|Complainant||F. Hoffmann-La Roche AG|
|Date of Decision||01.02.2007|
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. Alexe
1. The Parties
The Complainant is F. Hoffmann-La Roche AG, Basel, of Switzerland, represented by Dr. Hans-Friederich Czekay and Jrme Rhein.
The Respondent is Alexe, St. Petersburg, of the Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <1valium2.com> (the“DomainName”) is registered with Direct Information Pvt Ltd d/b/a PublicDomainRegistry.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the“Center”) on December11,2006. On December13,2006, the Center transmitted by email to Direct Information Pvt Ltd d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the domain name at issue. OnDecember13,2006, Direct Information 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 for the administrative, billing, and technical contact. 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“SupplementalRules”).
In accordance with the Rules, paragraphs2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December21,2006. In accordance with the Rules, paragraph5(a), the due date for Response was January10,2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January11,2007.
The Center appointed Alfred Meijboom as the sole panelist in this matter on January18,2007. 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, paragraph7.
4. Factual Background
Complainant asserted and provided evidence in support of the following facts.
Together with its affiliated companies Complainant is one of the world’s leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics. They have global operations in more than 100 countries.
Complainant has registered the trademark VALIUM in over 100 countries on a world-wide basis. International Registration No.R250784, with priority date December20,1961, is representative for these registrations.
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. The mark VALIUM is a well-known trademark.
The Domain Name was registered on November21,2006.
The website behind the Domain Name is a search engine linking to other websites by using the mark VALIUM in combination with terms such as “drug test”, “prescription”, “tablet”, “pharmacy” and “dose”.
5. Parties’ Contentions
Complainant asserted that the Domain Name is confusingly similar to Complainant’s VALIUM mark as it incorporates the mark in its entirety.
Complainant has exclusive rights in the mark VALIUM, and has not authorized Respondent to use the term “valium” as part of the Domain Name.
Furthermore, Complainant contended that it is obvious that Respondent uses the Domain Name for commercial gain and with the purpose of capitalizing the fame of Complainant’s mark VALIUM. The Domain Name is directing Internet users to a search engine composed of sponsored links. This is not use of the Domain Name in connection with bona fide offering of goods and services. There is no reason why Respondent should have any right or interest in the Domain Name.
Complainant stated that the Domain Name was registered in bad faith since at the time of the registration on November21,2006, Defendant had doubtlessly knowledge of Complainant’s well-known product and mark VALIUM.
Complainant furthermore asserted that the Domain Name is also used in bad faith, because Respondent intentionally attempts to attract Internet users to Respondent’s website under the Domain Name for commercial purpose, by creating a likelihood of confusion with Complainant’s VALIUM mark as to the source, affiliation and endorsement of Respondent’s website or of the products or services posted on or linked to Respondent’s website.
Complainant requested the Panel to issue a decision that the Domain Name be transferred to Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph4(a) of the Policy, the requested remedy can be granted if Complainant asserts and proves each of the following:
A. that the Domain Name is identical or confusingly similar to a trademark or a service mark in which Complainant has rights; and
B. Respondent has no rights or legitimate interests in respect of the Domain Name; and
C. the Domain Name has been registered and was being used in bad faith.
A. Identical or Confusingly Similar
Complainant is the holder of trademark rights in VALIUM in many countries world wide since 1961.
The Domain Name wholly incorporates the VALIUM trademark of Complainant. The affixes “1” and “2” are not distinctive in this context and do not take away the similarity between Complainant’s trademark and the Domain Name.
Therefore, the Panel finds the Domain Name confusingly similar to Complainant’s registered trademark VALIUM.
B. Rights or Legitimate Interests
According to paragraph4(c) of the Policy Complainant should prove that Respondent has no right or legitimate interest in the Domain Name. According to the consensus view among Panels, this condition is met if Complainant makes a prima facie case that Respondent has no rights or legitimate interests, and Respondent fails to show one of the three circumstances mentioned in paragraph4(c) of the Policy.
VALIUM is a trademark which is well-known for Complainant’s prescription drugs to a word wide public. The Panel is of the opinion that Respondent must have been aware of the trademark as the Domain Name is used for a website linking to other websites by using the mark VALIUM in combination with terms such as “drug test”, “prescription”, “tablet”, “pharmacy” and “dose”. Consequently, Respondent is not using the Domain Name for bona fide offering of goods or services, or for non-commercial or fair use.
The Panel is further satisfied that Respondent was not previously known under the Domain Name and that Complainant did not authorize Respondent to register the Domain Name, as Respondent has not disputed Complainant’s claim to that effect, and the registration date of the Domain Name is 45 years after the priority date of the International Trademark registration of VALIUM.
For these reasons, the Panel finds that Respondent has no rights or legitimate interest in the Domain Name.
C. Registered and Used in Bad Faith
The Domain Name is composed of the trademark VALIUM of Complainant, and the non-distinctive affixes “1” and “2”. The Panel recalls that the VALIUM trademark is well-known for Complainant’s prescription drugs. The Panel finds it is reasonable to conclude that only someone who was familiar with the VALIUM trademark could have registered the Domain Name. Therefore the Panel finds that the Domain Name was registered in bad faith.
Complainant must also prove that Respondent uses the Domain Name in bad faith. In this respect Complainant showed that the Domain Name is used for a website linking to other websites by using the mark VALIUM. According to paragraph4(b) of the Policy an indication for use in bad faith is if Respondent is intentionally attempting to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website. By using the Domain Name Respondent seeks to take advantage of, and creates a likelihood of confusion with the VALIUM trademark. By linking Internet users to other websites Respondent generates traffic to his website under the Domain Name for commercial gain.
Therefore the Panelist finds that Respondent uses the Domain Name in bad faith.
For all the foregoing reasons, in accordance with paragraphs4(i) of the Policy and 15of the Rules, the Panel orders that the domain name <1valium2.com> be transferred to the Complainant.