The Complainant is Roche Products Inc. of Panama, represented by Lathrop & Gage L.C., United States of America.
The Respondent is The Heller Group of United States of America.
2. The Domain Name and Registrar
The disputed domain name <valium-treatment.com> is registered with Wild West Domains, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 8, 2007. On December 10, 2007, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the domain name at issue. On December 10, 2007, Wild West Domains, Inc. 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 12, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was January 1, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 4, 2008.
The Center appointed Keiji Kondo as the sole panelist in this matter on January 17, 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
A. Trademark Registrations
The Complainant’s mark VALIUM is protected as a trademark for a pharmaceutical psychotherapeutic agent in the United States of America. VALIUM is registered to the Complainant in the United States Patent and Trademark Office (“U.S.P.T.O.”) under Registration Number 7,25,548. Also, the Complainant owns Registration Number 1,314,271 in the U.S.P.T.O. for a design trademark consisting of a circular shaped tablet with a stylized “V” punched through the center of the tablet.
B. Other Factual Background
(a) The Complainant, together with its affiliated companies, is one of the leading manufacturers of pharmaceutical and diagnostic products in the world. For example, the trademark VALIUM has been in use since 1961. Also, the Complainant has used the “V” tablet design mark since 1984.
(b) The mark VALIUM designates a psychotherapeutic agent, namely, a pharmaceutical product indicated for the treatment and prevention of anxiety. The Complainant’s mark VALIUM has been extensively promoted, without limitation, in print advertisements in medical journals, promotional materials, packaging, medical informational materials, television advertising and direct mailings. Sales of the Valium pharmaceutical preparation have exceeded hundreds of millions of dollars in the United States of America since 1961.
(c) Advertising and promotion for Roche’s Valium psychotherapeutic agent using the mark VALIUM has been extensively used and widely circulated by the Complainant in the United States of America, and the product has acquired fame and celebrity, symbolizing the goodwill that Roche has created in the United States of America and throughout the world.
(d) Roche’s parent company, F. Hoffmann-La Roche AG (collectively, “Roche”), owns and has registered the domain name <valium.com>. When an Internet user types the wording “valium.com” in a web browser’s URL address window he or she is directed to Roche’s website located at “www.rocheusa.com/products,” through which the Complainant’s customers obtain information as to the Valium pharmaceutical product manufactured and sold by Roche.
5. Parties’ Contentions
A. Complainant
The domain name at issue, <valium-treatment.com>, contains Roche’s entire VALIUM trademark. In light of Roche’s registered mark VALIUM and Roche’s domain name <valium.com>, the Respondent’s registration and use of the disputed domain name creates a strong likelihood of confusion as to source, sponsorship, association or endorsement of the Respondent’s website by Roche. After learning of the Respondent’s unauthorized registration of the domain name incorporating the mark VALIUM, on February 23, 2007, Roche, through its counsel, sent an e-mail to the Respondent’s e-mail address indicated on the WhoIs report, and a letter by certified mail, return receipt requested to the physical address indicated in the WhoIs record for the disputed domain name. In the February 23, 2007 communication, Roche’s counsel advised the Respondent that the registration of the disputed domain name infringed Roche’s trademark rights and requested that the Respondent transfer the disputed domain name to Roche.
Numerous [ICANN] Panel decisions have established that the addition of words or letters to a mark used in a domain name does not alter the fact that the domain name is confusingly similar to the mark. Generally, a user of a mark ‘may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it.
The Respondent’s domain name incorporates the whole of the Complainant’s mark VALIUM and in the minds of millions of Internet users, to whom Valium is well-known, the addition by the Respondent of the word “treatment” in its domain name does nothing to detract from, and indeed is likely to reinforce the strong association between the word “valium” and the Complainant. Furthermore, on its website, the Respondent uses without authorization the Complainant’s VALIUM mark in its domain name, <valium-treatment.com>.
Thus, the Respondent’s domain name is identical or confusingly similar to the Complainant’s VALIUM trademark within the meaning of the Policy, paragraph 4(a)(i).
The Respondent has no rights or legitimate interests in the domain name, <valium-treatment.com>. “valium” is not a word and has no valid use other than in connection with the Complainant’s trademark. The Complainant has not authorized the Respondent to use its trademark VALIUM or to incorporate the trademark into any domain name. In fact, the Respondent’s use of the disputed domain name <valium-treatment.com>, indicates that the domain name is being used because of the goodwill created by the Complainant in the VALIUM trademark. Based upon the Respondent’s website, it is clear that neither the Respondent nor its website has been commonly known by the domain name <valium-treatment.com> pursuant to the Policy, paragraph 4(c)(ii).
The Respondent’s use of the disputed domain name is purely disreputable. Internet users who key in the disputed domain name <valium-treatment.com> in an Internet browser’s URL address box are directed to various websites including “www.buymedsquick.com”, on which an identical customer group is offered Valium online for purchase, which is not affiliated with or sponsored by Roche, but which, in a false and misleading manner states “valium, the generic diazepam”, misusing the Complainant’s mark VALIUM by using a small “v” and stating that Valium is a generic, rather than diazepam, then stating the reverse, all to the further confusion of purchasers and the detriment of Roche, the trademark owner. Additionally, the Valium drug, which is a psychotherapeutic agent, is dispensed through the Respondent’s website to consumers without undergoing a physical or psychotherapeutic examination to determine whether this psychotherapeutic medication is appropriate for them, (Attached as Exhibit 8 is a printout from the “www.valium-treatment.com” website and as Exhibit 9 is a printout from the “www.buymedsquick.com” website).
By the Respondent’s use and registration of the disputed domain name, it seeks to capitalize on the reputation associated with the Complainant’s VALIUM trademark and to use that recognition to divert Internet users seeking the Complainant’s website to a website wholly unrelated to Roche, namely, “www.valium-treatment.com”. The operator of the unrelated website has no affiliation or connection whatsoever with the Complainant. Such uses, including sales of a Valium product through a domain name containing the Complainant’s mark VALIUM in its entirety, to an identical customer group without permission from Roche, and falsely describing the Valium product as a generic when it is the Complainant’s “prescription only” brand drug for commercial gain are clear indications of bad faith. If the Respondent’s acts of unfair competition continue, they may cause very significant harm, namely damage to the Complainant’s reputation, and negative consequences to those consumers taking the Valium brand or generic diazepam psychotherapeutic agent medication when it is not appropriate for them.
The Respondent’s appropriation and use of the Complainant’s famous trademark is a clear attempt to create and benefit from consumer confusion regarding the association between the Complainant’s bona fide business and the Respondent’s misleading, descriptive and potentially health damaging activities. As such, it is clear that the Respondent has no rights or legitimate interests in the domain name.
The Respondent is not using the domain name in dispute in connection with a bona fide offering of goods or services. The Respondent is using the disputed domain name to divert Internet users seeking the Complainant’s website or the Valium drug to unrelated websites which provide a “prescription only” psychotherapeutic pharmaceutical product and a competitive generic version to the public without a physical and mental examination by an authorized medical professional, to see if this psychotherapeutic product is appropriate.
The Respondent’s use and incorporation of the Complainant’s famous trademark VALIUM in the disputed domain name is evidence of the Respondent’s intent to trade upon the reputation of the Complainant’s VALIUM trademark.
As discussed above, the Respondent’s use of Roche’s trademark is infringing. Under these circumstances, the Respondent’s use of the domain name cannot be considered bona fide.
The Respondent’s unauthorized use of the disputed domain name to solicit sales of a Valium product and a generic competitive product to an identical customer group without a license or permission on its websites is not a bona fide offering of goods and services under the Policy, paragraph 4(c)(i).
There is no evidence that the Respondent is making a legitimate non-commercial or fair use of the disputed domain name without intent for commercial gain. Clearly, the Respondent is trading on the Complainant’s goodwill in its famous VALIUM trademark and is using the disputed domain name <valium-treatment.com> to sell a Valium product as well as a competitive generic product to an identical customer group without permission or license. This does not represent a bona fide offering of goods or services under the Policy, paragraph 4(c)(i) or a legitimate non-commercial or fair use under the Policy, paragraph 4(c)(iii). The Respondent has no legitimate interest in the disputed domain name containing the Complainant’s famous mark VALIUM, is in no way connected with the Complainant, and is trading on the Complainant’s famous mark VALIUM for commercial gain.
The Respondent’s bad faith in registering and using the domain name is demonstrated by numerous facts. Specifically, the Complainant submits the following evidence:
(1) The Respondent’s true purpose in registering the disputed domain name which incorporates the Complainant’s VALIUM mark in its entirety is to capitalize on the reputation of the Complainant’s VALIUM mark by diverting Internet users seeking the Complainant’s website to the Respondent’s own website which uses the VALIUM mark in the disputed domain name to solicit orders for the Complainant’s product and various competitive diazepam products in a misleading manner as described above, without any permission from Roche, the trademark owner.
(2) The Respondent’s bad faith is clearly evident from the following facts:
i. The Complainant’s mark VALIUM is an invented and coined famous mark that has an extremely strong worldwide reputation;
ii. There exists no relationship whatsoever between the Respondent and the Complainant, and the Complainant has not given the Respondent permission to use its famous mark VALIUM in a domain name to sell any Valium product;
iii. Under these circumstances, the only reasonable conclusion is that the Respondent was aware of the VALIUM trademark, and seeks to divert Internet users to its website for its own commercial gain, all to the confusion of the public and detriment of Roche, the trademark owner.
iv. By operating the website located at “www.valium-treatment.com,” the Respondent has intentionally attempted to attract for financial gain Internet users to the Respondent’s website 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 the goods on the Respondent’s website.
v. The website to which customers are directed through the Respondent’s website which falsely and misleadingly advertises “valium the generic diazepam,” has no legitimate business connection with the Complainant or its Valium psychotherapeutic agent product. Such unauthorized use of the Complainant’s mark suggests opportunistic bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel has found that the Complainant has a trademark right to use VALIUM for psychotherapeutic agent in the United States of America under the registration number 725,548. The trademark is not only registered but also widely recognized by consumers of the tranquilizing drug diazepam.
The disputed domain name includes the Complainant’s trademark in its entirety, together with the generic word “treatment”. The addition of the word “treatment” does not dispel the confusing similarity between the domain name and the trademark. Rather, it simply strengthens the association by having people think that it relates to medical or psychotherepeutic treatment using Valium. The disputed domain name is therefore confusingly similar to the Complainant’s trademark. It is well-established that domain name suffixes are disregarded for the purpose of this comparison.
The Panel concludes that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides examples of circumstances that can demonstrate the existence of rights or legitimate interests in a domain name: (i) use of, or preparations to use, a domain name in connection with a bona fide offering of goods or services; (ii) the fact that a respondent has commonly been known by a domain name; and (iii) legitimate non-commercial or fair use of a domain name, without intent for commercial gain to mislead consumers or tarnish the trademark.
The Complainant must establish at least a prima facie case under this heading and, if that is made out, the evidential onus shifts to the Respondent to rebut the presumption of absence of rights or legitimate interests.
The Complainant has not licensed or otherwise authorized the Respondent to use its trademarks.
As to paragraph 4(c)(i) of the Policy, the website “www.valium-treatment.com” leads Internet users to a website having many links to other URLs. Many of which relate to pharmaceutical products or medical treatment that are not related to or affiliated with the Complainant. Considering the fact that “Valium” is well-known among consumers as the trademark of a tranquilizing drug diazepam, such use may easily confuse customers.
The Respondent has not submitted a Response to deny the Complainant’s assertions concerning the inappropriate nature of such use of the Complainant’s trademark or to explain why the disputed domain name was used for leading potential customers of pharmaceutical products to the “www.valium-treatment.com” website when there is no obvious connection between them. Under the circumstances, the Panel has found that the Respondent is not in any way engaged with, or preparing for, a bona fide offering of goods or services using the disputed domain name.
As will be discussed below, the Panel has found that the Respondent used the disputed domain name to profit by creating a likelihood of confusion with the Complainant’s trademark. This finding leads the Panel to conclude that paragraphs 4(c)(ii) or (iii) of the Policy do not apply to the disputed domain name.
The Complainant has established a prima facie case of lack of rights and legitimate interests and there is no rebuttal by the Respondent.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The disputed domain name suggests some connection with the tranquilizing drug diazepam known as Valium. The suffix “treatment” simply strengthens the connection because the product in question is a tranquilizer. Nevertheless, the Respondent has failed to submit any Response to establish its connection with treatment using Valium or any tranquilizer.
On the other hand, the trademark VALIUM is well-known among customers. The disputed domain name consists of the Complainant’s trademark plus the word “treatment”, which only suggests use of a pharmaceutical product for medical or psychotherapeutic treatment. The Panel infers from this that the Respondent registered the disputed domain name with the Complainant’s famous mark VALIUM in mind. Indeed the Respondent has not come forward to suggest otherwise.
The Panel is of the view that the Respondent intentionally attracted for commercial gain Internet users to its website and re-directing them to other links that offer products or services relating to medical or psychotherapeutic problems, intending to create a likelihood of confusion, or benefiting from the goodwill associated, with the trademark. In the absence of any other credible explanation from the Respondent, the Panel considers that the use of the disputed domain name was designed to generate profit for the Respondent by attracting customers seeking the Complainant or its Valium product.
The likelihood of confusion is not diminished by the fact that users arriving at that page will realize that they have reached the wrong destination. Paragraph 4(b)(iv) of the Policy is concerned with the intentional attracting of Internet users. Here, the Respondent used the disputed domain name to create “initial interest confusion” on the part of Internet users seeking the Complainant or its Valium product and in order to profit from at least some of that traffic.
Therefore, the Panel concludes that the disputed domain name was registered and has been 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 domain name, <valium-treatment.com> be transferred to the Complainant.
Keiji Kondo Sole Panelist
Dated: January 31, 2008
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