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and Mediation Center
F. Hoffmann-La Roche AG v. Angelo Duca
Case No. D2006-0132
1. The Parties
The Complainant is F. Hoffmann-La Roche AG, Basel, Switzerland, represented by an internal representative.
The Respondent is Angelo Duca, Maple, Ontario, Canada.
2. The Domain Name and Registrar
The disputed domain name <overnightvalium.com> is registered with Wild
West Domains, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 31, 2006. On January 31, 2006, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the domain name at issue. On January 31, 2006, Wild West Domains, Inc. 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 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 February 6, 2006. In accordance with the Rules, paragraph 5(a), the due date for the Response was February 26, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 28, 2006. The Respondent then made brief email contact with the Complainant through the Center on February 28, 2006, but did not submit any formal response.
The Center appointed Clive N. A. Trotman as the sole
panelist in this matter on March 9, 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, according to the documentation it has provided, is an internationally famous manufacturer of pharmaceuticals and diagnostics, having operations globally in more than one hundred countries.
Since 1961, the Complainant has owned the trademark VALIUM, which is registered in over one hundred countries worldwide. The drug is one of the world’s most successful and widely prescribed sedative and anxiolytic drugs (tranquilizers), belonging to the benzodiazepine chemical family.
The Complainant has a world wide reputation in the field of psychotropic medications and has frequently been the subject of media articles, a number of which were provided to the Panel.
The Respondent registered the domain name <overnightvalium.com> on July
5. Parties’ Contentions
The Complainant contends that the dispute is properly within the scope of the Policy. The registration agreement, pursuant to which the domain name being the subject of this Complaint was registered, incorporates the Policy by reference.
The Complainant owns the registered trademark VALIUM, which is well-known and notorious. Evidence of International Registration No. R250784 dated December 20, 1961, is submitted.
The Complainant contends that the disputed domain name is confusingly similar to the trademark VALIUM in which it has rights. The domain name incorporates the trademark in its entirety and the prefix “overnight” is not distinguishing. The registration of the Complainant’s trademark considerably predates the registration of the domain name.
The Complainant contends that it has exclusive rights to the trademark VALIUM
and there is no reason that the Respondent should have any right or interest.
The Complainant has not authorized the Respondent to use the trademark. By registering
and using the disputed domain name the Respondent has traded on the Complainant’s
goodwill and has used the trademark for commercial gain. The Respondent does
not use the domain name for a legitimate purpose but to direct Internet users
to the website at <roofo.com>, which is a search engine with sponsored
links. This cannot be a legitimate interest (Alex Springer AG v. AUTOBILD.COM,
WIPO Case No. D2005-0554).
The Complainant contends that the disputed domain name was registered and is being used in bad faith. The Respondent had constructive knowledge of the Complainant’s trademark when the disputed domain name incorporating it was registered in 2004. The Respondent’s website attracts Internet users who would be looking for the Complainant’s well-known trademark, thereby creating a likelihood of confusion as to the source, affiliation or endorsement of the Respondent’s website or of products or services portrayed on or linked to the website.
The Complainant’s business is disrupted because users attracted to the
Respondent’s website who then look for information relevant to VALIUM
can be conveyed to sites offering products intended to compete with VALIUM,
or competing non-medicinal treatments for anxiety. This type of activity is
evidence of bad faith (AllenEdmonds Shoe Corporation v. allenedmunds,
WIPO Case No. D2004-0631).
The Complainant requests that the disputed domain name <overnightvalium.com> be transferred to the Complainant.
No formal response has been received and the Respondent has not contested the
allegations of the Complainant. In a brief email the Respondent constructively
acknowledged the proceeding and said that the Complainant could have the disputed
domain name, but did not reply to further enquiry.
6. Discussion and Findings
Jurisdiction of the Administrative Panel
Paragraph 4(a) of the Policy states:
“You are required to submit to a mandatory administrative proceeding in the event that a third party (a ‘complainant’) asserts to the applicable Provider, in compliance with the Rules of Procedure, that:
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainant has made the relevant assertions as above. This dispute is properly within the scope of the Policy and the Administrative Panel has jurisdiction to decide the dispute.
Whether the Domain Name is Identical or Confusingly Similar to a Trademark
The Complainant provides documentary evidence to the effect that it has registered and used the trademark VALIUM in numerous countries worldwide since 1961. Further evidence substantiates that the trademark and the product for which it stands are well-known and notorious. The Complainant clearly has rights in the trademark VALIUM, which the disputed domain name <overnightvalium.com> entirely incorporates. The domain name is not, however, the same as the trademark since it incorporates the prefix “overnight” and the suffix “.com”.
It has long been accepted in precedent that the gTLD suffix “.com”, being an integral part of the domain name, has no bearing on the question of confusing similarity.
The adaptation of another party’s trademark to make a domain name by
the addition of extra words or letters has seldom circumvented a finding of
confusing similarity with the trademark. In Sanofi-Aventis v. Conciergebrain.com,
WIPO Case No. D2005-0660, which related
to the insomnia medication trademark AMBIEN, the domain names <ambien-overnight.info>,
<ambien-overnight.org> and eleven others (such as <cheap-ambien-sleeping-pill.com>)
were found to be confusingly similar to the trademark. The Panelist in that
case drew parallels with another similarly-decided case concerning comparable
adaptations of the drug trademark ACOMPLIA (Sanofi-Aventis v. US-Meds.com,
WIPO Case No. D2004-0809).
Since pharmaceuticals are by their nature often required acutely and ordered with the expectation of rapid delivery, the prefix “overnight” not only fails to detract from any confusing similarity but compounds it by projecting an image of prompt shipment from the manufacturer or an authorized agency. The Panel finds the disputed domain name to be confusingly similar to the Complainant’s trademark in the terms of paragraph 4(a)(i) of the Policy.
Whether Respondent has Rights or Legitimate Interests in Respect of the Domain Name
The Complainant has to prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant certifies that it has not licensed the Respondent to use the trademark in question, nor entered into any relationship that could give the Respondent any right or interest in the trademark, and that there is no reason why the Respondent could have any right or interest. A prima facie case is thereby shown to the effect that the Respondent does not have any right or legitimate interest in the disputed domain name.
The Respondent has not refuted the Complainant’s assertions in terms
of paragraph 4(c) of the Policy or in any other way by attempting to establish
a right or legitimate interest in respect of the domain name. The Respondent
does not claim to have used the domain name or a name corresponding to the domain
name in connection with a bona fide offering of goods or services; or
to have been commonly known by the domain name; or to have made a legitimate
noncommercial or fair use of the domain name. The Respondent has not made any
claim to legitimate use of the trademark in the domain name for purposes of
trade, which would in any case require the consent of the trademark owner (AVENTIS
Pharma S.A. and Merrell Pharmaceuticals Inc. v. Rx USA, WIPO
Case No. D2002-0290).
The Panel finds that the Respondent does not have a legitimate interest in the domain name in the terms of paragraph 4(a)(ii) of the Policy.
Whether the Domain Name Has Been Registered and Is Being Used in Bad Faith
In accordance with paragraph 4(a)(iii) of the Policy the Complainant must prove that the domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four circumstances, without limitation, that shall be evidence of the registration and use of a domain name in bad faith. Paragraphs 4(b)(iii) and (iv) provide for a finding of bad faith where:
“(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”
The evidence makes clear that the Respondent uses the website associated with the disputed domain name to lead users to a search engine, being effectively an advertising business, and it may reasonably be concluded that the Respondent profits indirectly or directly for these referrals. Potential customers of the Complainant are offered products alternative to and in competition with VALIUM, including purported treatments other than pharmaceuticals, such as dietary supplements or behavioral programs. The Respondent has appropriated the Complainant’s trademark and disrupted the Complainant’s business with the primary purpose of competing for its potential customers. The Panel finds bad faith proven in terms of Paragraph 4(b)(iii) of the Policy.
The Respondent’s device just described depends on Internet users being likely to be confused into thinking that the products and services associated with or linked to the disputed domain name are endorsed by the Complainant. It may reasonably be concluded that the Respondent derives commercial benefit from this confusion. The Panel finds bad faith proven additionally in terms of paragraph 4(b)(iv) of the Policy.
The provisions of paragraph 4(b) of the Policy are without limitation. Registration
of a well known trademark of which the Respondent must have been aware and without
any conceivable reason to do so has commonly been held to be a ground for a
finding of bad faith (Veuve Clicquot Ponsardin, Maison Fondйe en 1772 v.
The Polygenix Group Co., WIPO Case No. D2000-0163;
Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net,
WIPO Case No. D2000-0226; Sociйtй des
Hфtels Mйridien v. LaPorte Holdings, Inc., WIPO
Case No. D2004-0849). The Respondent’s activity in causing people
seeking VALIUM to be referred to competing remedies leaves no room for doubt
that the Complainant’s famous trademark was targeted knowingly and intentionally.
The Panel finds bad faith proven additionally in this respect.
In summary, the Panel is satisfied that the disputed domain name is identical
to the Complainant’s trademarks in the terms of paragraph 4(a)(i) of the
Policy; the Respondent has no rights or legitimate interests in the domain name
in the terms of paragraph 4(a)(ii) of the Policy; and the Respondent has registered
and is using the domain name in bad faith in the terms of paragraph 4(a)(iii)
of the Policy. The Complainant has proven the three elements required by paragraph 4(a)
of the Policy and accordingly the Administrative Panel decides for the Complainant.
The Decision of the Administrative Panel is that the disputed domain name <overnightvalium.com> is confusingly similar to the trademark VALIUM in which the Complainant has rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the Respondent has registered and is using the disputed domain name in bad faith. In accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <overnightvalium.com> be transferred to the Complainant.
Clive N. A. Trotman
Dated: March 23, 2006