WIPO Domain Name Decision: D2005-1351

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

F. Hoffmann-La Roche AG v. Ashima Kapoor

Case No. D2005-1351

1. The Parties

1.1 The Complainant is F. Hoffmann-La Roche AG, of Basel, Switzerland.

1.2 The Respondent is Ashima Kapoor of New Delhi, India.

2. The Domain Names and Registrar

2.1 The disputed domain names <order-valium-online.com>, <valium-information.com>, <valium-tablet.com> are all registered with OnlineNic, Inc. d/b/a China-Channel.com.

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 28, 2005. On December 29, 2005, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the domain name at issue. On December 30, 2005, OnlineNic, Inc. d/b/a China-Channel.com 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”).

3.2 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 4, 2006. In accordance with the Rules, Paragraph 5(a), the due date for Response was January 24, 2006. No response was filed. Thus, the Center notified the Respondent’s default on January 26, 2006.

3.3 The Center appointed Jay Simon as the sole Panelist in this matter on February 2, 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.

3.4 At the request of the Panelist, the Center granted a short extension of time for the filing of the decision.

4. Factual Background

4.1 Complainant is one of the world’s largest pharmaceutical companies and operates, together with its affiliated companies, in over 100 countries. Complainant’s activities include research, development, and marketing of pharmaceutical products, diagnostics, and related health care products and services.

4.2 Complainant has registered the trademark VALIUM in many countries, and International Registration No. R250784 is representative of these registrations. The priority date for the mark is December 20, 1961.

4.3 The trademark VALIUM designates a sedative and anxiolytic drug belonging to the benzodiazepine family. This drug has been used widely and at one time was the best selling drug in the United States. For the purposes of this proceeding, this Panel considers the VALIUM trademark as a famous mark. In F. Hoffmann-LaRoche AG v. NetMarketing cc, WIPO Case No. D2005-1216, the Panel determined the VALIUM mark to be “well known and notorious”.

4.4 The disputed domain names were registered March 1, 2005.

4.5 The disputed domain names all resolve to the same on-line pharmacy website.

4.6 Respondent did not file a response in these proceedings and was notified of its default by the Center on January 26, 2006.

5. The Parties Contentions

A. Complainant

5.1 Complainant contends that each of the disputed domain names is confusingly similar to Complainant’s mark. Complainant further contends that the addition of the words “information” and “tablet” are merely descriptive and insufficient to distinguish the domain names from Complainant’s mark. Complainant further contends that the words “order” and “online” are also descriptive when added to Complainant’s VALIUM mark and also insufficient to distinguish the domain name from Complainant’s mark.

5.2 Complainant contends that VALIUM is a well-known and notorious mark and that notoriety increases the likelihood of confusion.

5.3 Complainant contends that it has not licensed, permitted, authorized or consented to the use of its mark by Respondent. Complainant further contends that Respondent is using the disputed domain names for commercial gain and with the purpose of capitalizing on the fame of the VALIUM mark.

5.4 Complainant further contends that a reseller does not have the right to incorporate the mark of another into a domain name of the reseller; that a registrant of a domain name resolving to an on-line pharmacy can have no legitimate interest in a domain name similar to another’s mark; and that the website for the on-line pharmacy sells products in competition with Complainant’s trademarked product. Thus, no good faith can be assumed by Respondent’s conduct utilizing domain names that are confusingly similar to Complainant’s mark.

5.5 Complainant contends that the disputed domain names were registered and are being used in bad faith. Complainant contends that, given the date of registration of the disputed domain names, Respondent must have been aware of Complainant’s well-known mark. Complainant further contends that the use of the disputed domain names is for intentionally attempting, for commercial purposes, to attract internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s well-known mark as to the source, sponsorship, affiliation, or endorsement of Respondent website.

5.6 Complainant requests that each of the disputed domain names be transferred to Complainant.

B. Respondent

5.7 Respondent has failed to respond to the Complainant and has not otherwise actively participated in these proceedings.

6. Discussion and Findings

6.1 These proceeding relate to three disputed domain names, all of which were registered by the Respondent. The Rules permit complaints related to multiple domain names registered by the same domain name holder, see the Rules, Paragraph 3(c).

6.2 The Policy as affected by the Rules and the Supplemental Rules provides specified remedies to trademark owners against registrants of domain names where the owner of the mark (Complainant) proves each of the following elements:

(a) the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(b) the registrant (Respondent) has no rights or legitimate interests in respect of the domain name; and

6.3 Complainant has the burden of proof, by a preponderance of the evidence, respecting each element noted above in Paragraph 6.2.

6.4 Respondent, having failed to respond in these proceedings, is in default, and in accordance with paragraphs 14(b) of the Rules, “the panel shall draw such inferences…as it considers appropriate”.

A. Identical or Confusingly Similar (Paragraph 4(a)(i) of the Policy)

6.5 The test for confusing similarity under the Policy is confined to comparing the trademark with the disputed domain names. When a disputed domain name incorporates, as here, the entirety of Complainant’s trademark – and a notorious and famous trademark – it is difficult, if not impossible, regardless of added terms to distinguish adequately the mark from the disputed domain names. The additional terms used in the disputed domain names are: “information”, “tablet”, and “order”…”online”. These are common terms of no significant value in distinguishing the famous mark VALIUM from the disputed domain names. See EAuto LLC v. Triple S Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047 and F. Hoffmann-LaRoche AG v. George McKennitt, WIPO Case No. D2005-1300. Additionally, the “.com” is simply the gTLD designation, a required part of an internet address and similarly of no significance in distinguishing the disputed domain names from Complainant’s mark.

6.6 This Panel finds that each of the disputed domain names is confusingly similar to Complainant’s trademark.

B. Lack of Rights or Legitimate Interests (Paragraph 4(a)(ii) of the Policy)

6.7 Paragraph 4(c) of the Policy lists three, non-exclusive methods for determining whether a respondent has rights or legitimate interests in a disputed domain.

6.8 In respect of demonstrating a respondent’s lack of rights or legitimate interests in a disputed domain name, the burden of proof rests with Complainant. However, where the Complainant having made the necessary assertions and providing evidence, it is incumbent upon the Respondent to come forward with evidence of its rights or legitimate interests in the disputed domain name, the Respondent being uniquely possessed of this evidence, if such evidence exists. Respondent has failed to present any evidence of its rights or legitimate interests in the disputed domain name, and such failure is tantamount to admitting the truth of Complainant’s assertions; See Do the Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624.

6.9 Of the factors listed in Paragraph 4(c) of the Policy, Respondent having failed to respond to the Complainant, there is no evidence that Respondent was commonly known by the disputed domain name. Indeed, Respondent’s registration of the disputed domain name is well after Complainant’s registration of its trademark.

6.10 Nor is there any evidence of fair use or non-commercial use on the part of Respondent. Indeed, Respondent is nothing more than a reseller of pharmaceutical products – products of Complainant and products of others some of which compete with Complainant’s trademarked product. Prior UDRP panels have handled a number of cases involving on-line pharmacies, where a domain name confusingly similar to a trademark is used to redirect internet users to an on-line pharmacy. These cases have invariably held that a seller does not have the right to incorporate a trademark into a confusingly similar domain name, nor does it gain rights by doing so. See Hoffmann-LaRoche Inc. v. #1 Viagra Propecia Xenical & More Online Pharmacy, WIPO Case No. D2003-0793. Further, the use of the disputed domain names to redirect internet users to an on-line pharmacy where drugs competitive with Complainant’s trademarked product are sold cannot be considered a bona fide use. Rather, Respondent is trading off the goodwill and reputation of Complainant’s VALIUM mark for Respondent’s pecuniary gain. Based on the evidence presented by Complainant and the fact that Respondent has not presented evidence to the contrary, this Panel finds that Respondent has no rights or legitimate interests in any of the disputed domain names.

C. Registration and Use in Bad Faith (Paragraph 4(a)(iii) of the Policy)

6.11 Paragraph 4(b) of the Policy indicates several non-exclusive methods for showing bad faith registration and use of a disputed domain name.

6.12 Regarding registration of the disputed domain names in bad faith, there is no doubt that Respondent was aware of the trademark VALIUM. Indeed, there could be no other reason for Respondent’s registration of any of the disputed domain names other than to use them to direct internet traffic to Respondent’s on-line pharmacy.

6.13 The disputed domain names all resolve to the same on-line pharmacy where a large variety of pharmaceutical products are sold in addition to Complainant’s trademarked product. The only conclusion that can be safely shown is that Respondent registered and is using the disputed domain names to trade off the reputation and goodwill Complainant has developed for its VALIUM product. This Panel finds that Respondent is using the confusingly similar disputed domain names in an attempt to attract, for commercial gain, internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s well-known mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Thus, Paragraph 4(b)(iv) of the Policy is satisfied and Respondent has registered and is using the disputed domain names in bad faith.

7. Decision

7.1 For all the foregoing reasons, in accordance with Paragraph 4(i) of the Policy and Paragraph 15 of the Rules, this Panel orders that the domain names <order-valium-online.com>, <valium-information.com>, and <valium-tablet.com> be transferred to Complainant.

Jay Simon
Sole Panelist

Dated: February 24, 2006