The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally.
The Respondent is PrivacyProtect.org of Nobby Beach, Queensland, Australia and Arrakis Inc of Panama.
The disputed domain name <cheapvaliumonline.com> (the “Domain Name”), is registered with 0101 Internet, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 21, 2012. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 24, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 5, 2012, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on the same date.
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” or “UDRP”), 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 October 8, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 28, 2012. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on October 29, 2012.
The Center appointed Tony Willoughby as the sole panelist in this matter on November 6, 2012. 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.
At the time the original Complaint was filed, the Registrar’s Whois database identified the first of the above-named Respondents, a privacy service, as the registrant of the Domain Name. However, in response to the Center’s registrar verification request the Registrar identified the second of the above-named Respondents, Arrakis Inc, as the underlying registrant. Sometimes, the identification of a “new” registrant at this stage can have a material effect on the Complainant’s choice of Mutual Jurisdiction. In this case however, that is not a concern as the Complainant has selected the jurisdiction of the courts at the location of the principal office of the Registrar and the Registrar has not changed.
In light of the fact that the privacy service is just that i.e. a service offered to conceal the identity of the underlying registrant, the Panel proposes to treat Arrakis Inc as the true registrant and all references hereafter to the “Respondent” are references to Arrakis Inc.
The Complainant is one of the world’s largest pharmaceutical companies. One of its most successful drugs is diazepam, which it has marketed internationally for nearly 50 years under the brand name VALIUM.
The Complainant is the registered proprietor of many trade mark registrations for VALIUM, one of the earliest being International Trademark registration No. 250784 VALIUM (word) dated December 20, 1961 for a variety of goods including pharmaceuticals.
The Domain Name was registered on July 18, 2012 and has been connected to Web pages with links to online pharmacies offering for sale a variety of pharmaceuticals, some of them being the Complainant’s Valium product and others being the products of other pharmaceutical companies.
At the date the Complaint was filed, the Domain Name linked to a webpage headed “Cheap Valium Online” and featuring links to a section of the site labeled “About Valium (diazepam)” and a “BUY NOW” button linking to an Indian online pharmacy. When the Panel visited the website (from the United Kingdom of Great Britain and Northern Ireland) on November 8, 2012 it was found to be a “www.hostmaster.com” parking page featuring links to various online pharmacies offering an unlimited range of medicines and diet pills, including pharmaceuticals which compete with those of the Complainant.
The Complainant contends that the Domain Name is confusingly similar to the Complainant’s VALIUM trade mark, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Respondent registered the Domain Name in bad faith and is using it in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name was registered and is being used in bad faith.
Apart from the generic “.com” top-level domain suffix, which may be ignored for the purpose of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, the Domain Name comprises the Complainant’s well-known VALIUM trade mark preceded by the word “cheap” and followed by the word “online”.
The word “online”, a description of a selling medium, does nothing to diminish the distinctiveness of the Complainant’s trade mark VALIUM. The word “cheap”, on the other hand, while descriptive does render it much less likely that any English speaker will assume that the Domain Name is a domain name of or authorized by the Complainant. It is not a word by which one would normally expect a pharmaceutical manufacturer such as the Complainant to promote sales of one of its leading pharmaceuticals.
However, the Complainant’s Valium product is marketed worldwide and in a large number of countries where languages other than English are spoken. The Panel gratefully adopts the reasoning of the panel in Lilly ICOS LLC v. Emilia Garcia, WIPO Case No. D2005-0031, when dealing with a domain name similar in style to the Domain Name save that the first word was not “cheap” but “generic”, a word that clearly identifies the identified pharmaceutical as being the generic equivalent of the branded product i.e. not the branded product itself:
“Is the use of the word “generic” in the Domain Name sufficient to indicate that any “Cialis” product described on the Respondent’s website will not be the Complainant’s well known product? In the Panel’s view, using the word “generic” in the Domain Name is not sufficient to negate the similarity between the Domain Name and the mark CIALIS. The CIALIS product is marketed in many countries where English is not the main language, and it does appear to be marketed as CIALIS in those countries. Given the apparent worldwide ubiquity of the product, it is in the Panel’s view inevitable that a significant number of Internet users will assume that the Domain Name must resolve to a site which is somehow associated with the Complainant’s product, or at least endorsed by the makers of CIALIS. Some Internet users will assume that the mark CIALIS could only be used with its owner’s consent, and that assumption will lead easily to the further assumption that such consent must have been given. Others, particularly those for whom English is not their first language, will not appreciate that “generic” CIALIS may not be the real thing.”
Adopting the same reasoning, the Panel finds that the Domain Name is confusingly similar to the Complainant’s VALIUM trade mark.
The Respondent has linked the Domain Name, directly or indirectly to online pharmacy websites. As a business engaged in that field of activity, the fame of the Complainant’s trade mark VALIUM is such that the Respondent will at all material times have been well aware of the Complainant’s product. Were there to be any doubt about that, it is removed when one sees that the Respondent made direct reference to the Complainant’s VALIUM product on the website connected to the Domain Name at the date of the Complaint.
The Complainant asserts that it has never granted the Respondent any permission to use its VALIUM trade mark for this or any other purpose and the Respondent has not challenged that assertion.
In certain circumstances it may be acceptable for a reseller to use the brand name of the product it is selling as part of a domain name and without the permission of the brand owner. In this case, the Respondent is offering for sale, directly or indirectly, a variety of pharmaceuticals via its website, including not only the Complainant’s VALIUM trade mark, but also a variety of products of other manufacturers, including products which compete with those of the Complainant.
According to paragraph 4(c)(i) of the Policy, use of a domain name for the purpose of a bona fide offering of goods can constitute a right or legitimate interest for the purposes of paragraph 4(a)(ii) of the Policy. However, in the view of the Panel to use a domain name which is confusingly similar to a complainant’s trade mark, without the permission of the complainant and with a view to selling goods which compete with the complainant’s goods cannot on any basis be categorized as bona fide.
While it is for the Complainant to prove each element of paragraph 4(a) of the Policy, paragraph 4(a)(ii) of the Policy requires a complainant to prove a negative in respect of matters, which will often only be known to the respondent. In recognition of this difficulty, UDRP panels will be satisfied if a complainant comes forward with a prima facie case. It is then incumbent upon the respondent to answer that case.
In the view of this Panel, the Complainant has come forward with a prima facie case, which calls for an answer. What possible justification can the Respondent have had for adopting a domain name making prominent use of the Complainant’s trade mark for the purpose of selling inter alia products competing with those of the Complainant? There is no answer. The Respondent has not seen fit to come forward with any explanation to justify its selection of the Domain Name.
In the circumstances, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
The Complainant contends that the Respondent selected the Domain Name with knowledge of the Complainant’s trade mark and with the intention of using the Complainant’s trade mark to attract Internet users to online pharmacy websites for the purposes of commercial gain. The Complainant contends that in so doing, the Respondent is deceiving Internet users. The Complainant contends that Internet users, seeing the Domain Name, will believe that the website to which it is connected is either owned by or authorized by the Complainant.
The Panel agrees. The Panel believes it to be highly probable that there will be large numbers of Internet users around the world who will be likely to believe that the website to which the Domain Name is connected is either owned by or authorized by the Complainant.
The Panel finds that the Domain Name was registered and is being used in bad faith within the meaning of paragraphs 4(a)(iii) and 4(b)(iv) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <cheapvaliumonline.com>, be transferred to the Complainant.
Tony Willoughby
Sole Panelist
Date: November 9, 2012