F. Hoffmann-La Roche AG v. PrivacyProtect.org, Contact Id 1328832, Alexey Dronin
Case No. D2008-0417
1. The Parties
Complainant is F. Hoffmann-La Roche AG, Basel, Switzerland, represented internally.
Respondent is PrivacyProtect.org, Moergestel, Netherlands; Contact Id 1328832, Alexey Dronin, Moscow, Russia.
2. The Domain Name and Registrar
The disputed domain name <valiumnoprescription.net> is registered with EstDomains, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 17, 2008. On March 19, 2008, the Center transmitted by email to EstDomains, Inc. a request for registrar verification in connection with the disputed domain name. On March 19, 2008, EstDomains, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint and stating that Respondent had not submitted to the jurisdiction of the court at the principal office of the registrar. The Center sent an email communication to Complainant on March 28, 2008, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint, naming the newly disclosed registrant and submitting to the jurisdiction of the court at the domain name holder’s address. Complainant filed an amendment to the Complaint on March 28, 2008. 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 Respondent of the Complaint, and the proceedings commenced on April 1, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was April 21, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 23, 2008.
The Center appointed M. Scott Donahey as the sole panelist in this matter on April 25, 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
Complainant is the holder of an international trademark registration for the mark VALIUM which issued on December 20, 2001, showing a priority date of October 20, 1961. Complaint, Annex 3. Complainant has operations in more than 100 countries and is one of the world’s largest pharmaceutical companies. Complainant has introduced evidence in the form of newspaper articles which establish that the VALIUM mark is famous and notorious. Complaint, Annex 5.
Respondent registered the domain name at issue on February 1, 2008. Complaint, Annex 1. Respondent is using the domain name at issue to resolve to a web site at which various business offer “generic valium” and other drugs for sale, as well as links to sites offering automobiles for sale, rent-a-cars, and other automotive products. Complainant has not authorized, licensed, or permitted Respondent to use the domain name at issue.
5. Parties’ Contentions
A. Complainant
Complainant contends that the domain name at issue is confusingly similar to Complainant’s VALIUM mark, that Respondent is not authorized, licensed or permitted to use Complainant registered trademark and that Respondent has no rights or legitimate interests in respect of the domain name at issue, and that Respondent has registered and is using the domain name at issue in bad faith.
B. Respondent
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
(1) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) that the respondent has no rights or legitimate interests in respect of the domain name; and
(3) that the domain name has been registered and is being used in bad faith.
A. Jurisdiction to Which Complainant Has Agreed to Submit
Under Paragraph 1 of the Rules, “Mutual Jurisdiction” is defined as follows: “Mutual Jurisdiction means a court jurisdiction at the location of either (a) the principal office of the Registrar (provided the domain-name holder has submitted in its Registration Agreement to that jurisdiction for court adjudication of disputes concerning or arising from the use of the domain name) or (b) the domain-name holder’s address as shown for the registration of the domain name in Registrar’s Whois database at the time the complaint is submitted to the provider.” (Emphasis added). In the present case the registrant did not submit in its Registration Agreement to the jurisdiction of the courts at the principal office of the registrar, and Complainant amended its Complaint to submit “to the jurisdiction of the courts at the location of the domain-holder’s address as shown for the registration of the domain name in Registrar’s Who-Is database at the time when we submitted the Complaint to WIPO-Center”.
The registrant Respondent elected to use a privacy service located in the Netherlands, and at the time that that Complainant submitted its Complaint to the Center, the “address as shown for the registration of the domain name in Registrar’s Whois database” was Moergestel, the Netherlands. Accordingly, the Panel finds that it is to the courts of this jurisdiction to which Complainant has agreed to submit.
B. Identical or Confusingly Similar
The domain name consists of Complainant’s registered mark to which the common term “no” and “prescription” are appended and the gTLD suffix .net. It has long been held that the addition of a generic or descriptive term to a mark will not alter the fact that the domain name at issue is confusingly similar to the mark in question. F. Hoffman-La Roche AG v. IT Developmers s.c. Tomasz Kraus, Lukasz Haluch,
WIPO Case No. D2006-1547 (<prescriptionsvalium.com>); Nokia Corporation v. Nokiagirls.coma.k.a. IBCC,
WIPO Case No. D2000-0102 (<nokiagirls.com>); Eauto L.L.C. v. Net Me Up,
WIPO Case No. D2000-0104 (<eautomotive.com>). The Panel finds that the domain name at issue is confusingly similar to Complainant’s registered mark.
C. Rights or Legitimate Interests
The consensus view of WIPO panelists concerning the burden of establishing no rights or legitimate interests in respect of the domain name is as follows:
While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a 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.
In the present case the Complainant alleges that Respondent has no rights or legitimate interests in respect of the domain name, nor has Complainant granted Respondent a license, permission, or authorization to use its registered VALIUM trademark. Respondent has failed to respond to Complainant’s assertions. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the domain name at issue.
D. Registered and Used in Bad Faith
Respondent is using the domain name at issue to resolve to a web site on which Complainant’s VALIUM mark is prominently featured and which contains links to other sites that are wholly unrelated to Complainant but which undoubtedly provide revenue in the form of pay-per-click payments to Respondent. Respondent’s use of <valiumnoprescription.net> to resolve to a parking web site cannot be regarded as a right or legitimate interest in respect of the domain name. Burberry Limited v. Startelecom, WIPO Case No. D2005-1114. This is a clear case of a violation of paragraph 4(b)(iv) of the Policy by using the domain name at issue to intentionally attract for commercial gain Internet users to Respondent’s web site by creating a likelihood of confusion with Complainant’s marks. The Panel finds that the domain name at issue has been 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 domain name, <valiumnoprescription.net> be transferred to Complainant.
M. Scott Donahey Sole Panelist
Dated: May 5, 2008
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