WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

F. Hoffmann-La Roche AG v. Domain Administrator, See PrivacyGuardian.org / Rohit Bhatia

Case No. D2020-2378

1. The Parties

Complainant is F. Hoffmann-La Roche AG, Switzerland, internally represented.

Respondent is Domain Administrator, See PrivacyGuardian.org, United States of America / Rohit Bhatia, India.

2. The Domain Name and Registrar

The disputed domain name <buyvaliumnow.com> is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 11, 2020. On September 14, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 14, 2020, the Registrar 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. The Center sent an email communication to Complainant on September 15, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on September 15, 2020.

On September 15, 2020, the Center received an email communication from Respondent. In response to an invitation to suspend the proceeding, Complainant requested the suspension of the proceeding on September 16, 2020, for purposes of settlement discussions with Respondent. Pursuant to paragraph 17 of the Rules, the administrative proceeding was suspended until October 16, 2020.

Complainant contacted the Center on September 29, 2020, requesting the reinstitution of the proceeding. On September 29, 2020, the Center informed the Parties that the administrative proceeding was reinstituted.

The Center verified that the Complaint, together with the amended Complaint, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 29, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 19, 2020. The Center received an email communication from Respondent on October 14, 2020. On October 20, 2020, the Center informed the Parties that it would proceed with the panel appointment process.

The Center appointed Phillip V. Marano as the sole panelist in this matter on October 29, 2020. 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 F. Hoffman-La Roche AG, one of the world’s largest research-focused healthcare groups in the fields of pharmaceuticals and diagnostics, with global operations in more than one hundred countries. Complainant owns valid and subsisting registrations for the VALIUM trademark in numerous regions and countries, with the earliest priority dating back to October 20, 1961.

Respondent registered the disputed domain name on August 31, 2020. At the time of filing the Complaint, the disputed domain name resolved to a website with information about Complainant’s drug VALIUM and advertisements to “Shop Now”, “Order Valium thru Cash”, and “How can I order Valium thru Cash on delivery option?”

5. Parties’ Contentions

A. Complainant

Complainant asserts ownership of the VALIUM trademark and has adduced evidence of trademark registrations in numerous regions and countries around the world including China, the European Union, and Switzerland, with earliest priority dating back to October 20, 1961.

The disputed domain name is confusingly similar to Complainant’s VALIUM trademark, according to Complainant, because it incorporates the VALIUM trademark in its entirety, the addition of the descriptive elements “buy” and “now” does not sufficiently distinguish it, and the VALIUM trademark is well known throughout the world based on longstanding use by Complainant.

Complainant further asserts that Respondent lacks any rights or legitimate interests in the disputed domain name based on: the lack of any connection, affiliation, license or consent between Complainant and Respondent; the lack of any evidence that Respondent is known by the name “Valium”; Respondent’s redirection of the disputed domain name to an online pharmacy; and Respondent’s failure to reply to Complainant’s cease and desist correspondence.

Complainant argues that Respondent has registered and used the disputed domain name in bad faith for numerous reasons, including: the global notoriety and fame of the VALIUM trademark; Respondent’s addition of words like “buy” or “online” to a famous trademark; and Respondent’s use of the disputed domain name to redirect to a for-profit online pharmacy.

B. Respondent

On September 15, 2020, Respondent asserted by informal email that, “I bought this domain by mistake for blogging purposes and ready to surrender it. Please let me know what I need to do.”

Respondent did not otherwise reply to Complainant’s contentions.

6. Discussion and Findings

To succeed in its Complaint, Complainant must establish in accordance with paragraph 4(a) of the Policy:

i. the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights;
ii. Respondent has no rights or legitimate interests in respect of the disputed domain name; and,
iii. the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Ownership of a nationally or regionally registered trademark serves as prima facie evidence that Complainant has trademark rights for the purposes of standing to file this Complaint. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1 . Complainant submitted ample evidence that the VALIUM trademark has been registered in numerous countries and regions with priority dating back to October 20, 1961, nearly sixty years before the disputed domain name was registered by Respondent. Moreover, the Panel takes notice that Complainant’s VALIUM trademark is also registered in India (App. No. 205,607), where registration data suggests Respondent is located, with priority dating back to November 1, 1961. Thus, the Panel finds that Complainant’s rights in the VALIUM trademark have been established pursuant to the first element of the Policy.

The only remaining question under the first element of the Policy is whether the disputed domain name is identical or confusingly similar to Complainant’s VALIUM trademark. In this Complaint, the disputed domain name is confusingly similar to Complainant’s VALIUM trademark because, disregarding the “.com” generic Top-Level Domain (“gTLD”), the trademark is contained in its entirety within the disputed domain name. WIPO Overview 3.0 , section 1.7 . (“This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name … [I]n cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar...”). GTLDs, such as “.com” in the disputed domain name, are generally viewed as a standard registration requirement and are generally disregarded under the first element. WIPO Overview 3.0 , section 1.11 .

The confusing similarity is not dispelled by combination with the prefix “buy” or the suffix “now”. WIPO Overview 3.0 , section 1.8 (additional terms “whether descriptive, geographic, pejorative, meaningless, or otherwise” do not prevent a finding of confusing similarity where the relevant trademark is recognizable within the disputed domain name); see also AT&T Corp. v. WorldclassMedia.com, WIPO Case No. D2000-0553 (“Each of the domain names in dispute comprises a portion identical to [the ATT trademark] in which the Complainant has rights, together with a portion comprising a geographic qualifier, which is insufficient to prevent the composite domain name from being confusingly similar to Complainant’s [ATT trademark]”).

In view of Complainant’s longstanding registration for the VALIUM trademark, and Respondent’s incorporation of that trademark in its entirety in the disputed domain name, the Panel concludes that Complainant has established the first element of the Policy.

B. Rights or Legitimate Interests

Complainant must make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name, shifting the burden of production on this element to Respondent to come forward with evidence demonstrating such rights or legitimate interests. Where, as in this Complaint, Respondent fails to come forward with any relevant evidence, Complainant is deemed to have satisfied the second element of the Policy. WIPO Overview 3.0 , section 2.1 . Moreover, it is evident that Respondent, identified by registration data for the disputed domain name as Rohit Bhatia, is not commonly known by the disputed domain name or Complainant’s VALIUM trademark.

From the record in this case, it is evident that Respondent was, and is, aware of Complainant and its VALIUM trademark and that Respondent does not have any rights or legitimate interests in the disputed domain name. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. In addition, this Panel finds that Respondent’s assertion that it “bought this domain by mistake for blogging purposes” is neither credible or supported by the record. Rather, the evidence demonstrates that Respondent has used the disputed domain name to divert Internet users to an online pharmacy website featuring information about Complainant’s drug Valium and advertisements to “Shop Now”, “Order Valium thru Cash”, and “How can I order Valium thru Cash on delivery option?”

Use of the disputed domain name for an online pharmacy, replete with offers to purchase Complainant’s products online, cannot confer any rights or legitimate interest in the disputed domain name to Respondent. See, e.g., Ann Summers Limited v. Domains By Proxy, LLC / Mingchun Chen, WIPO Case No. D2018-0625 ("Furthermore, panels have found that unauthorized redirection to Complainant's website does not serve as evidence of rights or legitimate interests. Carrefour v. WhoisGuard, Inc., WhoisGuard Protected / Robert Jurek, Katrin Kafut, Purchasing clerk, Starship Tapes & Records, WIPO Case No. D2017-2533").

This Panel agrees, as Complainant correctly points out, with prior UDRP panels that have held, “using the words ‘buy’ and ‘online’ together with the mark VALIUM rather strengthens the impression that the disputed domain names are in some way connected to the Complainant…” F. Hoffmann-La Roche AG v. Fred Baker, Private Person, WIPO Case No. D2015-0566. The Panel finds that the composition of the disputed domain name adding the terms “buy” and “now” to the VALIUM trademark, along with the website, carries a risk of implied affiliation or suggests sponsorship or endorsement by Complainant, which is not a fair use.

In view ofthe absence of any evidence supporting any Respondent rights or legitimate interests in the disputed domain name, Respondent directing the disputed domain name to Complainant’s website with offers to sell Complainant’s products, the Panel concludes that Complainant has established the second element of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy proscribes the following non-exhaustive circumstances as evidence of bad faith registration and use of the disputed domain name:

i. circumstances indicating that Respondent has registered or Respondent has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to Complainant who is the owner of the trademark to a competitor of that Complainant, for valuable consideration in excess of Respondent’s documented out of pocket costs directly related to the disputed domain name; or

ii. Respondent has registered the disputed domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

iii. Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

iv. by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

Use of a domain name incorporating a trademark by an unauthorized third party to redirect Internet users to Respondent’s website is strong evidence of bad faith under paragraph 4(b)(iv) of the Policy. WIPO Overview 3.0 , section 3.1.4 ("Panels have moreover found the following types of evidence to support a finding that a respondent has registered a domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant's mark: … seeking to cause confusion for respondent’s commercial benefit, even if unsuccessful … the lack of a respondent’s own rights to or legitimate interests in a domain name [or] redirecting the domain name to a different respondent-owned website..."). Here, the disputed domain name misappropriates Complainant’s VALIUM trademark, adding the terms “buy” and “now”, and resolves to Respondent’s website that contains information on, and offers to purchase, Complainant’s VALIUM branded products. Accordingly, the Panel finds that use of the disputed domain name will divert potential customers from Complainant’s business to the website under the disputed domain name by attracting Internet users who mistakenly believe that the disputed domain name is affiliated with Complainant, and which may further mistakenly believe that the products offered on this website are authentic VALIUM products offered by Complainant, or by an entity affiliated to Complainant. To that end, it bears repeating that, the Panel finds Respondent’s informal assertion Respondent “bought this domain by mistake for blogging purposes” is neither credible or supported by the record.

The Panel further concludes that failure by Respondent to answer Complainant’s cease and desist letter “suggests that Respondent was aware that it has no rights or legitimate interests in the disputed domain name, and that the disputed domain name has been registered and is being used in bad faith.” See America Online, Inc. v. Antonio R. Diaz, WIPO Case No. D2000-1460 (internal citations omitted). See also Spyros Michopoulos S.A. v. John Tolias, ToJo Enterprises, WIPO Case No. D2008-1003. Furthermore, the failure of Respondent to submit any formal response this Complaint or address Complainant’s assertions, in the view of the Panel, is another indication of bad faith on the part of Respondent. See Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787.

Finally, although Complainant did not directly raise the issue as indicia of bad faith, it appears that Respondent has employed a proxy registration service merely to avoid being notified of a UDRP proceeding filed against it. Under such circumstances, UDRP panels tend to find that this supports an inference of bad faith. WIPO Overview 3.0 , section 3.6 . Use of a privacy or proxy registration service to shield a respondent’s identity and elude or frustrate enforcement efforts by a legitimate complainant demonstrates bad-faith use and registration of a disputed domain name. See Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696 (the use of a proxy registration service to avoid disclosing the identity of the real party in interest is also consistent with an inference of bad faith when combined with other evidence of evasive, illegal, or irresponsible conduct).

In view of the composition of the disputed domain name, Respondent directing the disputed domain name to Respondent’s website with offers to sell Complainant’s products, and Respondent’s failure to respond to Complainant’s cease and desist correspondence or submit a formal Response to this Complaint, and Respondent’s use of a proxy registration service to mask its identity, the Panel concludes that Complainant has established the third element of the Policy.

7. Decision

For 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 <buyvaliumnow.com> be transferred to Complainant.

Phillip V. Marano
Sole Panelist
Date: November 18, 2020