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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

F. Hoffmann-La Roche AG v. Tomasso Di Salvatore

Case No. D2006-1417

 

1. The Parties

The Complainant is F. Hoffmann-La Roche AG, Basel, Switzerland.

The Respondent is Tomasso Di Salvatore, Castel Morrone, Italy.

 

2. The Domain Name and Registrar

The disputed domain name <stateofvalium.com> is registered with Tucows.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 7, 2006. On November 8, 2006, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On November 8, 2006, Tucows 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 “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 November 29, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was December 19, 2006. The Response was filed with the Center on December 19, 2006.

The Center appointed Peter Burgstaller as the sole panelist in this matter on January 18, 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 Complainant is one of the world’s leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics. The Complainant’s mark VALIUM is protected as trademark in several countries with its basis trademark in Switzerland since 1961 (Annex 3), and it is widely known through out the world.

The Respondent’s website with the disputed domain name is a search engine composed of sponsored links. The use of the domain name at issue appears to be advertising links to websites promoting and/or offering products and services of third parties (Annex 6).

 

5. Parties’ Contentions

A. Complainant

(i) The 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. The Complainant’s mark VALIUM is protected as trademark in a multitude of countries worldwide (priority date for the mark VALIUM is October 20, 1961).

The Domain Name of the Respondent is confusingly similar to the Complainant’s mark considering that it incorporates this mark in its entirety.

The mark VALIUM is well-known and notorious (see for example newspaper Articles in Annex 4). The domain name is confusingly similar to the trademark of the Complainant.

(ii) The Complainant has exclusive rights for VALIUM and no license/permission/authorization respectively consent was granted to the Respondent to use VALIUM in the domain name.

(iii) The domain name was registered in bad faith since at the time of the registration i.e. on October 10, 2005, the defendant had, no doubt, knowledge of the Complainant’s well-known product/mark VALIUM.

The domain is also being used in bad faith. This is obvious since when viewing the Internet-website from the Respondent (Annex 6) one realizes that Respondent is intentionally attempting (for commercial purpose) to attract Internet users to the Respondent’s website, by creating a likelihood of confusion with the 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 Respondent’s website.

The Complainant submits that the Respondent may generate unjustified revenues for each click-through by on-line consumers of the sponsored links. The Respondent is therefore illegitimately capitalizing on the VALIUM trademark fame.

B. Respondent

The Respondent accepted in its Response the remedy requested by the Complainant.

 

6. Discussion and Findings

In accordance with paragraph 11 of the Rules, the language of the proceeding is the language of the registration agreement, unless both parties agree otherwise. Because there is no such agreement the language of the proceeding is English (Telstra Corporation Limited v. Tesra com/Telecomunicaiones Serafin Rodriguez y Asociados, WIPO Case No. D2003-0247).

Even though the Respondent appears to accept the Complainant’s contentions, the Panel makes the following findings (see Berlitz Investment Corp v. Stefan Tinculescu, WIPO Case No. D2003-0465).

A. Identical or Confusingly Similar

The domain name at issue incorporates the Complainant’s mark and, even though the domain name includes the presence of other words, it is the Panel’s view that the disputed domain name is confusingly similar to the Complainant’s mark. If a domain name incorporates a famous mark in its entirety, it is often found confusingly similar to that mark despite the addition of other words (Olympus USA, Inc., Olympus America, Inc and Olympus Optical Co Ltd v. World Photo Video and Imaging Corp, WIPO Case No. D2001-1464; Philip Morris USA Inc v. Mary Shelly, WIPO Case No. D2006-1367).

The Panel therefore finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Proper analysis of paragraph 4(a)(ii) of the Policy shows that the burden of proof shifts from the Complainant to the Respondent once the Complainant has made out a prima facie case that the Respondent has no rights or interests in the domain names. If the Complainant has done so, the burden of proof shifts to the Respondent to offer evidence of his rights or legitimate interests in the disputed domain name (see e.g. Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270). This “burden shifting” is appropriate given that paragraph 4(c) of the Policy, which is entitled “How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name in Responding to a Complaint,” discusses the kind of evidence a Respondent should provide to show that it has rights to or legitimate interests in the domain name.

In its Response the Respondent did not submit any rights or legitimate interests in the disputed domain name and has admitted that he has none.

Accordingly, the Panel finds that the Complainant has satisfied its burden of proof with respect to paragraph 4(a)(ii) of the Policy; the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists certain factors which, if found by the Panel to be present, shall be evidence of registration and use of a domain name in bad faith; however, this list is not an exclusive list.

Because of the Complainant’s trademark registrations in several countries and the fame of the trademark VALIUM, it is most likely that when registering the disputed domain name, the Respondent knew of the existence of the Complainant’s trademark. This finding is corroborated in viewing the website with the disputed domain name which provides a search engine composed of sponsored links and “related categories” all referring to the mark “Valium” (e.g. Valium health, valium medication) (Annex 6 to the Complaint).

In view of this Panel the domain name at issue is also being used in bad faith. The Respondent is intentionally attempting to attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s famous mark as to the source, affiliation and endorsement of Respondent’s website.

The Panel thus finds that the Complainant has proven that the domain name <stateofvalium.com> has been registered and is being used in bad faith according to paragraph 4(a)(iii) of the Policy.

 

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 <stateofvalium.com> be transferred to the Complainant.

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Peter Burgstaller
Sole Panelist

Dated: February 1, 2007