|Kläger||F. Hoffmann-La Roche AG|
|Entscheider||Waldbaum, Maxim H.|
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. N/A / Krzysztof Balicki
Case No. D2006-1609
1. The Parties
The Complainant is F. Hoffmann-La Roche AG, Basel, Switzerland, represented by Jrme Rhein, Switzerland.
The Respondent is N/A / Krysztof Balicki, Poland.
2. The Domain Name and Registrar
The disputed domain name <1buyvalium.com> (the “Disputed Domain Name”) is registered with RegisterFly.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December19,2007. On December20,2006, the Center transmitted by email to RegisterFly.com a request for registrar verification in connection with the domain name at issue. On January15,2007, RegsiterFly.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on January19,2007. 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 the Respondent of the Complaint, and the proceedings commenced on January30,2007. In accordance with the Rules, paragraph 5(a), the due date for Response was February19,2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February21,2007.
The Center appointed Maxim H. Waldbaum as the sole panelist in this matter on March6,2007. 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 following uncontested facts are summarized from the Complaint.
Complainant is together with its affiliated companies one of the world’s leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics and having global operations in more than 100 countries. Complainant’s mark VALIUM is protected as a trademark in a multitude of countries worldwide. For example, Complainant holds International Registration No. R250784 for the trademark VALIUM. Priority date for the mark is October20,1961.
The mark VALIUM designates a sedative and anxiolytic drug belonging to the benzodiazepine family, which enabled Complainant to build a world-wide reputation in psychotropic medications. For the mark VALIUM Complainant holds registrations in over hundred countries on a world-wide basis.
Respondent registered the Disputed Domain Name on December3,2006.
5. Parties’ Contentions
Complainant’s Contentions Regarding Confusing Similarity:
The Disputed Domain Name is confusingly similar to Complainant’s VALIUM mark seeing that it incorporates the mark in its entirety.
The mark VALIUM is well-known and notorious. The notoriety will increase the likelihood of confusion. Furthermore, Complainant’s use and registration of the mark VALIUM do predate Respondent’s registration of the Disputed Domain Name. Therefore the Disputed Domain Name is confusingly similar to the trademark of Complainant.
Complainant’s Contentions Regarding Respondent’s Rights or Legitimate Interests:
Complainant has exclusive rights for VALIUM, and no license, permission, or authorization was granted to Respondent to use VALIUM in the Disputed Domain Name. Furthermore it is obvious that Respondent uses the domain for commercial gain and with the purpose of capitalizing on the fame of the Complainant’s mark VALIUM.
The website associated with the Disputed Domain Name contains information about Complainant’s Valium product, but also provides sponsored links to Netseter.com (a search engine with search results for Valium), to the Free Online Encyclopedia (which provides sponsored links to on-line pharmacies), to “www.1buycialis.com” (another website owned by Respondent, which promotes a product manufactured by a competitor of Complainant) and to “www.123-pharmacy.com” (an online pharmacy).
Such a website does not represent a bona fide offering of goods or services. Respondent’s only reason in registering and using 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, presumably via advertised click-through revenue. There is no reason why the Respondent should have any right or interest in the Disputed Domain Name.
Complainant’s Contentions Regarding Bad Faith Registration and Use:
The Disputed Domain Name was registered in bad faith because at the time of the registration, July14,2005, Respondent had, no doubt, knowledge of Complainant’s well-known product/mark, VALIUM.
The Disputed Domain Name is also being used in bad faith. This is obvious because Respondent’s website contains sponsored links to other commercial websites, and thus Respondent uses the Disputed Domain Name to intentionally cause confusion with Complainant’s well-known mark as to the source, affiliation and endorsement of Respondent’s website or of the products or services posted on or linked to by Respondent’s website. By capitalizing on this confusion, Respondent may generate click-through revenues by Internet users looking for Complainant’s products. Respondent therefore is using Complainant’s mark in bad faith.
Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph4(a) of the Policy, the Complainant must prove that:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that Complainant has rights, through registration and use, in the mark VALIUM. The Panel further finds that the Disputed Domain Name, which differs from the mark only by virtue of the inclusion of the prefix “1buy”, is confusingly similar to Complainant’s mark. Numerous panels in prior cases under the Policy have held that the mere addition of a descriptive word or term to the complainant’s trademark does not overcome confusing similarity. See, e.g., Sanofi-aventis v. Edith Van Der Linden, WIPO Case No. D2006-0372 (involving <buyambien.info>); Roche Products Inc. v. Eugene Geist, WIPO Case No. D2006-0697 (involving <valium-site.com>).
Accordingly, the Panel finds that paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Pursuant toparagraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Disputed Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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.
Complainant bears the burden of proof on the “rights or legitimate interests” issue (asitdoes for all three elements of the Policy). Louis de Bernieres v. Old Barn Studios Limited, WIPO Case No. D2001-0122.
Respondent, who filed no response in this proceeding, has not invoked any of the circumstances of Policy,paragraph4(c) to suggest any “rights or legitimate interests” in respect of the Disputed Domain Name.
Based on the evidence put forward by Complainant, Respondent was not licensed or authorized by Complainant to use the latter’s mark in any manner. Respondent’s use of the Disputed Domain Name for a website that contains general information about Complainant’s product while providing links to unrelated third-party commercial websites are neither fair use nor bona fide under the Policy. There are numerous prior decisions under the Policy holding that the unauthorized appropriation of another’s trademark in one’s domain name and the commercial use of the corresponding website do not confer rights or legitimate interests upon the owner of such a domain name. See Sigikid H. Scharrer & Koch GmbH & Co. KG, MyBear Marketing-und Vertriebs GmbH, Mr. Thomas Dufner v. Bestinfo, WIPO Case No. D2004-0990 (“the sole diversion of Internet traffic by Respondent to other, unrelated websites, does not represent a use of the Domain Name in connection with a bona fide offering of goods and services. Rather, the conduct of Respondent serves the purpose of generating revenues, e.g. from advertised pay-per-click products”); Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784 (“several cases have found that a registrant has no legitimate interest in a domain name that is similar to a pharmaceutical manufacturer’s mark and that is being used to direct consumers to an on-line pharmacy”).
Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Paragraph4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Disputed Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line 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.
The Panel finds that Respondent in all probability had Complainant’s mark in mind when registering the Disputed Domain Name. VALIUM is a fanciful mark, and its constituent combination of letters has no known meaning other than as a reference to Complainant’s famous Valium product. See Roche Products Inc. v. Peter Tonderby/Tonderby Designs Ltd, WIPO Case No. D2006-0698 (“Registration of a domain name that is confusingly similar to a famous trademark by any entity that has no relationship to that mark is itself sufficient evidence of bad faith registration and use. No relationship exists between Complainant and Respondent, and Complainant has not authorized or licensed Respondent to use the VALIUM mark”).
Respondent has also used the Disputed Domain Name in bad faith, within the meaning of paragraph 4(b)(iv) of the Policy, by hosting sponsored links to commercial websites where products in competition with Complainant’s products are offered for sale. See L’Oral, Biotherm, Lancme Parfums et Beaut & Cie v. Unasi, Inc., WIPO Case No. D2005-0623 (“such exploitation of the reputation of trademarks to obtain click-through commissions from the diversion of Internet users is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous decisions”).
Based on the undisputed evidence, there is no reasonable conclusion other than that Respondent registered the Disputed Domain Name with the intention of seeking to attract, for commercial gain, Internet visitors to his website by creating confusion between the Disputed Domain Name and Complainant’s mark.
Accordingly, the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied.
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 <1buyvalium.com> be transferred to Complainant.
Maxim H. Waldbaum