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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

F. Hoffmann-La Roche AG v. IT Developers s.c. Tomasz Kraus, Lukasz Haluch

Case No. D2006-1547

 

1. The Parties

The Complainant is F. Hoffmann-La Roche AG, Basel, Switzerland, represented by Dr. Hans-Friederich Czekay and Jerôme Rhein.

The Respondent is IT Developers s.c. Tomasz Kraus, Lukasz Haluch, Malopolskie, Poland.

 

2. The Domain Name and Registrar

The disputed domain name <prescriptionsvalium.com> (the “Domain Name”) is registered with Go Daddy Software, Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 6, 2006. On December 7, 2006, the Center transmitted by email to Go Daddy Software, Inc. a request for registrar verification in connection with the Domain Name. On December 7, 2006, Go Daddy Software, Inc. transmitted by email to the Center its verification response confirming that 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”).

Respondent sent the Center an e-mail on December 10, 2006 in response to the Center’s email of that date, acknowledging receipt of the Complaint.

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on December 14, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was January 3, 2007. Respondent did not submit a Response. Accordingly, the Center notified Respondent’s default on January 10, 2007.

The Center appointed Alfred Meijboom 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.

The language of the administrative proceedings is English.

 

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 December 20, 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 November 4, 2006.

Respondent did not file a formal response in these proceedings and was notified of its default by the Center on January 26, 2006.

 

5. Parties’ Contentions

A. Complainant

Complainant asserted that the Domain Name is confusingly similar to Complainant’s VALIUM mark as it incorporates the mark in its entirety. Complainant further argued by referring to Novo Nordisk A/S v. Mr. Jonathan Valicenti, WIPO Case No. D2005-0563, that the addition of the term “prescriptions” is likely to enhance the confusion and to lead consumers to believe that the Domain Name is linked to, affiliated with, or at least endorsed by Complainant. The mark VALIUM is well-known and notorious, which will further increase the likelihood of confusion.

Complainant has exclusive rights for the mark VALIUM, and has not authorized Respondent to use the term VALIUM as part of the Domain Name. Furthermore 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. Hence the Domain Name alludes to Complainant.

Before Complainant notified Respondent of its objections on November 14, 2006, the Domain Name was 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.

The website under the Domain Name currently simply makes reference to a situation of passive holding as it reads “This domain has been blocked”. There is no reason why Respondent should have any right or interest in the Domain Name.

The Domain Name was registered in bad faith since at the time of the registration on November 4, 2006, defendant had doubtlessly knowledge of Complainant’s well-known product and mark VALIUM.

The Domain Name was also used in bad faith, because Respondent has intentionally attempted 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.

Under reference to Deutsche Telekom AG v. Jürgen Müller, WIPO Case No. D2005-1340, Complainant asserts that Respondent’s “passive holding” of the Domain Name after Complainant notified Respondent that the Domain Name infringes its trademark VALIUM, may also be considered a circumstance evidencing bad faith.

Complainant requests the Panel to issue a decision that the Domain Name be transferred to Complainant.

B. Respondent

Before being requested to file a reply to Complainant’s contentions, Respondent sent an email to the Center on December 10, 2006 with the following contents:

“We are owner of the (Domain Name). For us (Complainant’s) behavior is quite unfair. We aren’t using the (Domain Name) as a bad name for (Complainant) neither Valium. Now (the Domain Name) isn’t even parked anywhere, it just shows a blank page. (The Domain Name) was an expired domain so that’s why we purchased (the Domain Name). If (Complainant) wanted (the Domain Name) then they could’ve bought it when it was expired, and don’t harass current owners now.”

Respondent otherwise failed to respond to Complainant.

 

6. Discussion and Findings

According to paragraph 4(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 holds trademark rights in VALIUM in many countries world wide, the earliest of which date from 1961. The Panel further believes that said trademark is well-known. See also F. Hoffmann-La Roche AG v. Ashima Kapoor, WIPO Case No. D2005-1351; F. Hoffmann-La Roche AG v. Web Marketing Limited, WIPO Case No. D2006-0005; F. Hoffmann-La Roche AG v. Lythion Services Ltd, WIPO Case No. D2006-0035.

The Domain Name wholly incorporates the VALIUM trademark of Complainant. The affixing of the word “prescriptions” – certainly in relation to VALIUM, which is a drug – is descriptive and does not take away the confusing 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 paragraph 4(c) of the Policy Complainant is required to 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 paragraph 4(c) of the Policy.

The VALIUM trademark is well-known. The Panel believes that Respondent must have been aware of the trademark as the Domain Name combines VALIUM and “prescription”, and the Domain Name has apparently been used for a website with sponsored links, including links to pharmacies and parties that offer drugs. Consequently, the Panel finds that Respondent has not used the Domain Name for bona fide offering of goods or services, or for non-commercial or fair use.

The Panel is further satisfied that there is no evidence that Respondent has commonly been known by the Domain Name, and that Complainant did not authorize Respondent to register the Domain Name, as Respondent did not, in its email to the Center of December 10, 2006, dispute 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 generic term “prescription”, which relates to Complainant’s field of activities as VALIUM marked drugs are prescription drugs. 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 used the Domain Name in bad faith. In this respect Complainant showed that the Domain Name has been used for a website with sponsored links to, inter alia, pharmacies and parties that offer drugs. According to paragraph 4(b) of the Policy an indication of use in bad faith is if Respondent is intentionally attempting to attract, for commercial gain, Internet users to its 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. The Panel considers that in using the Domain Name Respondent has sought to take advantage of, and create a likelihood of confusion with, the VALIUM trademark. By using the drawing power of Complainant’s VALIUM trademark and linking Internet users to sponsored links Respondent is generating traffic to its website under the Domain Name. The fact that the contents of the website under the Domain Name was apparently removed after Complainant’s notification does not affect a finding of bad faith in this case. (e.g. ACCOR v. S1A, WIPO Case No. D2004-0053).

Therefore the Panelist finds that Respondent used the Domain Name in bad faith.

 

7. Decision

For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the domain name <prescriptionsvalium.com> be transferred to Complainant.

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Alfred Meijboom
Sole Panelist

Dated: January 26, 2007