent has commonly been known by the domain names; nor is making a legitimate non-commercial or fair use of the domain names; nor has the Respondent been authorized or licensed by the Complainant to use the Complainant’s well-known trademark VALIUM as part of the domain names at issue.

Furthermore, the adoption by the Respondent of domain names identical or confusingly similar to the Complainant’s trademark inevitably leads to the diversion of the Complainant’s consumers to the Respondent’s website (see further on this point below) and the consequential tarnishing of the Complainant’s trademark. In other words, the Respondent is trading for commercial gain on the good name and worldwide notoriety and reputation of the Complainant’s business and trademark and unfairly attracting to its own business and activities the substantial goodwill that the Complainant has established over many years throughout the world in its name and mark, sufficient evidence of which has been provided to the Panel, without any right or legal justification for doing so.

Therefore, the Panel concludes that the Respondent has neither rights to nor legitimate interests in the domain names at issue.

C. Registered and Used in Bad Faith

Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which prima facie constitute evidence of bad faith. However, this list is not exhaustive, but merely illustrative. See Nova Banka v. Iris, WIPO Case No. D2003-0366.

Paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:

“(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, 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 location or of a product or service on its website or location.”

Based on the evidence provided in the case file, the Panel agrees with the Complainant’s contention that the Respondent by registering the domain names at issue is trading on the Complainant’s valuable goodwill established in its trademark VALIUM over many years. Indeed, in the absence of any evidence to the contrary, of which none is forthcoming on the part of the Respondent, the Respondent’s registration of the domain names at issue would not appear to be accidental, but deliberate and calculated to exploit the Complainant’s renown in the pharmaceuticals’ field. This is reinforced by the sponsored links on the websites of the Respondent.

Again, by registering and using the domain names at issue incorporating the Complainant’s trademark, VALIUM, the Respondent is misleading Internet users and consumers into thinking that it is, in some way or another, connected, sponsored or affiliated with the Complainant and its business, or the Respondent’s activities are approved or endorsed by the Complainant, none of which, in fact, is the case.

The Respondent appears to be trading on the Complainant’s goodwill and reputation, which the Complainant has built up over many years. This, without any explanations by the Respondent to the contrary, of which none have been forthcoming, constitutes bad faith. See the case of eBay Inc. v. Sunho Hong, WIPO Case No. D2000-1633, where it was stated that:

“The Domain Name consists of the EBAY trademark plus the addition of the country name Korea. Because the Domain Name incorporates the identical EBAY trademark, a consumer or user of the Internet viewing a website located at the “www.ebaykorea.com” domain address would be likely to assume that the website or operator is somehow sponsored by or affiliated with eBay, when it is not.”

Furthermore, the fact that in the Respondent’s websites, copies of printouts of which have been provided to the Panel, a link to “Valium” appears, but does not refer Internet users to any official website of the Complainant, suggests bad faith. As also do the advertising links in the Respondent’s websites to other websites promoting and/or offering products and services of third parties.

Finally, the failure of the Respondent to file any answer to the present Complaint or otherwise participate in the present proceedings, in the view of the Panel, also shows bad faith on the part of the Respondent.

Therefore, for all the above reasons, the Panel concludes that the Respondent has registered and is using the domain name at issue in bad faith.

 

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 names <purchasevalium.com>, <valiumdosage.com> and <valiuminformation.com> be transferred to the Complainant.


Ian Blackshaw
Sole Panelist

Dated: February 27, 2006

 

Источник информации: https://www.internet-law.ru/intlaw/udrp/2006/d2006-0047.html

 

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