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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

F. Hoffmann-La Roche AG v. Dean Gagnon

Case No. D2007-1009

 

1. The Parties

The Complainant is F. Hoffmann-La Roche AG, of Basel, Switzerland, represented internally by Mr. Jerome Rhein.

The Respondent is Mr. Dean Gagnon, Calgary, Canada.

2. The Domain Names and Registrar

The disputed domain names <about-valium.info> and <about-xenical.info> are registered with Moniker Online Services, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 10, 2007. On July 19, 2007, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain names at issue. On July 16, 2007, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 July 18, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was August 7, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 8, 2007.

The Center appointed Angelica Lodigiani as the sole panelist in this matter on August 24, 2007. 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, along with its affiliated companies, is one of the world’s leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics and having global operations in more than 100 countries. The Complainant’s trademarks VALIUM and XENICAL are registered in many countries worldwide. Among these registrations are International registrations Nos. R250784 for VALIUM, dating back to October 20, 1961, and Nos. 612908 and 699154 for XENICAL, dating back to August 5, 1993.

VALIUM designates a sedative and anxiolytic drug belonging to the benzodiazepine family, which enabled Roche to build a worldwide reputation in psychotropic medications. The trademark XENICAL designates an oral prescription weight loss medication helping obese people lose weight and keep this weight off.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that the domain names <about-valium.info> and <about-xenical.info> are confusingly similar to the Complainant’s trademarks VALIUM and XENICAL because they incorporate these trademarks entirely.

Pursuant to Lilly ICOS LLC v. Levan Odilavadze, WIPO Case No. D2005-1140, “the addition of the generic word “about”[…] do not avoid confusion since at least some Internet users are liable to assume that the Domain Name identifies a website of or approved by the Complainant providing information about the Complainant’s product sold under the mark[…]”.

The trademark VALIUM enjoys reputation as it is demonstrated by the copies of the newspaper articles enclosed as Annex 6 to the Complaint. Said reputation increases the likelihood of confusion.

Moreover, the Complainant’s trademark registration is earlier than the domain name registrations.

The Complainant further contends that the Respondent has no rights or legitimate interest in the <about-valium.info> and <about-xenical.info> domain names because:

- The Complainant has exclusive rights over the VALIUM and XENICAL trademarks, as mentioned above and no license/permission/authorization/consent were ever granted to use VALIUM and/or XENICAL in the disputed domain names. Therefore the domain names at issue clearly allude to the Complainant;

- The Respondent uses the domain names for commercial gain and with the purpose of capitalizing on the fame of the Complainant’s trademarks VALIUM and XENICAL;

- The Respondent is using the domain names to redirect Internet users to the website http://searchportal.information.com, which is a search engine composed of sponsored links;

- According to Fox News, LLC v. Warren Reid, WIPO Case No. D2002-1085, “using the Domain Name to mislead users by diverting them to a search engine […] does not appear to be use in connection with a bona fide offering of goods or services and therefore legitimate”;

- The Respondent’s only reason in registering and using the contested domain names is to benefit from the reputation of the trademarks VALIUM and XENICAL and illegitimately trade on their fame for commercial gain.

Due to the above, there is no reason why the Respondent should have any right or interest in the <about-valium.info> and <about-xenical.info> domain names.

Finally, the Complainant contends that the domain names <about-valium.info> and <about-xenical.info> were registered and are being used in bad faith because:

- At the time of their registration, i.e., on June 18, 2007, the Respondent had knowledge of the Complainant’s product/marks VALIUM and XENICAL.

- When viewing the relevant websites, one realizes that by using the domain names as forwarding addresses to redirect Internet users to a search engine where links to third parties are displayed, the Respondent is intentionally attempting to attract, for commercial purpose, Internet users to its websites, by creating a likelihood of confusion with the Complainant’s marks as to the source, affiliation and endorsement of the Respondent’s websites or of the products or services posted on or linked to the Respondent’s websites;

- According to Fox News Network, LLC v. Warren Reid, WIPO Case No. D2002-1085, “the Respondent’s commercial use of the domain name to increase Internet traffic at a search engine (…) is evidence of bad faith under Policy, para. 4(b)(iv) and the use of the domain name is likely to result in consumer confusion as to the Complainant’s supposed affiliation with the search engine and its operator/s”;

- According to Axel Springer AG v. AUTOBILD:COM, WIPO Case No. D2005-0554, “redirection to a commercial directory is a form of use which […] occasionally allows the domain name owner to make some money”;

- 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 the Complainant;

- 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 fame of the Complainant’s trademarks VALIUM and XENICAL.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove each of the following elements in order to succeed in a UDRP proceeding: (i) that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the domain names <about-valium.info> and <about-xenical.info> are confusingly similar to the Complainant’s trademarks VALIUM and XENICAL, respectively. Only the second level domain names “about-valium” and “about-xenical” must be taken into account in the comparison with the Complainant’s trademarks. The top level domain name “.info” does not bear any relevance as it is a compulsory element of each domain name and does not have any source-indicating significance Hoffmann-La Roche Inc. v. UrProxy Domains, WIPO Case No. D2007-0456.

The disputed domain names include the Complainant’s trademarks entirely. The addition of the generic term “about” before the trademarks VALIUM and XENICAL does not affect a finding of a likelihood of confusion.

According to a number of WIPO UDRP decisions, the incorporation in a domain name of a distinctive trademark renders the domain name sufficiently similar to the trademark to give rise to a likelihood of confusion Lilly ICOS LLC v. John Hopking / Neo net Ltd., WIPO Case No. D2005-0694; VoiceStream Wireless Corporation v. Salem Zeto, d/b/a/ Pacific Wireless Communications, d/b/a/ prepaidcellularwide.com, WIPO Case No. D2002-0313.

Moreover, adding generic terms, like “about”, to domain names incorporating a known trademark, rather than eliminating a likelihood of confusion increase it because they reinforce the impression of an affiliation between the domain name and the Complainant Sanofi-aventis v. Tania Malik; WIPO Case No. D2006-0932; Sanofi-Aventis v. John Adams,WIPO Case No. D2006-0688; Sanofi-Aventis v. Direct Response Marketing aka DRM, WIPO Case No. D2005-0661; Viacom International Inc. v. Frank F. Jackson and Nancy Miller, WIPO Case No. D2003-0755.

By seeing the domain names, Internet users could believe that the relevant websites originate from the Complainant or are in any way connected to it and to its activity.

Therefore the Panel concludes that the first condition under paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

Proving a negative fact is always a very difficult task. The Policy, under paragraph 4(c), indicates a series of circumstances, which, if proved, demonstrate that the Respondent has rights or legitimate interests in the challenged domain names. The Respondent did not file any Response in this case. Accordingly, the Panel will consider whether the Complainant’s arguments are sufficient to show the Respondent’s lack of rights and legitimate interests in the disputed domain name.

Under paragraph 4(c) of the Policy, the following circumstances demostrate that a respondent has rights or legitimate interests in a challenged domain name:

(i) before any notice of the dispute, the Respondent used, or made 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 (as an individual, business, or other organization) has been commonly known by the domain name, even if it 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.

In the absence of any specific indication in this respect, there is no reason to believe that the Respondent is commonly known by the domain name.

According to the Complainant, the Respondent is not a Complainant’s licensee, nor has the Complainant ever authorized the Respondent to use the trademarks VALIUM and/or XENICAL in the disputed domain names. As it appears from Annexes 10 and 11 to the Complaint, the Respondent is using the domain names at issue to redirect Internet users to the website “http://searchportal.information.com”, which is a search engine composed of third parties’ links.

The use of a domain name comprising a third party’s renown trademark to redirect to a search engine consisting of third parties’ links, most probably for profit purposes, cannot be considered a use in connection with a bona fide offering of goods and services (See also Fox News Network, LLC v. Warren Reid, WIPO Case No. D2002-1085).

As a consequence, in the Panel’s view, the Respondent is not making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademarks at issue.

For all the reasons mentioned above, the Panel takes the view that the Respondent has no rights or legitimate interests in the domain names <about-valium.info> and <about-xenical.info>.

In consideration of the foregoing, the Panel is satisfied that the condition under paragraph 4(a)(ii) of the Policy is met.

C. Registered and Used in Bad Faith

The last condition that the Policy requires is provided under paragraph 4(a)(iii): i.e., that the domain names <about-valium.info> and <about-xenical.info> have been registered and are being used in bad faith.

In the Panel’s view, the Complainant satisfactorily proved that the disputed domain names were registered and are being used in bad faith.

As far as registration in bad faith is concerned, absent any Respondent’s contrary statement, the Panel takes the view that the Respondent knew or must have known the trademarks VALIUM and XENICAL and the Complainant’s activity at the time of the registration of the disputed domain names. The Respondent’s use of the disputed domain names in connection with a search engine displaying links to third parties’ websites where it is possible to buy VALIUM and XENICAL goods, as well as competing goods, suggests the Respondent knew of the Complainant’s products and trademarks.

Therefore, the Panel concludes that the Respondent registered the domain names <about-valium.info> and <about-xenical.info> in bad faith.

As far as use in bad faith is concerned, the Respondent is using <about-valium.info> and <about-xenical.info> to lead to search portals containing links to third parties’ websites selling VALIUM and XENICAL goods, as well as competing goods.

According to the Complainant, the Respondent is not a Complainant’s licensee or authorized dealer. Nor did the Complainant ever authorize the Respondent to use the Complainant’s trademark as part of a domain name. The Respondent did not rebut said allegations as it did not file a Response. Therefore, the Panel takes the view that the Complainant’s statements are correct.

Unauthorized use of a third party’s trademark as part of a domain name leading to a website offering for sale competing goods to the goods identified by said trademark should be considered a use in bad faith. (See also Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784).

Use of a third party’s trademark as part of a domain name to increase Internet traffic at a search engine and generate a revenue there from also suggests a use in bad faith. (See also Fox News Network LLC v. Warren Reid, WIPO Case No. D2002-1085.

In the Panel’s view, the use of the domain names <about-valium.info> and <about-xenical.info> as described above indicates that the Respondent registered the domain names primarily for the purpose of disrupting the Complainant’s business or to intentionally attempt to attract, for commercial gain, Internet users to the Respondent’s websites, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites.

Due to the above considerations, the Panel concludes that the domain names <about-valium.info> and <about-xenical.info> are being used in bad faith.

Therefore, the Panel finds that the Complainant has established also the third condition under paragraph 4(a)(iii) of the Policy.

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 <about-valium.info> and <about-xenical.info> be transferred to the Complainant.


Angelica Lodigiani
Sole Panelist

Dated: September 6, 2007

 

Источник информации: https://www.internet-law.ru/intlaw/udrp/2007/d2007-1009.html

 

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