F. Hoffmann-La Roche AG v. IT Developers s.c. Tomasz
Kraus, Lukasz Haluch
Case No. D2006-1547
1. The Parties
The Complainant is F. Hoffmann-La Roche AG, Basel, Switzerland, represented
by Dr. Hans-Friederich Czekay and Jerôme Rhein.
The Respondent is IT Developers s.c. Tomasz Kraus, Lukasz Haluch, Malopolskie,
Poland.
2. The Domain Name and Registrar
The disputed domain name <prescriptionsvalium.com> (the “Domain
Name”) is registered with Go Daddy Software, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration
and Mediation Center (the “Center”) on December 6, 2006. On December
7, 2006, the Center transmitted by email to Go Daddy Software, Inc. a request
for registrar verification in connection with the Domain Name. On December 7,
2006, Go Daddy Software, Inc. transmitted by email to the Center its verification
response confirming that 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”).
Respondent sent the Center an e-mail on December 10, 2006 in response to the
Center’s email of that date, acknowledging receipt of the Complaint.
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally
notified Respondent of the Complaint, and the proceedings commenced on December
14, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response
was January 3, 2007. Respondent did not submit a Response. Accordingly, the
Center notified Respondent’s default on January 10, 2007.
The Center appointed Alfred Meijboom as the sole panelist in this matter on
January 18, 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 language of the administrative proceedings is English.
4. Factual Background
Complainant asserted and provided evidence in support
of the following facts.
Together with its affiliated companies Complainant is one of the world’s
leading research-focused healthcare groups in the fields of pharmaceuticals
and diagnostics. They have global operations in more than 100 countries.
Complainant has registered the trademark VALIUM in over 100 countries on a
world-wide basis. International Registration No. R250784, with priority date
December 20, 1961, is representative for these registrations.
The mark VALIUM designates a sedative and anxiolytic drug belonging to the
benzodiazepine family, which enabled Complainant to build a world-wide reputation
in psychotropic medications. The mark VALIUM is a well-known trademark.
The Domain Name was registered on November 4, 2006.
Respondent did not file a formal response in these proceedings and was notified
of its default by the Center on January 26, 2006.
5. Parties’ Contentions
A. Complainant
Complainant asserted that the Domain Name is confusingly
similar to Complainant’s VALIUM mark as it incorporates the mark in its
entirety. Complainant further argued by referring to Novo Nordisk A/S v. Mr.
Jonathan Valicenti, WIPO Case No. D2005-0563, that the addition of the term
“prescriptions” is likely to enhance the confusion and to lead consumers
to believe that the Domain Name is linked to, affiliated with, or at least endorsed
by Complainant. The mark VALIUM is well-known and notorious, which will further
increase the likelihood of confusion.
Complainant has exclusive rights for the mark VALIUM, and has not authorized
Respondent to use the term VALIUM as part of the Domain Name. Furthermore it
is obvious that Respondent uses the Domain Name for commercial gain and with
the purpose of capitalizing the fame of Complainant’s mark VALIUM. Hence
the Domain Name alludes to Complainant.
Before Complainant notified Respondent of its objections on November 14, 2006,
the Domain Name was directing Internet users to a search engine composed of
sponsored links. This is not use of the Domain Name in connection with bona
fide offering of goods and services.
The website under the Domain Name currently simply makes reference to a situation
of passive holding as it reads “This domain has been blocked”. There
is no reason why Respondent should have any right or interest in the Domain
Name.
The Domain Name was registered in bad faith since at the time of the registration
on November 4, 2006, defendant had doubtlessly knowledge of Complainant’s
well-known product and mark VALIUM.
The Domain Name was also used in bad faith, because Respondent has intentionally
attempted to attract Internet users to Respondent’s website under the
Domain Name for commercial purpose, by creating a likelihood of confusion with
Complainant’s VALIUM mark as to the source, affiliation and endorsement
of Respondent’s website or of the products or services posted on or linked
to Respondent’s website.
Under reference to Deutsche Telekom AG v. Jürgen Müller,
WIPO Case No. D2005-1340, Complainant
asserts that Respondent’s “passive holding” of the Domain
Name after Complainant notified Respondent that the Domain Name infringes its
trademark VALIUM, may also be considered a circumstance evidencing bad faith.
Complainant requests the Panel to issue a decision that the Domain Name be
transferred to Complainant.
B. Respondent
Before being requested to file a reply to Complainant’s contentions,
Respondent sent an email to the Center on December 10, 2006 with the following
contents:
“We are owner of the (Domain Name). For us (Complainant’s) behavior
is quite unfair. We aren’t using the (Domain Name) as a bad name for (Complainant)
neither Valium. Now (the Domain Name) isn’t even parked anywhere, it just
shows a blank page. (The Domain Name) was an expired domain so that’s
why we purchased (the Domain Name). If (Complainant) wanted (the Domain Name)
then they could’ve bought it when it was expired, and don’t harass
current owners now.”
Respondent otherwise failed to respond to Complainant.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the requested remedy can be granted
if Complainant asserts and proves each of the following:
A. that the Domain Name is identical or confusingly similar to a trademark
or a service mark in which Complainant has rights; and
B. Respondent has no rights or legitimate interests in respect of the Domain
Name; and
C. the Domain Name has been registered and was being used in bad faith.
A. Identical or Confusingly Similar
Complainant holds trademark rights in VALIUM in many countries world wide,
the earliest of which date from 1961. The Panel further believes that said trademark
is well-known. See also F. Hoffmann-La Roche AG v. Ashima Kapoor, WIPO
Case No. D2005-1351; F. Hoffmann-La Roche AG v. Web Marketing Limited,
WIPO Case No. D2006-0005; F. Hoffmann-La Roche
AG v. Lythion Services Ltd, WIPO Case No. D2006-0035.
The Domain Name wholly incorporates the VALIUM trademark of Complainant. The
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.
Therefore, the Panel finds the Domain Name confusingly similar to Complainant’s
registered trademark VALIUM.
B. Rights or Legitimate Interests
According to paragraph 4(c) of the Policy Complainant is required to prove
that Respondent has no right or legitimate interest in the Domain Name. According
to the consensus view among Panels, this condition is met if Complainant makes
a prima facie case that Respondent has no rights or legitimate interests, and
Respondent fails to show one of the three circumstances mentioned in paragraph
4(c) of the Policy.
The VALIUM trademark is well-known. The Panel believes that Respondent must
have been aware of the trademark as the Domain Name combines VALIUM and “prescription”,
and the Domain Name has apparently been used for a website with sponsored links,
including links to pharmacies and parties that offer drugs. Consequently, the
Panel finds that Respondent has not used the Domain Name for bona fide offering
of goods or services, or for non-commercial or fair use.
The Panel is further satisfied that there is no evidence that Respondent has
commonly been known by the Domain Name, and that Complainant did not authorize
Respondent to register the Domain Name, as Respondent did not, in its email
to the Center of December 10, 2006, dispute Complainant’s claim to that
effect, and the registration date of the Domain Name is 45 years after the priority
date of the International Trademark registration of VALIUM.
For these reasons, the Panel finds that Respondent has no rights or legitimate
interest in the Domain Name.
C. Registered and Used in Bad Faith
The Domain Name is composed of the trademark VALIUM of Complainant, and the
generic term “prescription”, which relates to Complainant’s
field of activities as VALIUM marked drugs are prescription drugs. The VALIUM
trademark is well-known for Complainant’s prescription drugs. The Panel
finds it is reasonable to conclude that only someone who was familiar with the
VALIUM trademark could have registered the Domain Name. Therefore the Panel
finds that the Domain Name was registered in bad faith.
Complainant must also prove that Respondent used the Domain Name in bad faith.
In this respect Complainant showed that the Domain Name has been used for a
website with sponsored links to, inter alia, pharmacies and parties that offer
drugs. According to paragraph 4(b) of the Policy an indication of use in bad
faith is if Respondent is intentionally attempting to attract, for commercial
gain, Internet users to its website by creating a likelihood of confusion with
Complainant’s trademark as to the source, sponsorship, affiliation, or
endorsement of its website or of a product or service on its website. The Panel
considers that in using the Domain Name Respondent has sought to take advantage
of, and create a likelihood of confusion with, the VALIUM trademark. By using
the drawing power of Complainant’s VALIUM trademark and linking Internet
users to sponsored links Respondent is generating traffic to its website under
the Domain Name. The fact that the contents of the website under the Domain
Name was apparently removed after Complainant’s notification does not
affect a finding of bad faith in this case. (e.g. ACCOR v. S1A, WIPO Case No.
D2004-0053).
Therefore the Panelist finds that Respondent used the Domain Name in bad faith.
7. Decision
For all the foregoing reasons, in accordance with
paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders
that the domain name <prescriptionsvalium.com> be transferred to Complainant.
Alfred Meijboom
Sole Panelist
Dated: January 26, 2007
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