F. Hoffmann-La Roche AG v. Andris Maupalis TraffMan
Case No. D2007-1551
1. The Parties
The Complainant is F. Hoffmann-La Roche AG, Basel, Switzerland, represented by an internal representative.
The Respondent is Andris Maupalis TraffMan, Riga, Latvia.
2. The Domain Name and Registrar
The disputed domain name <valium-am.info> (the “Disputed Domain Name”) is registered with EstDomains, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 19, 2007. On October 22, 2007, the Center transmitted by email to EstDomains, Inc. a request for registrar verification in connection with the Disputed Domain Name. On October 22, 2007, EstDomains, Inc. transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 26, 2007. 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 October 29, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was November 18, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 19, 2007.
The Center appointed Michael D Cover as the sole panelist in this matter on November 26, 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 Disputed Domain Name is <valium-am-info>. The Complainant, together with its affiliated companies, is one of the world’s largest research-focused healthcare groups in the fields of pharmaceuticals and diagnostics, with operations in over 100 countries. The Complainant’s trademark, VALIUM, is protected in over one hundred countries throughout the world. An example is International Registration No. R250784 VALIUM, which is based on a Swiss registration going back to October 20, 1961.
The Complainant uses the trademark to designate a sedative and anxiolytic drug belonging to the benzodiazepine family and has built a worldwide reputation in psychotropic medications for the product sold under the VALIUM trademark, which was first approved for use in 1963.
The Complainant’s use and registration of the trademark predate the registration of the Disputed Domain Name, which was registered on September 20, 2006.
Nothing is known about the Respondent, not least as the Respondent has not filed a Response. The Disputed Domain Name links to a website with sponsored links, including to “Valium Online” and to “Valium Medicine”.
5. Parties’ Contentions
A. Complainant
The Complainant submits that the Disputed Domain Name is confusingly similar to its trademark VALIUM. It states that the Disputed Domain Name incorporates the Complainant’s trademark in its entirety. It also submits that the trademark VALIUM is well-known and notorious and this is likely to increase the likelihood of confusion.
With regard to the Respondent having no rights or legitimate interests in respect of the Disputed Domain Name, the Complainant asserts its exclusive rights to the trademark VALIUM and also relies on the fact that no licence or permission has been granted to the Respondent to use VALIUM in the disputed Domain Name.
It points to the Disputed Domain Name linking to a website composed of a search engine with sponsored links. It maintains that the Respondent’s only reason to register and use the Disputed Domain Name is to benefit from the reputation of the trademark VALIUM and illegitimately to trade on its fame for commercial gain.
Finally, the Complainant states that the Disputed Domain Name was registered in bad faith because, at the time of the registration of the Disputed Domain Name on September 20, 2006, the Respondent must have had knowledge of the Complainant’s well-known trademark and product VALIUM.
It goes on to assert that the Disputed Domain Name is being used in bad faith, since the Respondent is using the website that is linked to the Disputed Domain Name to attract Internet users to that website, by creating a likelihood of confusion with the Complainant’s well-known mark.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Disputed Domain Name contains the whole of the Complainant’s well-known trademark VALIUM. The addition of a descriptive word, such as “am” and the addition of the hyphen, do not distinguish the Disputed Domain Name from the Complainant’s trademark. The Panel accordingly finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark VALIUM.
B. Rights or Legitimate Interests
The Complainant has to prove a negative under this heading. However, it is able to show a prima facie case, in that it has not granted any licence or permission to the Respondent. It points also to the sponsored links already referred to in this decision.
The Respondent has not filed a response. It has therefore not shown use or demonstrable preparations for use of the Disputed Domain Name or a name corresponding to it in connection with a bona fide offering of goods or services. Nor has it been able to show that has been commonly known by the Disputed Domain Name.
The final heading of the non-exhaustive list of how to demonstrate rights or legitimate interests is that Respondent is making legitimate noncommercial or fair use of the Disputed Domain Nam, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue. As the Respondent has not filed a Response, it has not been able to establish this. Indeed, the Complainant has been able to point to the website which is a search engine with the sponsored links, as already set out in this opinion.
For all these reasons, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
C. Registered and Used in Bad Faith
The Panel finds that is highly unlikely that the Respondent was not aware of the trademark VALIUM and the product sold under the trademark at the time when the Disputed Domain Name was registered in September 2006. The trademark was first registered in 1961 and the product sold under the trademark was first approved for use in 1963.
L’Oreal, Biotherm, Lancome Perfums & Beaute & Cie v. Unasi, Inc,
WIPO Case No. D2005-0623 is a decision that is cited by the Complainant and which shows that exploitation of trademarks through click-throughs is a common example of use in bad faith as identified in many other decisions when considering use in bad faith and Paragraph 4(b)(iv) of the Policy in particular. The Panel finds that the Respondent has, by using the Disputed Domain Name, intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark VALIUM as to the source, sponsorship, affiliation or endorsement of that website or of a product on that website.
The Panel accordingly finds that the Disputed Domain Name was registered and is being 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 Disputed Domain Name, <valium-am.info>, be transferred to the Complainant.
Michael D Cover Sole Panelist
Dated: December 10, 2007
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