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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

F. Hoffmann-La Roche AG v. Holy & Blessed Corp. Holy & Blessed Corp.

Case No. D2007-0234

 

1. The Parties

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

The Respondent is Holy & Blessed Corp. Holy & Blessed Corp., Panama City, Panama.

2. The Domain Names and Registrar

The disputed domain names <pharmavalium.com> and <valiumgenericpharmacy.com> are registered with Tucows Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 16, 2007. On February 20, 2007, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain names at issue. On the same day, February 20, 2007, Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of each of the above domain names 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 March 7, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was March 27, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 29, 2007.

The Center appointed David Levin Q.C. as the sole panelist in this matter on April 10, 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 (together with its affiliated companies) is one of the world’s leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics and has global operations in more than 100 countries. The Complainant’s mark VALIUM is protected as trademark in a multitude of countries worldwide. As an example reference is made to the International Registration No. R250784. The priority date for the mark VALIUM is December 20, 1961.

The mark VALIUM designates a sedative and anxiolytic drug belonging to the benzodiazepine family. For the mark VALIUM the Complainant holds registrations in over 100 countries on a world-wide basis.

The domain names the subject of the present application were registered by the Respondent on July 21, 2006.

 

5. Parties’ Contentions

A. Complainant

The Complainant alleges that it holds the rights to the mark VALIUM and has held such rights for many years prior to the domain name registrations by the Respondent of the domain names <pharmavalium.com> and <valiumgenericpharmacy.com>. It maintains that these domain names are confusingly similar to its trademark, which similarity is not removed by the addition of the word ‘pharma’ before the trademark to form a composite word ‘pharmavalium’ nor by the addition of the words ‘generic pharmacy’ after the trademark and then removing the spaces between the words to form a different composite word.

Further the Complainant contends that the Respondent has no rights or legitimate interests in respect of the domain names.

Finally the Complainant alleges that the registration and use of each of the domain names was in bad faith, contrary to the Policy, paragraphs 4(a)(iii) and 4(b) and the Rules, paragraph 3(b)(ix)(3).

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules requires the Panel to:

“decide a complaint on the basis of the statements and documents submitted in accordance with the policy, these rules and any rules and principles of law that it deems applicable”.

Under the Policy, the Complainant must prove that:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which it 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 addition of further words as prefix or suffix respectively to a word constituting the Complainant’s mark has not removed the confusing similarity of each of the domain names to the mark VALIUM.

As the panel said in Deutsche Bank Aktiengesellscaft v. New York TV Show Tickets, Inc., WIPO Case No. D2001-1314 (a conclusion cited with approval in Sanofi-aventis v. Elizabeth Riegel and Andrew Riegel, WIPO Case No. D2005-1045).

“A disputed domain name which consists of the Complainant’s mark plus the addition of a descriptive word linked to the services that the Complainant markets can be confusingly similar to a mark. See Harrods Limited v. AB Kohler & Co - WIPO Case No. D2001-0544 decision July 31, 2001, over the names <harrodswatch.com> and <harrodsjewellery.com>. PBS Privat Bank Schwetz AG v. Ermek Tuzun WIPO Case No. D2001-1311 is a case where the word ‘bank’ was added in the disputed domain name to the registered mark PBS. The Complainant was a well-known supplier of banking services. The Panel held that it was the juxtaposition of the word ‘bank’ with the letters of the mark which changed the whole complexion of the domain name from being one depicting anything at all to one connected with a banking institution.”

The Panel is satisfied that the mere prefacing or concluding of such a widely-known mark as VALIUM with other letters designed to create a concocted word does nothing to remove the confusing similarity. The Panel respectfully adopts the conclusion stated in CVS Pharmacy, Inc. and CVS Vanguard, Inc. v. gd, WIPO Case No. D2004-0113, where the panel had to consider the confusing similarity of a series of domain names incorporating the Complainant’s registered mark, some of which names added words to the mark, others of which deleted words from the mark and made additions to the remaining word:

“The Panel is mindful that a straightforward comparison between a mark in which a complainant has rights and a disputed domain name may sometimes lead to an anomalous result: as a number of differences between the two may each be of little or no significance, but the sum of the differences may lead to a domain name that is neither identical to nor confusingly similar to a mark in which the complainant has rights. In such a case the two names, as a whole, must be compared for both similarities and differences.

Comparing each of the domain names, as a whole, with the Complainant’s mark leads to the conclusion that the domain name is confusingly similar to the mark.

B. Rights or Legitimate Interests

The Respondent is not called ‘Valium’ and does not appear to trade under that name. There is evidence that the owner of the trademark in question has not authorized the Respondent to use the trademark. According to the undisputed evidence, the internet links from the said domain names lead the internet user to a pharmacy on line which offers products which are competitive to those marketed by the Complainant.

The Panel accepts the force of the submissions advanced by the Complainant relying on two panel decisions involving Pfizer Inc. In Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784, it was accepted 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’.

Further in Pfizer Inc v. Juan Gonzales WIPO Case No. D2004-0589, the panel expressed the view that ‘no good faith can be assumed in Respondent’s conduct, in view of the fact that the Domain Name is confusingly similar with Complainant’s trademark and is used in connection with the promotion and sale of competing products’.

The Respondent has not asserted any rights or legitimate interests in the name.

Based on the evidence presented, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the above domain names.

C. Registered and Used in Bad Faith

The Panel is satisfied that the Complainant has established registration and use in bad faith.

The use of the domain names, registered about 45 years after the priority date for the Complainant’s mark, to promote and sell products which directly compete with Complainant’s mark is evidence of the Respondent’s bad faith registration and use. No explanation consistent with bone fide registration and use was advanced by the Respondent.

The Complainant maintains that the 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 widely-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 Panel accepts this submission and refers to and relies upon paragraph 4(b)(iv) and 4(a)(iii) of the Policy in this regard.

 

7. Decision

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

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David Levin Q.C.
Sole Panelist

Dated: April 24, 2007