WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. ITWEB Domain Protection
Case No. D2008-0847
1. The Parties
The Complainant is F. Hoffmann-La Roche, Switzerland.
The Respondent is ITWEB Domain Protection, Panama.
2. The Domain Name and Registrar
The disputed Domain Name is <rochevalium.org>.
The registrar of the disputed Domain Name is Direct Internet Solutions Pvt. Ltd., d/b/a PublicDomainRegistry.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 3, 2008. On June 3, 2008, the Center transmitted by email to Direct Internet Solutions Pvt. Ltd., d/b/a PublicDomainRegistry.Com a request for registrar verification in connection with the domain name at issue.
On June 4, 2008, Direct Internet Solutions Pvt. Ltd., d/b/a PublicDomainRegistry.Com 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 June 12, 2008.
On June 12 and 17, 2008, the Center was notified via e-mail by email@example.com that “As of today this website is no longer available. The reason for this is the attention in the media causing an inflow of orders. This is certainly not our aim and we do not want to be irresponsible. As of today this website IS NO LONGER AVAILABLE.”
In accordance with the Rules, paragraph 5(a), the due date for Response was July 2, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 3, 2008.
The Center appointed Geert Glas as the sole panelist in this matter on July 21, 2008. The Administrative Panel (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.
On July 21, 2008, the Complainant and the Respondent were notified by the Center by email of the appointment of Geert Glas as the sole panelist in this matter. The same day, the Complainant, the Respondent and the Panel were notified by the Center that the Panel, in absence of exceptional circumstances, would be required to forward its decision to the Center by August 4, 2008. Also on the same day, the Panel received an electronic file in this matter by e-mail from the Center. The Panel subsequently received a hard copy of the file in this matter via courier mail from the Center.
The Panel has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties. The proceedings have been conducted in English.
4. Factual Background
The Complainant and its affiliated companies are a healthcare group in the field of pharmaceuticals and diagnostics and having global operations in more than 100 countries. See F. Hoffmann-La Roche AG v. Bulent Sedef, WIPO Case No. D2008-0636; F. Hoffmann-La Roche AG v. Denis Zaicev, WIPO Case No. D2008-0635; F. Hoffmann-La Roche AG v. Domain Administration Limited, WIPO Case No. D2008-0626; F. Hoffmann-la Roche AG v. Popo, WIPO Case No. D2008-0423.
Its products include the pharmaceutical product VALIUM which designates a sedative and anxiolytic drug belonging to the benzodiazepine family. According to the documentary evidence submitted, VALIUM is widely used as a treatment for anxiety and panic disorder. VALIUM remained the most prescribed anxiety drug in the United States of America.
The Complainant is the owner of the international trademark VALIUM which is registered pursuant to the Madrid Protocol under registration number 250784. The Complainant is also the owner of the international trademark ROCHE, which is registered pursuant to the Madrid Protocol under registration numbers 346223 and 832631 and of the European Community Trademark ROCHE which is registered under registration number 000223107.
On April 7, 2008, the Respondent registered the Domain Name <rochevalium.org> with Direct Internet Solutions Pvt Ltd. d/b/a PublicDomainRegistry.com.
It can be deducted from the evidence that the <rochevalium.org> website was used by the Respondent to run an on-line pharmacy. This is confirmed by the message formerly displayed on the website “www.rochevalium.org”: “As of today this website is no longer available. The reason for this is the attention in the media causing an inflow of orders” (own emphasis; Panel translation of “Vanaf vandaag is deze site niet meer beschikbaar. Reden hiervoor is de aandacht in de media, waardoor er een toestroom van bestellingen kwamen”).
The website is no longer available as of June 3, 2008. (“Vanaf heden is deze site NIET MEER BESCHIKBAAR”)
Today, the message on the website is the following: “This Account Has Been Suspended. Please contact the billing/support department as soon as possible”.
5. Parties' Contentions
A. The Complainant
The Complainant states that it is the owner of the registered trademarks ROCHE and VALIUM, protected in a multitude of countries worldwide. It claims that it is among the major pharmaceutical and diagnostic enterprises in the world and that its marks ROCHE and VALIUM are well-known marks. The Complainant believes this notoriety increases the likelihood of confusion.
The Complainant's legal argumentation is as follows:
The Complainant states that the Domain Name <rochevalium.org> entirely comprises both trademarks ROCHE and VALIUM, in which it has rights.
The Complainant contends that the Domain Name is confusingly similar to its registered trademarks ROCHE and VALIUM.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name because (i) the Complainant has not licensed, consented or authorized such use and (ii) it is obvious that the Respondent used the Domain Name for commercial gain and with the purpose of capitalizing on the fame of the Complainant's marks ROCHE and VALIUM.
The Complainant further contends that the bad faith of the Respondent in registering and using the Domain Name results from the following elements: (i) the Respondent knew of the existence of the Complainant's trademarks in view of the fact that both trademarks are well-known, (ii) the Domain Name is being used in bad faith to attract Internet users to the Respondent's website, by creating a likelihood of confusion with the Complainant's well-known marks 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 and (iii) the Respondent's only reason in registering and using the contested Domain Name is to benefit from the reputation of the trademarks ROCHE and VALIUM and illegitimately trade on their fame for commercial gain and profit.
The Complainant requests that the Domain Name be transferred to it.
B. The Respondent
The Respondent did not file a Response.
6. Discussion and Findings
A. Effect of the Default
The consensus view is that a respondent's default does not automatically result in a decision in favour of the Complainant and that the Complainant must establish each of the three elements required by paragraph 4(a) of the Policy. See e.g., Franklin Resources, Inc., Franklin Advisers, Inc., Templeton Asset Management Ltd. v. Franklin Fund Group, WIPO Case No. D2006-1607; Kieskeurig B.V. v. P. de Vries, WIPO Case No. D2008-0432; AIDA Cruises German Branch of Società di Crociere Mercurio S.r.l. v. Belize Domain WHOIS Service Lt, WIPO Case No. D2008-0109. However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.
This Panel finds that there are no exceptional circumstances which should prevent the Panel from drawing inferences from the failure of the Respondent to submit a Response. As a result, the Panel infers that the Respondent does not deny the facts asserted and contentions made by the Complainant. See e.g., Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084; Ross-Simons, Inc. v. Domain.Contact, WIPO Case No. D2003-0994. Therefore, asserted facts that are not unreasonable will be taken as true and the Respondent will be subject to the inferences that flow naturally from the information provided by the Complainant. See e.g. Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441; RX America, LLC. v. Matthew Smith, WIPO Case No. D2005-0540.
The Panel will now review the three cumulative elements set forth in paragraph 4(a) of the Policy to determine whether the Complainant has complied with such requirements.
B. The three cumulative elements set forth in paragraph 4(a) of the Policy
(a) Identical or confusingly similar
The Domain Name <rochevalium.org> consists of a mere combination of the Complainant's trademark ROCHE, its trademark VALIUM and the generic top level domain indicator “.org”. The latter cannot be taken into consideration when judging confusing similarity. See e.g., Swarovski Aktiengesellschaft v. Kimi DeLuca, WIPO Case No. D2007-0252.
The fact that a domain name is a combination of two trademarks does not mean that the Policy cannot be applied. See e.g., A.P. Møller v. Web Society, WIPO Case No. D2000-0135.
As VALIUM is the trademark used to designate a well-known pharmaceutical product put on the market by the Complainant who is often designated by its equally well-known trademark ROCHE, the Panel finds that the domain name <rochevalium.org> is confusingly similar with the Complainant's trademarks ROCHE and VALIUM.
(b) Right or Legitimate Interests
The Complainant has exclusive rights to the trademarks ROCHE and VALIUM and has not licensed or otherwise permitted the Respondent to use its trademarks or to apply for any domain name corresponding to its trademarks.
There is no indication that the Respondent has registered or used the names “roche” or “valium” as trademarks, or has ever been known by either name or by their combination.
Moreover, by not filing a Response, the Respondent has failed to invoke any circumstance which could indicate the existence of any right or legitimate interest he would have in the Domain Name; or otherwise rebut the Complainant's prima facie case that no such rights or legitimate interests exist.
The Panel is thereof of the view that the Respondent has no rights or legitimate interests in respect of the Domain Name.
(c) Bad Faith
(i) Registration in Bad Faith
The trademarks ROCHE and VALIUM are well-known in the field of pharmaceuticals. In view of the fame of the Complainant's trademarks, the choice of the Domain Name by the Respondent could not result from a mere coincidence. The Respondent could indeed not have been unaware of the Complainant's trademarks. By knowingly choosing a domain name which consists of two of the Complainant's well-known trademarks, the Respondent intentionally created a situation which is at odds with the legal rights and obligations of the parties.
(ii) Use in Bad Faith
Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances which if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.
In support of their case the Complainant based its argument concerning bad faith on paragraph 4(b)(iv) which reads as follows “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”.
The Panel has to consider whether it is reasonable for it to infer from the submitted evidence and the surrounding circumstances that the Respondent used the Domain Name primarily for any of the purposes set out in paragraph 4(b)(vi) of the Policy or whether there are other reasons for finding bad faith.
The Panel considers that the following circumstances are particularly relevant in the assessment of the use in bad faith:
- The Complainant's trademarks ROCHE and VALIUM are internationally well-known marks in the field of pharmaceuticals;
- The Respondent was using the Domain Name as a forwarding address to a for-profit on-line pharmacy;
- At this on-line pharmacy orders could be placed by the public (see the “inflow of orders” wording in the Respondent's emails of June 12 and 17, 2008);
In view of those circumstances, it seems indeed that the Respondent has, by using the Complainant's trademarks in its Domain Name, diverted Internet users to an on-line pharmacy, and intentionally created a likelihood of confusion with the Complainant's marks as to the source, sponsorship, affiliation, or endorsement of the Respondent's affiliated on-line pharmacy website.
The deliberate diversion of Internet users constitutes bad faith, by creating initial interest confusion that takes advantage of the Complainant's goodwill. It is well-established in UDRP decisions that “initial interest confusion” and the resultant misdirection of Internet traffic is independently sufficient to establish bad faith. See e.g., Sony Ericsson Mobile Communications International AB, Telefonaktiebolaget LM Ericsson, Sony Corporation v. Party Night Inc., WIPO Case No. D2002-1128.
The Respondent did not file a Response in this proceeding, thereby failing to invoke any element or circumstance which could indicate the good faith nature of his registration and use of the Domain Name.
(iv) Conclusion concerning registration and use in bad faith
The Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy and that the Respondent has registered and is using the Domain Name in bad faith.
In the light of the foregoing, the Panel decides that the Domain Name registered by the Respondent is confusingly similar to the Complainant's trademarks, that the Respondent has no rights or legitimate interests in respect of the Domain Name, and that the Respondent's Domain Name has been registered and is being used in bad faith.
Accordingly, pursuant to paragraph 4(i) of the Policy, and 15 of the Rules the Panel orders that the registration of the Domain Name <rochevalium.org> be transferred to the Complainant.
Dated: August 4, 2008