Roche Products Inc. v. Michael Trinidad, TvForever
Case No. D2007-1259
1. The Parties
The Complainant is Roche Products Inc., Nutley, New Jersey, United States of America, of United States of America, represented by Lathrop & Gage L.C., United States of America.
The Respondent is Michael Trinidad, TvForever, High Point, North Carolina, United States of America.
2. The Domain Name and Registrar
The disputed domain name <buyxanaxbuyvalium.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 24, 2007. On August 28, 2007, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On August 30, 2007, eNom 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”), 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 September 5, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was September 25, 2007. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on September 26, 2007.
The Center appointed The Honourable Neil Anthony Brown QC as the sole panelist in this matter on October 4, 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.
4. Factual Background
The Complainant, together with its affiliated companies, is one of the leading manufacturers of pharmaceutical products in the world and among its products is Valium.
The Complainant’s parent company, F. Hoffmann-LaRoche AG is the registered owner of trademarks for VALIUM throughout the world. One of the most significant of its trademarks is the Registered trademark No.725, 548 for VALIUM registered with the United States Patent and Trademark Office on December 26, 1961 (“the VALIUM trademark”).
Valium is a psychotherapeutic agent used in the treatment and prevention of anxiety, is approved by the Food and Drug Administration of the USA and is available only on prescription.
The Complainant has also registered a series of domain names throughout the world, such as <valium.com> which resolves to the website “www.rocheusa.collm/products” where official information may be obtained on Valium.
The disputed domain name <buyxanaxbuyvalium.com > was registered on December 8, 2006.
5. Parties’ Contentions
A. Complainant
The Complainant alleges that the contentious domain name, <buyxanaxbuyvalium.com> should no longer be registered with the Respondent, but that it should be transferred to the Complainant.
It contends that this should be done because, within the meaning of paragraph 4(a) of the Policy, the domain name is confusingly similar to the Complainant’s registered trademark, that the Respondent has no rights or legitimate interests in the domain name and that the domain name has been registered and subsequently used in bad faith. The Complainant maintains that it can prove all three of these requirements and that the appropriate remedy is to transfer the domain name to the Complainant.
In support of its case on the first of these three elements, the Complainant relies on the registered VALIUM trademark to which reference has already been made. It then says that the domain name, <buyxanaxbuyvalium.com> is confusingly similar to the VALIUM trademark because the domain name consists in part of the VALIUM trademark to which has been added several words which, however, do not detract from the confusing similarity between the domain name and the trademark and the strong association between VALIUM and the Complainant.
The Complainant then contends, to establish the second element, that the Respondent has no rights or interests in any of the domain names because the facts show an obvious intention by the Respondent to trade on the goodwill created by the Complainant’s VALIUM trademark by using the domain name to operate a website which misleads consumers into believing that they have arrived at one of the Complainant’s websites whereas in fact they arrive at a website wholly unrelated to the Complainant. This is done, it is contended, by linking the domain name to a website that sells a version of the Valium drug not approved by the FDA, which is illegal and dangerous to health. Nor, it is argued, can the Respondent establish that it has a right or legitimate interest in the domain name by bringing itself within any of the provisions of paragraph 4 (c) of the Policy.
Finally, the Complainant contends that the domain name was registered and is being used in bad faith. It contends that this is so because it must be inferred from all of the facts that the Respondent must have been aware of the VALIUM trademark when it registered and whilst it has been using the domain name and that it did so with the intention of diverting customers looking for the product Valium to a website which sells a non-FAD approved version of Valium not originating with the Complainant. This, it is contended, brings the case Squarely within paragraph 4(b) (iv) of the Policy.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is to 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.
In that regard, the Panel also notes that the fact that the Respondent has not made a submission does not avoid the necessity of examining the issues and of doing so in the light of the evidence. The onus remains on the Complainant to make out its case and past UDRP panels have said many times that despite the absence of a submission from a Respondent, a Complainant must nevertheless show that all three elements of the Policy have been made out before any order can be made to transfer a domain name.
However, as the Panel will illustrate later, it is possible to draw inferences from the evidence that has been submitted and in some cases from silence. Indeed, paragraph 14 of the Rules incorporates both of those notions into the procedures of the Panel.
The Panel therefore turns to discuss the various issues that arise for decision on the facts, as they are known.
For the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, that:
A. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
B. The Respondent has no rights or legitimate interests in respect of the domain name; and
C. The domain name has been registered and is being used in bad faith.
It is to be noted that paragraph 4 of the Policy provides that the Complainant must prove that each of the three elements is present. The Panel will therefore deal with each of these requirements in turn.
A. Identical or Confusingly Similar
The Panel finds that the domain name <buyxanaxbuyvalium.com>is confusingly similar to the Complainant’s trademark VALIUM. That is so for the following reasons.
The domain name is similar to the trademark as it includes the entirety of the trademark together with three other words, “buy” used twice and “Xanax”, none of which detracts from the overall impression given to the reader that the domain name is referring at least in part to the VALIUM trademark and is intending to convey that fact to the reader. In other words, it means that this is a domain name dealing with the buying of Valium and is directed to Internet users who might be interested in buying that drug.
In this regard, with respect to the use of the word “buy”, it has been consistently held by UDRP panels that the addition of generic or common words to a trademark does not negate or detract from what would otherwise be a finding of confusing similarity. It is necessary here, in support of that proposition, to cite only F. Hoffmann-La Roche AG v. Pinetree Development, Ltd.,WIPO Case No. D2006-0049, which applied this principle specifically to the addition of the word ‘buy’ and the very recent decision in Sanofi-aventis v. Edith Van Der Linden,WIPO Case No. D2006-0372 which held that <buyambien.info> was confusingly similar to AMBIEN.
With respect to the use of the word “Xanax” there is a lot to be said for the Complainant’s point that this increases the confusion, for at least some users would see the inclusion of this word in the domain name as a suggestion that the manufacturer of Xanax was sponsoring the domain name, or that the Complainant was sponsoring the promotion of Xanax, both of which are incorrect.
Moreover, such a close correlation between the domain name and the trademark VALIUM and such an obvious attempt to invoke the name of such a prominent trademark, can only be described as a similarity within the meaning of the Policy.
Furthermore, the similarity can only be described as confusing, for an objective observer would think that the word “valium” used in the domain name is the same as that in the trademark. That is so because consumers form a general impression of what they observe and it is beyond argument that the general impression that consumers would form from reading the domain name is that it is invoking the well-known pharmaceutical product Valium.
It is also now well established that the confusing similarity thus created is not negated by the presence in the domain name of suffixes such as the gTLD suffixes ‘. com’, ‘net’, or ‘.org’.
As the Complainant’s parent company is the registered proprietor of the VALIUM trademark, as the Complainant thus has rights in the trademark and as the Panel finds that the domain name is confusingly similar to the trademark, the Complainant has established the first of the three elements that it must prove under the Policy.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the domain name.
But by virtue of paragraph 4(c) of the Policy, it is open to a respondent to establish its rights or legitimate interests in a 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.
Thus, if a respondent proves any of these elements or indeed anything else that shows it has a right or legitimate interest in the domain name, the complainant will have failed to discharge its onus and the complaint will fail.
The Panel’s task in deciding if a registrant has any rights or legitimate interests in a domain name is made more difficult when the registrant is in default and does not file a Response or any other form of submission. The Respondent in the present case was given notice that it had until September 25, 2007 to send in its Response, that it would be in default if it did not do so and that, by virtue of paragraph 14 of the Rules, the Panel might draw appropriate inferences from that default.
It is also well established that, as it is put in paragraph 2.1 of the Overview of WIPO Panel Views on Selected UDRP Questions, “…a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP”.
The Panel, after considering all of the evidence in the Complaint and the exhibits attached to it, finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the domain name.
The Respondent chose, as an essential part its domain name, the famous VALIUM trademark and the name of the Complainant’s famous product without the Complainants’ authorization or approval. The Respondent then linked the domain name to a website offering for sale a version of the product Valium that has not been approved by the Food and Drug Administration. The consequence is that sales of this drug are illegal in the United States of America, but it may be bought through the website without a physical or psychiatric examination and without prescription. The website has no affiliation or connection with the Complainant and the Respondent was thus attempting to trade on the Complainant’s reputation, mislead potential customers and create customer confusion as well as engaging in activities which are illegal and dangerous to health.
It has been held many times, as it was put in Baudville, Inc. v. Henry Chan,
WIPO Case No. D2004-0059, that “…no rights or legitimate interest derive from this type of use of another’s trademark”.
These facts give rise to the prima facie case made out by the Complainant. The Respondent has not made any attempt to rebut this prima facie case, and the Panel therefore concludes that the Respondent has no rights or legitimate interests in the domain name.
The Complainant has thus made out the second of the three elements that it must establish.
C. Registered and Used in Bad Faith
The Complainant must prove on the balance of probabilities both that the domain name was registered in bad faith and that it is being used in bad faith: Telstra Corporation Limitedv. Nuclear Marshmallows,
WIPO Case No. D2000-0003.
Paragraph 4(b) of the Policy sets out four circumstances, any one of which is evidence of the registration and use of a domain name in bad faith, although other circumstances may also be relied on, as the four circumstances are not exclusive. The four specified circumstances are:
“(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is 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) the 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) the 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 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 the site or location.”
The Panel finds that the Respondent registered the domain name in bad faith. To register such a famous name in a domain name without permission and with the intention of engaging in the activities of the Respondent described above and by that means misleading the public is the essence of bad faith.
The Panel therefore finds that the case falls squarely within the meaning of paragraph 4(b)(iii) of the Policy, as well as constituting general bad faith, for the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor by diverting potential buyers of Valium to the Respondent’s website to buy unofficial and non-approved drugs instead of buying official and approved drugs from the Complainant or its authorized suppliers.
The Panel also finds that the Complainant has made out its case under paragraph 4(b) (iv) of the Policy. The Panel finds that the Respondent’s actions constitute bad faith in both registration and use within the meaning of that paragraph. The reasons why that element has been made out are as follows.
First, the Respondent has undoubtedly been attempting to attract Internet users to its website within the meaning of paragraph 4(b)(iv), both with respect to the registration of the domain name and its use. Looking at the screenshot of the website to which the domain name has resolved, which appears as it was on August 24, 2007 in exhibit 8 to the Complaint, it is impossible to accept that this was done for any reason other than commercial gain in one form or another, for all of the products described on the website are for sale with specified prices.
Secondly, by using the VALIUM trademark as a prominent part of its domain name, the Respondent created the likelihood of confusion with the VALIUM trademark itself and the drug of the same name.
Thirdly, the confusion likely to be created is confusion with the VALIUM trademark about the affiliation of the Valium for sale on the Respondent’s website and as to whether they are the Complainant’s genuine products or endorsed by it or are in some way associated with it, particularly as the website promotes products using the expression “Buy Xanax Online & Buy Valium Online!”. The website also purports to give a scientific explanation of Valium and enables the product of that name to be purchased online. Clearly, consumers who are using the disputed domain name would have arrived at this website because they were seeking a specific brand name that they knew existed, namely Valium. When the website promotes goods actually claiming to be Valium and declares that the goods are Valium, some consumers will believe that these are the genuine Valium product, manufactured by the Complainant, and lawful to buy, which they are not.
There is therefore clear scope for confusion as to whether the goods and services being promoted on the website are associated with Valium and the Complainant.
The Panel finds that these circumstances create confusion with the Complainant’s trademark as to the sponsorship, affiliation and endorsement of the Respondent’s site and the products and services on it and that the Respondent must be taken to have intended this confusion and to have been doing it for commercial gain in one form or another.
The facts therefore come within paragraph 4(b)(iv) of the Policy and constitute bad faith both in registration and use, a conclusion that has often been reached by UDRP Panels on analogous facts; see for example: Identigene, Inc. v. Genetest Laboratories,WIPO Case No. D2000-1100; MathForum.com v. Weiguang Huang,
WIPO Case No. D2000-0743 and IndyMac Bank, F.S.B. v. Jim Kato, FA 190366 (Nat. Arb. Forum).
For these reasons, the Panel finds that the Respondent registered and used the domain name in bad faith and that the Complainant has therefore made out the third of the three elements it must prove.
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 <buyxanaxbuyvalium.com>, be transferred to the Complainant.
The Honourable Neil Anthony Brown QC Sole Panelist
Dated: October 19, 2007
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