WIPO Domain Name Decision: D2007-1046

WIPO

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

F. Hoffmann-La Roche AG v. Vesela Liyahova

Case No. D2007-1046

1. The Parties

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

The Respondent is Vesela Liyahova, Sofia, Bulgaria.

2. The Domain Names and Registrar

The disputed domain names <valiumovernight.info>, <xenicalovernight.info> and <xenical-rx.info> are registered with Directi Internet Solutions d/b/a PublicDomainRegistry.Com

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 17, 2007. On July 20, 2007, the Center transmitted by email to Directi Internet Solutions d/b/a PublicDomainRegistry.Com a request for registrar verification in connection with the domain names at issue. On July 24, 2007, Directi Internet Solutions d/b/a PublicDomainRegistry.Com 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 26, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was August 15, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 16, 2007.

The Center appointed Fabrizio Bedarida as the sole panelist in this matter on September 7, 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. Due to problems in the electronic transmission of the case file to the Panel, the date for rendering the decision was postponed from September 21, 2007 to September 27, 2007.

4. Factual Background

Complainant together with its affiliated companies is one of the world’s leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics and having operations in a large number of countries.

Complainant’s marks VALIUM and XENICAL are protected trademarks. As an example Complainant submitted copy of the registration certificates for International Registration No. R.250784 (in connection with VALIUM) and International registrations No. 612908 and 699154 (in connection with XENICAL). First registration for VALIUM dates back to December 20, 1961 while for XENICAL it dates back to August 5,1993.

Complainant’s trademark registrations and use predate Respondent’s registration of the disputed domain names.

5. Parties’ Contentions

A. Complainant

Complainant claims that:

1) The Domain Names are confusingly similar to Complainant’s registered trademarks VALIUM and XENICAL;

2) Respondent has no legitimate interest in the Domain Names and is not authorized by the Complainant to use the marks or names VALIUM and/or XENICAL;

3) The mark VALIUM is well-known and renowned. The renown increases the likelihood of confusion;

4) Respondent uses the disputed domain names for commercial gain and with the purpose of capitalizing on the fame of the Complainant’s marks VALIUM and XENICAL;

5) Respondent’s websites are search engines which provide links to articles about VALIUM and/or XENICAL;

6) The disputed domain names were registered in bad faith since at the time of the registrations i.e. 30^th January 2007, Respondent had no doubt knowledge of the Complainant’s products and marks VALIUM and XENICAL;

7) The disputed domain names are used in bad faith since Respondent is intentionally attempting for commercial purpose to attract Internet users to Respondent’s websites, by creating a likelihood of confusion with the Complainant’s marks as to the source, affiliation and endorsement of Respondent’s websites.

B. Respondent

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

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the domain names registered by the Respondent be transferred to the Complainant:

1) the domain names are identical or confusingly similar to a trademark or service mark (“mark”) in which the Complainant has rights; and

2) the Respondent has no rights or legitimate interests in respect of the domain names; and

3) the domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has established that it has rights in the trademarks VALIUM and XENICAL for pharmacy services. Even though more relevant under the second and third element of the Policy, the Panel notes that the Complainant’s trademark registrations predate the registration of the disputed domain names.

The Complainant claims that the addition of the word “rx” as well as the word “overnight” to the names XENICAL and VALIUM respectively, is not enough to avoid the likelihood of confusion. To this end, Complainant quotes Lilly ICOS LLC v. The Counsel Group, LLC , WIPO Case No. D2005-0042, where it was affirmed that:

“The Domain Name comprises the mark CIALIS, plus the words “get” and “rx”, and two hyphens. These additional words and symbols do nothing to obviate the confusing similarity between the Domain Name and the Complainant’s mark. CIALIS is a highly distinctive identifier of the source of the Complainant’s product, with a strong international reputation, and it is the only distinctive part of the Domain Name. A Domain Name which incorporates a distinctive mark in its entirety frequently creates sufficient similarity between the mark and the domain name to render it confusingly similar: EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047. The words “get” and “rx” only compound the confusion with the Complainant’s mark. “Rx” appears to be a transliteration of the symbol (℞). The Panel understands that this symbol is commonly associated with medical prescriptions. The impression given by the Domain Name is therefore that an Internet user can obtain the Complainant’s product, which has the quality of being a prescription drug, at the Respondent’s website. In all those circumstances, the Panel has no difficulty in concluding that the Domain Name is confusingly similar to the Complainant’s CIALIS mark.”

F. Hoffmann-La Roche AG v. Angelo Duca, WIPO Case D2006-0132 where the finding was that:

“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.”

This Panel agrees with the Complainant’s thesis and the above quoted previous decisions, it therefore finds the disputed domain names confusingly similar to Complainant’s trademarks.

B. Rights or Legitimate Interests

The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The respondent in a UDRP proceeding does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:

a) that before any notice to the respondent of the dispute, he or she used or made 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;

b) that the respondent is commonly known by the domain name, even if he or she has not acquired any trademark rights; or

c) that the respondent intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.

The Respondent has no connection or affiliation with the Complainant, who has not licensed or otherwise authorized Respondent to use or apply for any domain name incorporating Complainant’s trademarks. Respondent has not alleged any facts or elements to justify prior rights and/or legitimate interest in the disputed domain names. Respondent does not appear to make any legitimate use of the domain names for non-commercial activities. On the contrary, it appears that Respondent’s websites are search engines which provide links to articles about VALIUM and/or XENICAL, links how to purchase these products and links to third party products.

Accordingly, the Panel finds that the Complainant has satisfied the burden of proof with respect to paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or

ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or

iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s web site or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s web site or location or of a product or service on the holder’s web site or location.

Accordingly, for a Complainant to succeed, the Panel must be satisfied that the domain name has been registered and is being used in bad faith.

As regards Respondent’s use of the domain names, it appears that Respondent’s websites are used as forwarding addresses to redirect Internet users to a search engine where links to third parties are displayed. By deflecting users, the Respondent has shown bad faith use of the domain name that clearly falls within the example given in paragraph 4(a)(iv) of the Policy: “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product or service on your web site or location”.

From the contents which relate to Complainant’s field of activity, set by Respondent on the websites “www.xenical-rx.info“, “www.xenicalovernight.info“ and “www.valiumovernight.info“,an inference may be made of Respondent’s knowledge of Complainant’s trademarks and activity at the time he applied for the disputed domain names. In Credit Industriel et Commercial S.A., Banque Scalbert Dupont S.A. v. La Porte Holdings, Inc., WIPO Case No. D2004-1110, was affirmed “It is obvious, mainly from the categories of hyperlinks used by the Respondent on the litigious websites (banking and financial), that the latter was well aware of both Complainant’s identity and activities.”

Of the fact that Respondent registered three domain names corresponding to two different registered trademarks of the Complainant, further inference can be made that Respondent had actual knowledge of Complainant’s activity and trademarks.

In view of the above, considering the renown of Complainant’s trademarks and in the absence of contrary evidence, the Panel finds that the Respondent most likely had actual knowledge of Complainant’s trademarks when he registered the disputed domain names. The Panel, in accordance with previous decisions issued under the UDRP, is of the opinion that actual knowledge of Complainant’s trademark and activities at the time of the registration of the disputed domain names may be considered an indication of bad faith (See Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226 and, Sony Kabushiki Kaisha also trading as Sony Corporation v. Inja, Ki, WIPO Case No. D2000-1409 “It is inconceivable that the Respondent could make any active use of the disputed domain name without creating a false impression of association with the Complainant. The Respondent was not authorized by the Complainant to use neither its mark nor the disputed domain name”.

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 disputed domain names <xenical-rx.info>, <xenicalovernight.info> and <valiumovernight.info> be transferred to the Complainant.

Fabrizio Bedarida
Sole Panelist

Dated: September 27, 2007