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and Mediation Center
F. Hoffmann-La Roche AG v. Den
Case No. D2006-0182
1. The Parties
The Complainant is F. Hoffmann-La Roche AG, Basel, Switzerland.
The Respondent is Den, Riga, Balvu Apripkis, Latvia.
2. The Domain Name and Registrar
The disputed domain name <diazepam-valium-online.net> is registered with
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 10, 2006. On February 13, 2006, the Center transmitted by email to EstDomains, Inc. a request for registrar verification in connection with the domain name at issue. On February 15, 2006, EstDomains, Inc. transmitted by email to the Center its verification response, confirming that the domain name is registered with EstDomains, Inc. but informing the Center that the registrant and the administrative, billing and technical contact are different from the persons listed in the request. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an Amended Complaint on March 14, 2006. The Center verified that the Complaint together with the Amended 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 March 21, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was April 10, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 11, 2006.
The Center appointed Gerd F. Kunze as the sole panelist
in this matter on April 21, 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,
4. Factual Background
The Complainant is, together with its affiliated companies, one of the world’s leading pharmaceutical companies with operations in more than 100 countries. It is the registered owner of the trademark VALIUM in many countries worldwide. As an example, reference is made to International Registration No. R250784, with priority of October 20, 1961, for pharmaceutical products in class 5 of the International classification, covering over 30 countries (as evidenced by copies of the registration certificate and the renewal certificate).
The Respondent registered on January 13, 2005, the
domain name <diazepam-valium-online.net> which redirects users to a pornographic
website (“www.adult-pics.us”), as evidenced by the Complainant with
copy of the respective website.
5. Parties’ Contentions
The Complainant submits that the trademark VALIUM designates a sedative and anxiolytic drug belonging to the benzodiazepine family, which enabled the Complainant to build a world-wide reputation in psychotropic medications. The mark is internationally well-known. The Complainant has submitted copies of newspaper articles which were published between 2003 and 2005, evidencing the long lasting fame of the valium product after 40 years since its launch in 1963.
The Complainant, furthermore, submits that “diazepam” is the International Nonproprietary Name (INN) of the benzodiazepine derivative, sold by the Complainant under the trademark VALIUM.
The Complainant submits that (a) the domain name <diazepam-valium-online.net> is confusingly similar to its trademark VALIUM in which it has rights; it points out in this connection that the domain name of the Respondent incorporates its trademark in its entirety and that the addition of the INN “diazepam” and the descriptive term “online” does not sufficiently distinguish the domain name from its mark which is notorious; (b) the Respondent has no rights or legitimate interests in respect of the domain name; and, (c) the domain name was registered and is being used in bad faith.
The Respondent has failed to submit a Response. It
has therefore not contested the allegations of the Complaint and the Panel shall
decide on the basis of the Complainant’s submissions, and all inferences
that can reasonably be drawn therefrom (Rules, paragraph 14(b)).
6. Discussion and Findings
A. Identical or Confusingly Similar
The domain name <diazepam-valium-online.net> consists of a combination of the Complainant’s well-known trademark VALIUM with the INN “diazepam” and the descriptive term “online” (the gTLD “.net” cannot be taken into consideration when judging confusing similarity between the domain name and the Complainant’s trademark). Users will understand the addition “online” to the Complainant’s trademark in the sense that the VALIUM product is offered online at the Respondent’s website. The addition of the INN “diazepam” may be understood differently, depending on the knowledge of the Internet user. Users that are aware that “diazepam” is the INN of the VALIUM product, will be confirmed in their expectation that the VALIUM product is offered online. Users not knowing the term “diazepam” may understand that the term refers to another product, offered online together with the VALIUM product. Such or similar assumptions are linked to the VALIUM product, which clearly shows that the addition of the INN “diazepam” and the term “online” cannot exclude confusing similarity between the domain name and the trademark of the Complainant.
In conclusion, the domain name <diazepam-valium-online.net> is confusingly similar to the trademark VALIUM of the Complainant.
B. Rights or Legitimate Interests
The Respondent has no connection or affiliation with the Complainant, who has not consented to the Respondent’s use of the domain name.
Furthermore, none of the circumstances listed under paragraph 4(c) of the Policy, possibly demonstrating rights or legitimate interests, are given. The Respondent does not use the domain name for its own legitimate commercial or non-commercial activities, if any, and it has not demonstrated any preparations for such use. On the contrary, the domain name leads to a pornographic website with sponsored links and pop-ups to other pornographic websites. Even if the Respondent does not use its domain name to promote commercial activities of its own, the Panelist is satisfied that providing a link to such websites cannot be considered to be non-commercial. It would make no sense for the Respondent to provide a link to a pornographic website, if it were not to attract a fee, the more so as such arrangements are common. Therefore, the Respondent’s use of the domain name <diazepam-valium-online.net> is commercial, but cannot be considered to be a bona fide offering of goods or services. Finally, for the same reason that the Respondent apparently does not promote its own commercial activities with the help of the domain name <diazepam-valium-online.net>, the Respondent has not been able to become known under that name.
In the absence of any submission of the Respondent, the Panel therefore concludes that the Respondent has no rights or legitimate interests in the domain name.
C. Registered and Used in Bad Faith
Even if the Respondent has not responded to the Complaint, the Complainant has to prove under the Policy that the Respondent has registered and is using the domain name in bad faith.
Paragraph 4(b)(iv) of the Policy lists as one of the typical situations as evidence of registration and use in bad faith that, by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website.
The Complainant has submitted facts and evidence that the Respondent has fulfilled the conditions set out in paragraph 4(b)(iv). There can be no doubt that the Respondent knew the product, sold under the Complainant’s trademark VALIUM, when it registered the domain name. Otherwise, the Respondent would not have been aware of the INN “diazepam” and could not have had the idea to combine the Complainant’s trademark VALIUM with that INN. This alone is prima facie evidence of registration in bad faith and the Respondent has failed to argue against this assumption.
As said before, the Respondent uses the domain name
<diazepam-valium-online.net> for a link to a pornographic website. Thus,
it directs visitors to this website. By such use the Respondent intentionally
attempts to attract Internet users expecting to arrive at a website of the Complainant,
to another online location, by creating a likelihood of confusion with the Complainant’s
mark as to the source, sponsorship, affiliation, or endorsement of that location.
That behavior is detrimental to the reputation of the Complainant’s mark.
The fact that such confusion may be dispelled, and replaced by annoyance or
disgust once the nature of the site is revealed, does not negate the fact of
initial confusion, as has rightly been concluded in the decision Royal Bank
of Canada v. Personal, WIPO Case No. D2001-0761.
In the absence of any submission of the Respondent,
the Panel has no doubt that the Respondent made that use of his domain name
for commercial gain. Thus, it was pursuing an activity, which must be considered
to be bad faith under the Policy. Even if one interprets paragraph 4(b)(iv)
of the Policy to refer to the website or other location of the Respondent, whilst
the Respondent uses its domain name primarily in order to revert the visitor
to other websites, the Panel considers the circumstances of the case to be evidence
of registration and use in bad faith, at least comparable to the circumstances
listed in paragraph 4(b)(iv) of the Policy. If one considers the website, which
appears when an Internet user types the Respondent’s domain name, to be
“an other on-line location”, the Respondent’s activity clearly
was covered by paragraph 4(b)(iv). Be that as it may, the circumstances as listed
in paragraph 4(b)(i) to (iv) are not exhaustive and the Panelist is satisfied
that the pattern developed by the Respondent is evidence of registration and
use in bad faith. This is confirmed by many decisions of UDRP panels finding
that the diversion of a domain name to a pornographic site is itself consistent
with the finding that the domain name was registered and is being used in bad
faith (Six Continents Hotels, Inc. v. Seweryn Nowak, WIPO
Case No. D2003-0022, with references).
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, <diazepam-valium-online.net>, be transferred to the Complainant.
Gerd F. Kunze
Date: May 3, 2006