F. Hoffmann-La Roche AG v. PrivacyProtect.org/Domain Admin
Case No. D2007-1801
1. The Parties
The Complainant is F. Hoffmann-La Roche AG, Basel of Switzerland, represented internally.
The Respondent is PrivacyProtect.org/Domain Admin, of Netherlands.
2. The Domain Name and Registrar
The disputed domain name <valiumprescriptions.com> is registered with Rainydaydomains.com LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 5, 2007. On December 6, 2007, the Center transmitted by email to Rainydaydomains.com LLC a request for registrar verification in connection with the domain name at issue. On December 13, 2007, Rainydaydomains.com LLC 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 December 17, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was January 6, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 7, 2008.
The Center appointed Francisco Castillo-Chacón as the sole panelist in this matter on January 15, 2008. 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 is together with its affiliated companies one of the world’s leading research-focused healthcare groups in the pharmaceuticals and diagnostics fields and having global operations in more than 100 countries.
The Complainant is the owner of the trademark VALIUM, which it has registered in several different countries. The Complainant has used the trademark VALIUM since at least October 20, 1961.
The trademark VALIUM is used in connection with a sedative and anxiolytic drug belonging to the benzodiazepine family. Valium is a well know psychotropic widely used around the world.
The Respondent has registered the domain name <valiumprescriptions.com>.
5. Parties’ Contentions
A. Complainant
The Complainant argues that the domain name in issue is identical or confusingly similar to its trademark VALIUM, as it incorporates Complainant’s trademark in its entirety. The Complainant’s use and registration of the trademark VALIUM predates the respondent’s registration of the domain name in issue. The trademark VALIUM is notorious and well known which increases the likelihood of confusion.
Therefore the disputed domain name is identical or confusingly similar to the trademark of the Complainant.
The Respondent has no rights or legitimate interest in respect of the disputed domain name. The Complainant has exclusive rights over the trademark VALIUM, and no license, permission, authorization or consent to use was given to the Respondent. It is obvious that the Respondent uses the disputed domain name for commercial gain, seeking to capitalize on VALIUM’s fame.
The Respondent’s website is a search engine with sponsored links. Respondent’s only reason in registering the disputed domain name is to benefit from the reputation of the trademark VALIUM, and illegitimately trade on its fame for commercial gain and profit. There is no reason why the Respondent should have rights or legitime interests in such domain name.
The disputed domain name was registered and is being used in bad faith. The Respondent is intentionally attempting to attract Internet users to Respondent’s website, by creating a likelihood of confusion with the Complainant’s trademark VALIUM. The use of the disputed domain name seems to be advertising links to websites promoting and/or offering products and services, especially in the pharmaceutical field, which is Complainant’s business.
B. Respondent
The Respondent did not reply to the Complainant’s contentions. Default is not conclusive of the proceeding and the Complainant must prove its case.
6. Discussion and Findings
The Policy clearly states the three elements a complainant must prove in order to succeed in its case. All of which were addressed by the Complainant in the Complaint. The Panel will deal with each of them.
A. Identical or Confusingly Similar
The first question the Panel has to answer is whether the domain name in issue is identical or confusingly similar with the Complainant’s trademark VALIUM. According to the evidence submitted by the Complainant, this Panel can conclude that the Complainant is indeed the holder of multiple registrations for of the trademark VALIUM. This Panel further considers, as stated by the Complainant that the trademark is widely known around the world.
The domain name in issue is comprised of three elements, first the trademark VALIUM, followed by the word “prescriptions” and the generic “.com.” suffix. It is evident that the trademark VALIUM is contained in the disputed domain name, it is also evident that the trademark is attached to a common word. The question then becomes, whether the adding of the word “prescriptions” eliminates the likelihood of confusion. It is the view of this Panel that in the present case not only does the adding of the word “prescriptions” not eliminate the likelihood of confusion but it adds to it. The adding of the word “prescriptions” to the disputed domain name suggests that the website is related to pharmaceutical products, mainly Valium, reinforcing that the pharmaceutical products offered on the site are those manufactured by the Complainant.
The Panel finds the disputed domain name <valiumprescriptions.com> confusingly similar to the Complainant’s trademark VALIUM.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy a complainant must prove a negative, however only a prima facie showing is required from the complainant, once it is met, the burden of proof shifts to the respondent. By virtue of paragraph 4(c) respondent can establish its rights or legitimate interests in the domain name, showing any of the elements set forth in paragraph 4(c) of the Policy. If respondent proves any of these elements, complainant will have failed and thus the complaint will fail.
The Complainant has stated and submitted evidence to prove that it is the exclusive owner of the trademark VALIUM, and that the Respondent has no license, permission or authorization to use its trademark.
The Panel notes that the website with the disputed domain name is used to display sponsored links, directing users to third party commercial websites, some of which display products competing with the Complainant’s products. Such use of the disputed domain name is not a bona fide use of the domain name.
The Respondent has not rebutted Complainant’s contentions, accordingly, in the circumstances of this case, this Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy the Complainant must not only prove that the domain name is being used in bad faith, but also that it was registered in bad faith. The Policy offers helpful guidance when it lists a series of elements any of which evidence bad faith. Although the list of elements in not exclusive and other circumstances may be taken into consideration by the panel; the list offers a valuable guide for parties and panels when faced with the task of construing and applying paragraph 4(a)(iii) of the Policy. It this case Respondent’s actions fall within the elements set forth in paragraph 4(b)(iv). The Panel can infer from evidence submitted and visiting Respondent’s website, that the Respondent most likely knew about Complainant’s trademark at the time it registered the disputed domain name, as it is clear the choice of the word “prescriptions” was not accidental. Furthermore the disputed domain name is being used in bad faith as the Respondent is seeking to attract for commercial gain Internet users to the site at issue by creating a likelihood of confusion as to the source, affiliation and endorsement of Respondent’s website.
Therefore the Panel finds that the Respondent registered and used the disputed domain name 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 <valiumprescriptions.com> be transferred to the Complainant.
Francisco Castillo-Chacón Sole Panelist
Dated: January 29, 2008
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