WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

F. Hoffmann-La Roche AG v. Andrey Radashkevich / Domain Admin, PrivacyProtect.org

Case No. D2008-0149

1. The Parties

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

The Respondent is Andrey Radashkevich, Russian Federation; Domain Admin, PrivacyProtect.org, Netherlands.

2. The Domain Name and Registrar

The disputed domain name <valiumwithoutprescription.org> is registered with EstDomains, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 30, 2008. On February 1, 2008, the Center transmitted by email to EstDomains, Inc. a request for registrar verification in connection with the domain name at issue. On February 1, 2008, EstDomains, Inc. transmitted by email to the Center its verification response. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on February 6, 2008. The Center verified that the Complaint together with the amendment to 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 February 7, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was February 27, 2008. On February 9, 2008, PrivacyProtect.org indicated to the Center that they had in the context of the present dispute elected to disable the privacy service that was in use regarding the disputed domain name <valiumwithoutprescription.org>, and that the publicly accessible WhoIs data displayed the name and contact information for the domain name holder. In response to the Center’s request for confirmation, the Registrar, EstDomains, Inc. confirmed that the registrant name and contact information was correct. The Center sent an email communication to the Complainant on February 12, 2008, providing the underlying registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complaint filed a submission on February 18, 2008. Accordingly, the Complaint was re-notified on February 19, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was March 10, 2008. The Respondent submitted no response apart from a short email to the Center on February 23, 2008 stating that it did not see why it should lose the disputed domain name. The Center notified the Respondent’s default on March 11, 2008.

The Center appointed Angela Fox as the sole panelist in this matter on March 26, 2008. 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 is an internationally known pharmaceutical manufacturer. In the late 1950s, one of its scientists developed a new class of sedatives known as benzodiazepines or diazepam, which the Complainant launched commercially in 1963 under the brand name VALIUM.

The VALIUM product was a huge commercial success and quickly became one of the most widely prescribed drugs in America. The Complainant has sold VALIUM products for over 40 years, and the fame and iconic status of the VALIUM brand were evidenced by copies of newspaper articles on the history of the brand attached to the Complaint. The Complainant’s VALIUM product remains a prescription-only drug and is still widely used to treat anxiety disorders.

The Complainant asserts that it owns trademark registrations for VALIUM in over 100 countries. Exhibited to the Complaint was a copy of the latest renewal certificate for International Registration No. R250784 for VALIUM, dating from 20 October 1961 and extending to some 40 countries, including the Russian Federation.

The Respondent is an individual apparently based in Russia. The disputed domain name links to a website that purports to offer VALIUM sedatives for sale online without the need for a prescription. The home page features a prominent banner reading as follows:

“Valium Without Prescription.

Buy Valium Online Without Prescription – Order Valium Cheap No Prescription”

Underneath, a pricelist headed “Generic Valium (Diazepam) Pricelist” lists 6 different strengths and quantities of a drug described in each case as “Valium (Generic)”. Underneath the table is advisory text with headings on “Valium Uses”, “Valium Side Effects”, “Precautions for Valium”, “How to Take Valium”, and “Valium Drug Interactions”.

Clicking on any of the “order” buttons causes the visitor to be transferred to another website, “www.trustgeneric.com”, which contains the same pricelist and text and an image of a Valium product package. The items in the pricelist can be ordered directly through this site.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to its registered VALIUM trademark, differing only in the addition of descriptive matter that does not serve to distinguish the domain name from the mark.

In addition, the Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant did not consent to the Respondent’s registration or use of the disputed domain name. Moreover, the Respondent is using the disputed domain name to offer generic diazepam products that directly compete with the Complainant’s VALIUM product. The Complainant argues that such use cannot give rise to a legitimate right or interest.

Finally, the Complainant avers that the disputed domain name was registered and has been used in bad faith. The Respondent was aware of the Complainant’s well-known VALIUM brand at the time of registration and has been using the domain name to attract Internet users to a site offering competing products for sale, by creating a likelihood of confusion with the VALIUM mark. Although the Respondent appears to be offering generic diazepam for sale, the disputed domain name and the Respondent’s prominent and repeated use of the VALIUM mark on the linked site are likely to confuse Internet users into believing that what is being offered is the VALIUM product, when in fact it is not.

B. Respondent

The Respondent did not reply to the case against it apart from its email to the Center dated February 23, 2008. That email read:

“I’m owner of domain valiumwithoutprescription.org. And why did you not forbidding domain registrars sell domains with such names? Domain was no need until it appeared in the search engine google.com!

Why do I have to lose money? Valium sell thousands of sites and write that the Valium.

Why should I lose this domain? I don’t know yet. I had not bought the domain name ‘OfficialSiteofValium.org’.”

This email does not meet any of the formal requirements of a response under paragraph 5(b) of the Rules. Nor does it respond to or address any of the specific statements or allegations in the Complaint. Accordingly, the Respondent’s email is not an admissible response under para. 5 of the Rules, and the Respondent is therefore in default.

No exceptional circumstances explaining the default have been put forward. Therefore, in accordance with paragraphs 14 (a) and (b) of the Rules, the Panel will decide the Complaint and shall draw such inferences as it considers appropriate from the Respondent’s default.

6. Discussion and Findings

Under Paragraph 4 (a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the Panel finds that:

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

(ii) the respondent has no rights or legitimate interests in the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

All three elements must be present before a complainant can succeed in an administrative proceeding under the Policy.

A. Identical or Confusingly Similar

The Respondent’s domain name consists of the whole of the Complainant’s registered trademark VALIUM, followed by the words “withoutprescription”. The latter have a clear and direct descriptive meaning in respect of pharmaceutical products, for which prescriptions are often required.

Internet users encountering the disputed domain name are likely to understand it as denoting a website offering the Complainant’s Valium products without the need for a prescription. The additional matter does nothing to avoid confusing similarity and, indeed, serves to reinforce the message that the disputed domain name relates to the Complainant’s Valium product.

The Panel notes the similar reasoning in F. Hoffman-La Roche AG v. IT Developers s.c. Tomasz Kraus, Lukasz Haluch, WIPO Case No. D2006-1547, in which the panelist held that “[t]he affixing of the word “prescriptions” – certainly in relation to VALIUM, which is a drug – is descriptive and does not take away the confusing similarity between Complainant’s trademark and the Domain Name”.

The Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Complainant did not consent to the Respondent’s use of the disputed domain name, and the Respondent has asserted no basis for any claim to a right or legitimate interest in it.

Under Para. 4 (c)(i) of the Policy, the Panel may nonetheless infer that a respondent has a right or legitimate interest in a domain name if

(i) before any notice to the Respondent 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…

In this case, the Respondent has indeed been offering goods for sale through a website linked to the disputed domain name. Those goods are in fact generic diazepam, however, and as such compete directly with the Complainant’s Valium product. The Respondent is therefore using a domain name that is confusingly similar to the Complainant’s trademark to entice visitors to a website on which it offers competing drugs for sale. Moreover, on that website the Respondent uses the VALIUM mark prominently and repeatedly in ways that seem calculated to suggest that the products being sold are in fact Valium products: indeed, it is difficult to see why else indications concerning the use of the Valium drug would be given. Against this backdrop, the mere fact that the pricelist refers to “generic VALIUM” is not likely to avoid the confusion arising from the nature of the disputed domain name and the use of the VALIUM mark on the linked site. In the Panel’s view, such an offering of goods cannot be said to be bona fide within the meaning of Para. 4(c)(i) of the Policy.

Other panelists have also found that the use of a domain name that is identical or confusingly similar to a complainant’s trademark in order to offer competitors’ products for sale is not a bona fide offering of goods (see e.g., F. Hoffmann-La Roche AG v. Web Marketing Limited., WIPO Case No. D2006-0005). In that case, the panelist observed, “there is no such thing as generic VALIUM. There is either VALIUM, a diazepam product manufactured only by Complainant, or diazepam, a product that can be manufactured by anyone. Thus, while VALIUM is a diazepam product, diazepam is not VALIUM unless it is manufactured by Complainant. It is clear to this Panel that Respondent is using Complainant’s famous trademark to sell diazepam—not VALIUM; and this Panel finds that Respondent has no rights or legitimate interests in the disputed domain name”.

The Respondent’s adoption of the disputed domain name and use of the VALIUM mark on the linked site were clearly calculated to trade on and benefit from the fame of the Complainant’s mark in the promotion of competing products. Such “bait and switch” selling techniques have been described as “objectionable”, “misleading” and “unfair” by other panelists (see inter alia Robert Bosch GmbH v. Asia Ventures, Inc., WIPO Case No. D2005-0946), who have declined to find a bona fide offering of goods or services in such circumstances.

In this case, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) sets out certain circumstances which, in particular but without limitation, are to be construed as evidence of both. These include inter alia paragraph 4(b)(iv):

(iv) 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 source, sponsorship, affiliation, or endorsement of its website or of a product on that site.

The Complainant’s VALIUM mark has been used for over 40 years in respect of a highly successful prescription drug. The nature of the disputed domain name and the Respondent’s website content suggest that the Respondent was well aware of the Complainant’s mark when it registered the disputed domain name. The Respondent has not denied this. Indeed, it is hard to see how it plausibly could.

The disputed domain name is confusingly similar to the Complainant’s trademark and is inherently likely to attract Internet users seeking the Complainant’s Valium product. The Respondent has been using the disputed domain name to lure Internet users to a website that displays the VALIUM trademark prominently, repeatedly and misleadingly whilst offering competing diazepam products for sale. In doing so, it is clear that 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 of the goods offered through the site.

Similar conduct has been found to manifest bad faith registration and use in other cases, including Pfizer Inc. v. Juan Gonzales, WIPO Case No. D2004-0589 and F. Hoffmann-La Roche AG v. Web Marketing Limited, WIPO Case No. D2006-0005. In the latter case, the panelist held that use of a domain name that was confusingly similar to the complainant’s trademark “for the sole purpose of attracting internet users to Respondent’s website in order to sell a product, diazepam, that competes with Complainant’s VALIUM product” was evidence of registration and use in bad faith under paragraph 4 (b)(iv) of the Policy.

In this case, the Panel also finds that the disputed domain name was registered and has been used in bad faith.

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 name, <valiumwithoutprescription.org> be transferred to the Complainant.

Angela Fox
Sole Panelist

Dated: April 7, 2008