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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

F. Hoffmann-La Roche AG v. Ve Patel

Case No. D2006-0096

 

1. The Parties

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

The Respondent is Ve Patel, Ludhiana, India.

 

2. The Domain Name and Registrar

The disputed domain name <valium-web.com> is registered with Gandi SARL.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 23, 2006. On January 23, 2006, the Center transmitted by email to Gandi SARL a request for registrar verification in connection with the domain name(s) at issue. On January 24, 2006, Gandi SARL transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. 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 27, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was February 16, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 17, 2006.

The Center appointed Ian Blackshaw as the sole panelist in this matter on February 23, 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. 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 name of the Respondent is confusingly similar to the Complainant’s mark in that it incorporates this mark in its entirety.

The addition of the term “web” to the Complainant’s trademark does not sufficiently distinguish the Respondent’s domain name from the Complainant’s trademark.

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

Furthermore, the Complainant’s use and registration of the mark VALIUM both predate the Respondent’s registration of the Domain Name.

Therefore, the domain name is confusingly similar to the trademark of the Complainant.

B. The Respondent has no rights or legitimate interests in respect of the domain name;

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

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

Therefore, the domain name in question clearly alludes to the Complainant.

The Respondent’s website is a pharmacy on-line which does not sell VALIUM but only “generic Valium” (diazepam) which directly competes with Complainant’s genuine product VALIUM.

By clicking “Xanax”, Internet users are also redirected to another Respondent’s website (“ www.xanax-net.com“), a print out of which has been provided to the Panel, where they can buy “generic Xanax” (alprazolam).

According to the Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784: “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”.

According to the Pfizer Inc. v. David Lavery, WIPO Case No. D2004-0581: “no good faith can be assumed in Respondent’s conduct, in view of the fact that the Domain Name is confusingly similar with Complainant’s trademark and is used in connection with the promotion and sale of competing products”.

Furthermore, the Respondent’s website provides a link to the Complainant’s website ( www.roche.com) and according to the BellSouth Intellectual Property Corporation v. Michele Dinoia, WIPO Case No. D2004-0486: “it would be difficult to presume that the Respondent did not know about the Complainant’s rights when he provided a direct link to the Complainant’s website on his own website. The Panel finds that this fact is sufficient in itself to show that the Respondent, even if he has used the Domain Name, has not done it in connection with a bona fide offering of goods or services”.

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

C. The domain name was registered and is being used in bad faith;

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

The domain name was registered in bad faith, since, at the time of the registration, i.e. on February 16, 2005, the defendant had, no doubt, knowledge of the Complainant’s well-known product/mark VALIUM.

The domain name is also being used in bad faith. This is obvious since, when viewing the Internet-website of the Respondent, one realizes that the Respondent is intentionally attempting (for commercial purpose) to attract Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s well-known mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

When one views the Respondent’s website, one has the first feeling that it is possible to buy “Valium” and “generic Valium”, but the only drug that is really possible to get on the website is “generic Valium”. The use of the words “buy Valium”; all the information given about “Valium” (e.g. history, use, side-effects); the description of the VALIUM tablets; and the use of the Complainant’s name and logo ROCHE all increase the confusion with the Complainant’s well-known mark..

According to the Pfizer Inc v. Juan Gonzales, WIPO Case No. D2004-0589, the fact that the Respondent has been using the domain name to promote and sell for commercial gain “generic Valium” and indirectly also “generic Xanax”, which directly compete with Complainant’s genuine VALIUM, “is further evidence of Respondent’s bad faith registration und use of the Domain Name under paragraph 4(c) (iii) of the Policy”.

And according to the above-mentioned WIPO Case No.D2004-0486 (cited in paragraph B above): “supporting a finding of bad faith is the fact that the Respondent provided a direct link from his website to the Complainant’s website”.

Furthermore, by directing Internet users to an on-line pharmacy, which sells pharmaceuticals without requiring proof of a physical examination by a physician, the use of the domain name <valium-web.com> is potentially harmful to the health of Internet users, who purchase products under the mistaken impression that they are dealing with the Complainant.

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

A number of prior UDRP panels have held 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 name at issue incorporates 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 to and has a good reputation in medical circles.

The Panel agrees with the Complainant’s contention that the addition of the suffix “ –web” is descriptive and adds no distinctiveness or source of origin elements whatsoever to the domain name at issue, which essentially incorporates the Complainant’s well-known trademark.

In view of this, the Panel finds that the domain name registered by the Respondent is 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 name (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 name or a name corresponding to the domain name 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 name, 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 name, 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 name 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 name at issue, that the Respondent could not have - or, indeed, claim - 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 name at issue in connection with a bona fide offering of goods or services. On the contrary, the Respondent has used the domain name at issue for a website that purports to be and gives the impression of emanating from the Complainant.

Likewise no evidence has been adduced that the Respondent has commonly been known by the domain name; nor is making a legitimate non-commercial or fair use of the domain name; 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 name at issue.

Furthermore, the adoption by the Respondent of a domain name identical 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 name 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 name 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 name 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 link on the website of the Respondent to an on-line pharmacy.

Again, by registering and using the domain name 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 Panel agrees with the Complainant’s contention that the use by the Respondent of the domain name at issue, and especially the suggestion that the Complainant’s product VALIUM can be purchased through the Respondent’s website when, in fact, the only product available is “generic Valium”, as well as the prominent use (as the heading of the Respondent’s website) of the same logo as the Complainant, namely ROCHE, in connection with the words “Brand name Valium is made by Roche”, is misleading and potentially harmful to the health of Internet users and consumers, who may purchase the Respondent’s product under the mistaken impression that they are dealing with and purchasing a product of the Complainant, who also owns and operates its own website under “www.roche.com“, is further cogent evidence of bad faith on the part of the Respondent.

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 name <valium-web.com> be transferred to the Complainant.


Ian Blackshaw
Sole Panelist

Dated: February 24, 2006

 

Источник информации: https://www.internet-law.ru/intlaw/udrp/2006/d2006-0096.html

 

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