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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

F. Hoffmann-La Roche AG v. Kasturba Nagar, N/A

Case No. D2007-0711

 

1. The Parties

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

Respondent is Kasturba Nagar, N/A, Calcutta, Delhi, India.

 

2. The Domain Name and Registrar

The disputed domain name <generic-valium.info> (the “Disputed Domain Name”) is registered with The Registrar.Com the (“Registrar”).

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 14, 2007. On May 15, 2007, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain name at issue. On May 17, 2007, the Registrar transmitted by email to the Center its verification response confirming that 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 31, 2007. In accordance with paragraph 5(a) of the Rules, the due date for Response was June 20, 2007. Respondent did not submit a response. Accordingly, on June 28, 2007, the Center notified the Respondent of its default.

On July 31, 2007, the Center appointed Steven Auvil as the sole panelist in this matter. 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 paragraph 7 of the Rules.

 

4. Factual Background

Complainant is the owner of the VALIUM mark, which is a well-known sedative and anxiolytic drug. Complainant’s mark is protected as a trademark in many countries worldwide. Complainant provided an exemplar certificate of International Registration No. R250784, indicating an October 20, 1961 priority date for the mark VALIUM.

The Disputed Domain Name was first registered with the Registrar on April 5, 2007. Complainant provided evidence that the Disputed Domain Name links to a website containing links to other web sites promoting and/or offering brand and/or generic pharmaceutical products; this is still the case as of the date of this decision.

 

5. Parties’ Contentions

A. Complainant

In its Complaint, Complainant contends that the Disputed Domain Name is confusingly similar to its VALIUM mark.

In addition, Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Name, that Respondent was not authorized by Complainant to use the VALIUM mark, and that Respondent is using the VALIUM mark for commercial gain.

Finally, Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith because Respondent registered and is using it in order to attract Internet users to a web site containing links to other websites promoting and/or offering third party brand and generic medication products.

Complainant is seeking transfer of the Disputed Domain Name to Complainant.

B. Respondent

Respondent did not respond to Complainant’s contentions.

 

6. Discussion and Findings

The Panel’s jurisdiction is limited to a determination whether Complainant has proved the necessary elements of a claim for transfer or cancellation of a domain name under the Policy and the Rules. Policy, Paragraph 4(a). The discussion and decision will be governed by the terms of the Policy.

To obtain relief, Paragraph 4(a) of the Policy requires Complainant to prove each of the following:

(1) that the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) that Respondent has no rights or legitimate interests in the domain name; and

(3) that the domain name has been registered and is being used in bad faith.

In view of Respondent’s failure to submit a Response, the Panel will decide this administrative proceeding on the basis of Complainant’s undisputed allegations for which there is support, pursuant to Paragraphs 5(e), 14(a) and 15(a) of the Rules, and draw such inferences it considers appropriate, pursuant to Paragraph 14(b) of the Rules.

A. Identical or Confusingly Similar

The Panel finds that the Disputed Domain Name registered by Respondent is confusingly similar to Complainant’s distinctive and famous VALIUM mark.

This Panel finds that the Disputed Domain Name is substantially identical or confusingly similar to Complainant’s VALIUM word mark because it fully incorporates that mark. See PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS), WIPO Case No. D2003-0696 (“incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark”). Moreover, the addition of a generic term (here, “generic”) as a prefix to the mark does not obviate the confusing similarity between the Disputed Domain Name and Complainant’s VALIUM mark. See, e.g., Merrell Pharmaceuticals Inc., Aventis Pharma SA. v. Filips Kostins, WIPO Case No. D2004-0943 (addition of the generic term “generic” does not influence significantly the overall impression of a domain name which is dominated by the ALLEGRA trademark); America Online, Inc. v. Chris Hoffman, WIPO Case No. D2001-1184 (use of short phrases with widely-known mark still found confusingly similar to that mark).

For these reasons, the Panel concludes that the Disputed Domain Name is confusingly similar to the VALIUM mark, a widely-known trademark in which Complainant has rights.

B. Rights or Legitimate Interests

Under the Policy, legitimate interests in a domain name may be demonstrated by showing that: (i) before any notice of this dispute, Respondent used, or demonstrably prepared to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; (ii) Respondent has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or (iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue. Policy, Paragraph 4(c).

Complainant contends that Respondent has no rights or legitimate interest in the Disputed Domain Name. Respondent has not submitted any arguments or evidence in rebuttal.

Nothing in the record suggests that Respondent is commonly known by the Disputed Domain Name or that, before any notice of this dispute, Respondent used, or demonstrably prepared to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services. There is, moreover, no evidence that Respondent is making a legitimate non-commercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert customers or to tarnish the VALIUM mark. Indeed, Respondent registered the Disputed Domain Name many years after Complainant established rights in its VALIUM mark through extensive use. In short, there is no evidence from which the Panel could conclude that Respondent has rights to or legitimate interests in the Disputed Domain Name. Compare Justerini & Brooks Limited v. Juan Colmenar Rueda as Registrant “Colmenar”, aka “jokolm” / “JCRco.”, WIPO Case No. D2000-1397 (finding that, given the notoriety and distinctiveness of the JUSTERINI & BROOKS trademark, it was not one which another trader would legitimately choose unless the trader sought to create an impression of association with that complainant, create an impression of association with Justerni & Brooks products, attract business from that complainant, misleadingly divert members of the public, and/or damage the reputation and business of that complainant).

For these reasons, in accordance with Paragraph 4(a)(ii) of the Policy, the Panel finds that Respondent has no rights or legitimate interests in the Disputed Domain Name.

C. Registered and Used in Bad Faith

Complainant also argues that Respondent registered and used the Disputed Domain Name in bad faith. Specifically, Complainant argues that Respondent’s bad faith is reflected in the fact that: (1) Complainant’s VALIUM mark has a strong worldwide reputation; (2) Complainant is intentionally misleading consumers by attempting to attract them to other web sites by leading such consumers to believe that such web sites are associated with or recommended by Complainant; and (3) Respondent is unjustifiably earning revenues every time a misled consumer clicks on one of the links.

The unrebutted evidence in this case does demonstrate that Respondent has used and/or is using Complainant’s widely-known VALIUM mark in the Disputed Domain Name in bad faith. According to Paragraph 4(b)(iv) of the Policy, evidence of bad faith registration and use is shown when registration of a domain name occurs in order to utilize another’s trademark by attracting Internet users to a website for commercial gain. See, e.g., COMSAT Corporation v. Ronald Isaacs, WIPO Case No. D2004-1082 (finding bad faith where the respondent linked the disputed domain name to another web site respecting which the respondent presumably received a portion of the advertising revenue in consideration of directing traffic to that web site); see also Online, Inc. v. Tencent Commc. Corp., FA 93668 (National Arbitration Forum, March 21, 2000) (finding bad faith where the respondent registered and used the disputed domain name to attract users to a web site sponsored by the respondent). Here, it is apparent from the evidence submitted by Complainant that Respondent has used the Disputed Domain Name to attract Internet customers to a web page offering users an opportunity to click on links to a variety of web sites offering brand and/or generic pharmaceutical products. The Panel finds, based on unrebutted evidence, that Respondent registered and used the Disputed Domain Name containing the VALIUM mark in bad faith in order to attract traffic to its web site for commercial gain. Compare Pepsico, Inc. v. Zhavoronkov, WIPO Case No. D2002-0562 (“blatant appropriation of a universally recognized trademark is of itself sufficient to constitute bad faith”); see also Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (May 1, 2000) (bad faith is found where a domain name “is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith”).

For these reasons, the Panel concludes that the bad faith element of the Policy is satisfied.

 

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 <generic-valium.info> be transferred to Complainant.


Steven Auvil
Sole Panelist

Dated: August 21, 2007

 

Источник информации: https://internet-law.ru/intlaw/udrp/2007/d2007-0711.html

 

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