The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally.
The Respondent is Anthony L. Carreno of Antigonish, Nova Scotia, Canada.
The disputed domain name <onlinevalium.net> is registered with Paknic (Private) Limited (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 4, 2015. On June 4, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 9, 2015, the Registrar 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" 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 June 11, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 1, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 2, 2015.
The Center appointed Evan D. Brown as the sole panelist in this matter on July 9, 2015. 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 following facts, relevant to the Panel's determination, are set forth in the Complaint and are not disputed by the Respondent.
The Complainant owns many valid and subsisting trademark registrations for the word VALIUM (the "Mark") including International Registration No. R250784 with a registration date of December 20, 1961, for the Complainant's well-known sedative and anxiolytic drug. The Respondent registered the disputed domain name on May 10, 2015. The Respondent used the disputed domain name in connection with an online pharmacy.
The Complainant asserts that the disputed domain name is confusingly similar to the Mark because, among other things, the disputed domain name incorporates the Mark in its entirety, and the addition of the non-distinctive word "online" does not eliminate any likelihood of confusion.
Further, the Complainant claims that the Respondent has no rights or legitimate interests in respect of the disputed domain name because (a) the Complainant has never granted to the Respondent any license, permission or other authorization to use the Mark in the disputed domain name, and (b) it is obvious that the Respondent uses the Mark in the disputed domain name for commercial gain and with the purpose of capitalizing on the Mark's fame. The Complainant submitted evidence that the Respondent configured the disputed domain name to resolve to an online pharmacy.
Finally, the Complainant contends that the Respondent registered and uses the disputed domain name in bad faith. The Complainant bases its bad faith registration contention on the Respondent's indubitable knowledge of the Mark when it registered the disputed domain name. The Complainant bases its bad faith use contention on the Respondent's obvious intentional attempt, for commercial purposes, to attract Internet users to the Respondent's website by creating a likelihood of confusion with the 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 website.
The Respondent did not reply to the Complainant's contentions.
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed 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 respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to the Complainant's registered mark. See Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505. A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its owner. Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen, WIPO Case No. D2014-0657.
In this case, the disputed domain name contains the Complainant's trademark VALIUM in its entirety, as a dominant element, with the additional word "online" that does not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant's widely-known VALIUM trademark. The Complainant has demonstrated its rights because it has shown that it is the owner of multiple valid and subsisting trademark registrations for the mark VALIUM.
Accordingly, the Panel finds that the Complainant has shown that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
The Panel evaluates this element of the Policy by first looking to see whether the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. If the Complainant makes that showing, the burden of production shifts to the Respondent. Canon U.S.A., Inc. v. Miniatures Town, WIPO Case No. D2014-0948, citing: WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1 (after complainant makes prima facie case, the burden of showing rights or legitimate interests in the domain name shifts to the respondent).
Paragraph 4(c) of the Policy instructs respondents on a number of ways they could demonstrate rights or legitimate interests ("you" and "your" in the following refers to the particular respondent):
(i) before any notice to you 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 (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 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.
In this case, the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. By failing to respond to the Complaint, the Respondent did not meet its burden to demonstrate rights or legitimate interests. And no other facts in the record tip the balance in the Respondent's favor.
Had the Respondent submitted a response to the Complaint, it could have advanced an argument casting it as a "reseller" or "distributor". Absent any such evidence, however, the Panel credits the Complainant's assertions that the Respondent was never properly authorized to use the Mark. The record also shows that the online pharmacy at the disputed domain name did not accurately and prominently disclose the registrant's relationship with the Complainant. Therefore, the relevant criteria for determining whether the Respondent is an authorized "reseller" or "distributor" (see Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903) have not been met in this case.
The Complainant has established that the Respondent lacks any rights or legitimate interests in the disputed domain name.
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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 respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website 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 respondent's website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent's conduct in this case constitutes bad faith registration and use of the Domain Name within the meaning of paragraph 4(a)(iii) of the Policy. The Panel agrees with the Complainant's characterization of the Respondent's conduct, namely, as an obvious intentional attempt, for commercial purposes, to attract Internet users to the Respondent's website by creating a likelihood of confusion with the 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 website.
The Panel also credits the Complainant's reliance on earlier UDRP decisions in which panels found bad faith when the Respondent used a domain name in connection with for-profit online pharmacies. F. Hoffmann-La Roche AG v. Pinetree Development, Ltd., WIPO Case No. D2006-0049 and Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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 disputed domain name <onlinevalium.net> be transferred to the Complainant.
Evan D. Brown
Sole Panelist
Date: July 26, 2015