F. Hoffmann-La Roche AG v. MCOB Path finders L.L.C
Case No. D2007-1865
1. The Parties
The Complainant is F. Hoffmann-La Roche AG, Basel, Switzerland, represented internally.
The Respondent is MCOB Path Finders L.L.C, London, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <valium-prescription.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 14, 2007. On December 17, 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 17, 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 19, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was January 8, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 9, 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 one of the leading research-focused healthcare groups in the pharmaceutical industry. The Complainant has operations in over one hundred countries.
The Complainant’s mark VALIUM is protected as trademark in a multitude of countries worldwide. The mark has been in used since at least October 20, 1961. The mark VALIUM designates a sedative and anxiolytic drug belonging to the benzodiazepine family. The trademark VALIUM, is well-known and famous. For the mark VALIUM, the Complainant holds registrations in over hundred countries on a world-wide basis.
The domain name at issue here was registered on November 6, 2007. The Respondent in this proceeding is MCOB Path Finders L.L.C.
5. Parties’ Contentions
A. Complainant
The Complainant’s mark VALIUM is protected as trademark in a multitude of countries worldwide. Priority date for the mark VALIUM is October 20, 1961. The mark VALIUM designates a sedative and anxiolytic drug belonging to the benzodiazepine family, which enabled the Complainant to build a world-wide reputation in psychotropic medications. For the mark VALIUM, the Complainant holds registrations in over hundred countries on a world-wide basis.
The Complainant submits that the domain name of the Respondent is confusingly similar to the Complainant’s mark seeing that it incorporates this mark in its entirety. The mark VALIUM is well-known and notorious. The notoriety will increase the likelihood of confusion. The domain name is confusingly similar to the trademark of the Complainant.
The Complainant has exclusive rights for VALIUM, and no license, permission, authorization or consent was granted to use “valium” in the domain name. The Respondent’s only reason in registering and using the contested 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 any right or interest in such domain name.
The Complainant contends that the domain name was registered in bad faith since at the time of the registration, i.e., on November 6, 2007, the Respondent had, no doubt, knowledge of the Complainant’s well-known product/mark VALIUM.
The domain name is also being used in bad faith. This is obvious since when reviewing the Respondent’s website, one realizes that the Respondent is intentionally attempting (for commercial purpose) to attract Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s well-known mark as to the source, affiliation and endorsement of the Respondent’s website or of the products or services posted on or linked to the Respondent’s website.
Finally, the Complainant argues that the Respondent, by using the disputed domain name, is intentionally misleading the consumers and confusing them so as to attract them to other websites making them believe that the website behind those links are associated or recommended by the Complainant.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The first question the Panel has to answer is whether the domain name in issue here is identical or confusingly similar with the Complainant’s trademark VALIUM. According to the evidence submitted by the Complainant, the Panel can conclude that the Complainant is indeed the holder of multiple registrations for the trademark VALIUM. The Panel further finds as stated by the Complainant that the trademark is widely known around the world, it is probably the most widely prescribed
anti-depressant in the world. The domain name at issue is comprised of four elements, all of which are general or generic terms with the only exception of the trademark VALIUM, which is included in the domain name. The question then becomes, whether the adding of these generic or common terms or signs eliminates the likelihood of confusion. It is the view of the Panel that in the present case not only does the adding of the word “prescription” not eliminate the likelihood of confusion but it adds to it. The adding of the word “prescription” to the domain name suggests that the website is related to pharmaceutical products, mainly Valium, reinforcing the idea that the pharmaceutical products offered on the site are those manufactured by the Complainant.
The Panel finds the domain name <valium-prescription.com> confusingly similar to the Complainant’s trademark VALIUM.
B. Rights or Legitimate Interests
The Complainant asserts that it has granted no license or authorized the Respondent in any way to use the Complainant’s trademark. The Panel accepts this uncontradicted assertion. It is now well-established that under this element of the Policy, a complainant will need to make a prima facie showing of the respondent’s lack of rights or legitimate interests to the domain name. Once a complainant has made such a showing, it will be for the respondent to demonstrate that it has rights or legitimate interests. The Policy gives the Respondent the chance to demonstrate to the Panel that it has rights or legitimate interests in respect of the domain name in issue. Under paragraph 4(c) the 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.
“(i) before any notice to you 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 (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 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.”
If the Respondent proves any of these elements, the Complainant will have failed and thus the Complaint will fail.
In this case, 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 disputed domain name.
The Respondent has not rebutted the Complainant’s contentions, accordingly in the circumstances of this case, the Panel concludes that the Respondent has no rights or legitimate interests in the 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 practitioners guidance as it lists a series of elements any of which evidence bad faith. Although the list of elements is not exclusive and other circumstances may be taken into consideration by the panel; the list does offer a valuable guide for parties and panels when construing and applying paragraph 4(a)(iii) of the Policy. In this case the Respondent’s actions fall within the elements set forth in paragraph 4(b)(iv), as the Panel can infer from visiting the website in issue, that the Respondent most likely knew about the Complainant’s trademark at the time it registered the domain name, not only due to the fame of the trademark, but also considering the adding of the word “prescription” to the domain name which clearly suggests the Respondent knew Valium is a prescription drug. Furthermore the 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 the 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 domain name, <valium-prescription.com> be transferred to the Complainant.
Francisco Castillo-Chacón Sole Panelist
Dated: January 29, 2008
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