WIPO Domain Name Decision: D2007-0746

WIPO

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

F. Hoffmann-La Roche AG v. Hua Jianmin

Case No. D2007-0746

1. The Parties

Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented by an internal authorized representative.

Respondent is Hua Jianmin of Jiangsu, China.

2. The Domain Names and Registrar

The disputed domain names <buy-valiumonline.org>; <onlinepharmacyvalium.org>; <valiumeffects.org>; and <valiumoverdose.org> are registered with EstDomains, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 22, 2007. On May 24, 2007, the Center transmitted by email to EstDomains, Inc. a request for registrar verification in connection with the domain names at issue. On June 5, 2007, EstDomains, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on June 7, 2007. 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 Respondent of the Complaint, and the proceedings commenced on June 11, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was July 1, 2007. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 3, 2007.

The Center appointed Susanna H.S. Leong as the sole panelist in this matter on July 19, 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. The Panel is satisfied that the Center has taken all reasonable steps to ensure the notification of the Complaint to Respondent.

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. It has business operations in more than 100 countries. Complainant is the owner of the mark VALIUM which is protected as a registered trademark in a multitude of countries worldwide. The priority date of the VALIUM mark is October 20, 1961.

The mark VALIUM designates a sedative and anxiolytic drug belonging to the benzodiazepine family. Complainant has built up a world-wide reputation in psychotropic medications in the VALIUM mark.

5. Parties’ Contentions

A. Complainant

Identical or Confusingly Similar

Complainant contends that the disputed domain names are confusingly similar to the Complainant’s VALIUM mark as they all incorporate this mark in its entirety. The addition of the descriptive word “online” and of words related to the pharmaceutical activity of Complainant such as “effects”, “overdose” or “pharmacy” does not sufficiently distinguish the domain name from the Complainant’s mark. See Lilly ICOS LLC v John Hopkins/Neo net Ltd, WIPO Case No. D2005-0694; Sanofi-aventis v. Elizabeth Riegel and Andrew Riegel, WIPO Case No. D2005-1045.

Complainant further contends that the mark VALIUM is well-known and notorious and the notoriety of the mark will increase the likelihood of confusion. Complainant also contends that its use and registration of the mark VALIUM predate Respondent’s registration of the disputed domain names.

Rights or Legitimate Interests

Complainant contends that Respondent has no rights or legitimate interests in respect of the domain names on the following grounds:

- That Complainant has exclusive rights to the mark VALIUM and no licence/permission/authorization or consent was granted to Respondent to use the mark VALIUM in the domain names;

- That the domain names clearly allude to Complainant; and

- That Respondent’s only reason in registering and using the disputed domain names is to benefit from the reputation of the mark VALIUM and illegitimately trade on its fame for commercial gain and profit.

Registered and Used in Bad Faith

Complainant contends that the disputed domain names were registered and are being used in bad faith on the following grounds:

- That at the time of registration of the disputed domain names, Respondent had undoubtedly knowledge of Complainant and its well-known mark VALIUM;

- That the disputed domain names are being used in bad faith as it is clear from contents of the Respondent’s websites that it is intentionally attempting for commercial purpose to attract Internet users to the its websites by creating a likelihood of confusion with Complainant’s well-known mark 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;

- That the use of the disputed domain names are advertising links to websites promoting and/or offering products and services of third parties, especially in the pharmaceutical field being the business of Complainant;

- That 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 Complainant;

- That Respondent by so using the disputed domain names may generate unjustified revenues for each click-through by online consumers of the sponsored links and it is therefore illegitimately capitalizing on the Complainant’s VALIUM trademark fame.

B. Respondent

Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, the Complainant must establish that each of the three following elements is satisfied:

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

2. the Respondent has no rights or legitimate interests in respect of the domain name; and

3. the domain name has been registered and is being used in bad faith.

Paragraph 4(a) of the Policy clearly states that the burden of proof lies with Complainant to establish that all these three elements are satisfied in this proceeding.

Pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.

On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy, (paragraphs 4(a), (b), (c)), the Panel concludes as follows:

A. Identical or Confusingly Similar

Complainant has produced substantial evidence to demonstrate that it has registered trademark rights in the mark VALIUM in many countries throughout the world. The Panel finds that Complainant has rights in the mark VALIUM.

In assessing the degree of similarity between the Complainant’s trademark and the disputed domain names, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements. The issue of degree of similarity between the Complainant’s mark and the disputed domain names is to be considered from the perspective of the average consumer of the goods or services concerned and in this case, the average consumer is the Internet user seeking to purchase or download information about the Complainant’s pharmaceutical products sold under the trademark VALIUM. When a domain name wholly incorporates a complainant’s registered mark that may in some cases be sufficient of itself to establish that the domain name is identical or confusingly similar for the purpose of the Policy.

In the present case, the disputed domain names are constituted by (a) an exact reproduction of the Complainant’s trademark VALIUM; (b) various different English words such as “online”; “pharmacy”; “buy”; “overdose”; and “effects” and finally (c) the top level domain suffix “.org” all in one continuous word. The Complainant’s mark has been reproduced in its entirety in the disputed domain names. The Panel accepts the Complainant’s contention that the addition of English words as “online”; “pharmacy”; “buy”; “overdose”; and “effects” to the mark VALIUM do not provide additional specification or sufficient distinction from Complainant or its trademark VALIUM. In fact, the Panel finds that the addition of these English words serve to emphasize that information about the Complainant’s VALIUM drug products are available at these websites which only serve to increase the level of confusion of Internet users as Internet users may mistake the Respondent’s websites whether as the Complainant’s official websites or websites endorsed, sponsored or associated with Complainant.

Accordingly, the Panel finds that the disputed domain names <buy-valiumonline.org>; <onlinepharmacyvalium.org>; <valiumeffects.org>; <valiumoverdose.org> are confusingly similar to a trademark or service mark in which Complainant has rights.

The Panel finds for Complainant on the first part of the test.

B. Rights or Legitimate Interests

The burden of proof on this element lies with Complainant. However, it is well established by previous UDRP Panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests to a disputed domain name, the burden of proof shifts to the respondent to rebut the complainant’s contentions.

According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] of the dispute, your use of, or 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are 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.

The Panel finds that Complainant has made out a prima facie showing and notes that Respondent has not provided any evidence of the circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the domain name.

Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names:

1. Respondent has not provided evidence of a legitimate use of the domain name or reasons to justify the choice of the words “buy-valiumonline.org”; “valiumeffects.org”; “valiumoverdose”; and “onlinepharmacyvalium” in its business operations;

2. There was no evidence to show that Complainant has licensed or otherwise permitted Respondent to use its trademark VALIUM or to apply for or use any domain name incorporating the trademark;

3. There is no indication that Respondent is commonly known by the disputed domain names and/or is using the domain names in connection with a bona fide offering of goods or services;

4. There is no evidence to show that Respondent is making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark VALIUM at issue; and

5. Complainant and its trademark VALIUM enjoy a worldwide reputation with regard to its pharmaceutical products. Consequently, in the absence of contrary evidence from Respondent, the VALIUM trademark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with Complainant.

The Panel finds for Complainant on the second part of the test.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith, namely:

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

(ii) Respondent 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 Respondent has engaged in a pattern of such conduct; or

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

(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product.

The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondent has registered and used the disputed domain name in bad faith.

First, the Panel finds that Complainant enjoys a worldwide reputation in its VALIUM mark and the pharmaceutical products sold under this trademark. The Complainant’s VALIUM mark has been registered and was used in relation to its pharmaceutical products since 1961 and the Panel accepts the Complainant’s assertion that the VALIUM mark has attained a worldwide reputation in psychotropic medications. In this day and age of the Internet and advancement in information technology, the reputation of brands and trademarks transcend national borders. Given the fame of the Complainant’s VALIUM mark, the Panel finds that it is not conceivable that Respondent would not have had actual notice of the Complainant’s trademark right at the time of the registration of the domain names. Consequently, in the absence of contrary evidence from Respondent, the Panel finds that the VALIUM trademark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with Complainant. Thus, it would have been pertinent for Respondent to provide an explanation of its choice in the disputed domain names. However, Respondent has not responded to the Complainant’s allegations in the Complaint suggesting to the Panel that the disputed domain names were registered by Respondent in bad faith. This was in the circumstances in all likelihood with the intent to create an impression of an association with Complainant and its products and services.

Second, Complainant has also adduced evidence to prove that by using confusingly similar disputed domain names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites which are hosting advertising links to websites promoting or offering products or services of third parties, especially in the pharmaceutical field being the business of Complainant. Given the worldwide reputation and the fame of the Complainant’s VALIUM trademark, the compelling conclusion is that Respondent, by choosing to register and use domain names which are confusingly similar to the Complainant’s widely known and distinctive trademark, intended to ride on the goodwill of the Complainant’s trademark in an attempt to exploit, for commercial gain, Internet traffic destined for Complainant. Potential partners and end users are led to believe that the Respondent’s websites are either the Complainant’s site or the site of official authorized partners of Complainant, which it is not. Consequently, Respondent has, through the use of confusingly similar domain names, created a likelihood of confusion with the Complainant’s VALIUM trademark and this constitutes a misrepresentation to the public that the Respondent’s websites are in one way or the other associated or connected with the Complainant’s. In this way, Respondent may generate income for each click-through by online consumers of the sponsored links when in fact these consumers would not have done so if not for the presence of the Complainant’s VALIUM mark in Internet addresses of these websites. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain names and the conduct of Respondent as far as the websites on to which the domain names resolve are indicative of registration and use of the disputed domain names in bad faith.

The Panel finds for Complainant on the third part of the test.

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 <buy-valiumonline.org>; <onlinepharmacyvalium.org>; <valiumeffects.org>; and <valiumoverdose.org> be transferred to Complainant.

Susanna H.S. Leong
Sole Panelist

Dated: August 2, 2007