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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

F. Hoffmann-La Roche AG v. Vladimir Talko

Case No. D2007-0880

1. The Parties

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

Respondent is Vladimir Talko, Ukraine.

2. The Domain Name and Registrar

The disputed domain name <yourvalium.com> (the “Domain Name”) is registered with EstDomains, Inc. (the “Registrar”) through its reseller HostLife.net, of Kiev, Ukraine.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 18, 2007. On June 19, 2007, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 20, 2007, the Registrar transmitted by email to the Center its verification response informing the Center that “Vladimir Talko” is listed as the registrant and providing his contact details, and directed the Center to contact the Registrar’s reseller HostLife.net for information regarding the language of the registration agreement. On August 2, 2007, HostLife.net informed the Center that the language of the registration agreement for the Domain Name is Russian. On August 3, 2007, the Center notified Complainant that the Complaint was administratively deficient. In response to this notification, on August 6, 2007, Complainant filed an amendment to the Complaint, and requested that the language of the administrative proceeding be English.

The Center verified that the Complaint together with the amendment to 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 sent, in both English and Russian, a notification to Respondent of the Complaint, together with the Complaint itself written in English, and the proceedings commenced on August 7, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was August 27, 2007. On August 13, 2007, Respondent requested a translation of the Complaint. On August 17, 2007, the Center notified Respondent, in both English and Russian, of its decision to accept the Complaint as filed in English, to accept a Response in either English or Russian, to appoint a Panel familiar with both languages, and to leave to the Panel’s discretion the determination of the appropriate language of proceedings. Respondent did not submit a formal Response on the substance of the dispute within the prescribed time limit, and the Center notified Respondent’s default on August 28, 2007.

The Center appointed Assen Alexiev as the sole panelist in this matter on September 14, 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 Panel, having reviewed the submissions of the Parties, considered certain circumstances in particular relevant to the determination of the language of the proceeding.

The Domain Name is composed of two words – a simple English pronoun plus a word identical to Complainant’s famous trademark. This combination has a meaning only in the English language, and this meaning is related to the purpose and content of the website at the Domain Name. The content of this website is in the English language, and is dedicated to the sale of Complainant’s medicine Valium. Such a choice of a domain name and such website are most probably made by a person in good command of the English language. As the Domain Name and the website are presumably under the control of Respondent, the Panel is of the opinion that Respondent has sufficient command of the English language in order to understand the nature of the proceeding and the Complaint.

Neither of the parties will be put at a disadvantage if English is chosen as the language of the proceedings, as it is not the native language of either of them, while they both understand it, given also that Respondent is allowed to submit its Response in either English or Russian.

On this basis, and on the grounds of the Rules, paragraph 11(a), and the Rules, paragraphs 10(a), (b) and (c), the Panel decided the language of the administrative proceeding to be English. The Panel also decided that it will take into account the submissions of Respondent in the Russian language, made within the time limits for submission of the Response, which is August 27, 2007.

4. Factual Background

Complainant is the owner of the trademark VALIUM, with Registration No. R250784, registered under the Madrid Agreement with priority as of October 20, 1961 for the territory of 37 countries, including Ukraine, for goods in classes 1, 3, and 5.

The Domain Name was registered by Respondent on May 28, 2007.

5. Parties’ Contentions

A. Complainant

Complainant made the following contentions:

Complainant, F. Hoffmann-La Roche AG, together with its affiliated companies, is 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.

Complainant’s trademark VALIUM is well-known, and it designates a sedative and anxiolytic drug belonging to the benzodiazepine family. The production and trade with this drug enabled Complainant to build a worldwide reputation in psychotropic medications.

According to Complainant, the Domain Name is confusingly similar to Complainant’s trademark as it incorporates this mark in its entirety. The addition of the word “your” does not sufficiently distinguish the Domain Name from Complainant’s trademark.

Complainant contends that Respondent has no rights or legitimate interests in respect of the Domain Name. Complainant has exclusive rights in the trademark VALIUM, and has granted no authorization or consent to Respondent to incorporate the trademark in the Domain Name. Respondent uses the Domain Name for commercial gain and with the purpose of capitalizing on the fame of Complainant’s trademark. Respondent’s website is an online pharmacy which offers the drug VALIUM. Upon ordering, it redirects to another online pharmacy at “www.legalrxdrugs.com“. Complainant cites Hoffmann-La Roche Inc. v. #1 Viagra Propecia Xenical & More Online Pharmacy, WIPO Case No. D2003-0793, where the Panel stated that “a reseller does not have the right to incorporate the trademark of the resold goods into the domain name of the reseller”, and Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784: “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 online pharmacy”.

Complainant further contends that the Domain Name was registered in bad faith. Respondent had knowledge of Complainant’s well-known drug and trademark VALIUM at the time of the registration of the Domain Name. The Domain Name is also being used in bad faith. The analysis of the website associated with the Domain Name shows that Respondent is intentionally attempting (for commercial purpose) to attract Internet users, by creating a likelihood of confusion with 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. Complainant cites again the decision on WIPO Case No. D2004-0784, where bad faith is established when “Respondent is using the domain names as a forwarding address to a for-profit on-line pharmacy”. Internet users, who purchase VALIUM products form this website are acting under the wrong impression that they are dealing with Complainant.

B. Respondent

Respondent did not substantively reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that, to justify transfer of a domain name, the Complainant must prove each of the following:

(i) That the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) That the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) That the Respondent has registered and is using the Domain Name in bad faith.

In this case, the Center has employed the required measures to achieve actual notice of the Complaint to Respondent, in compliance with the Rules, paragraph 2(a), and Respondent was given a fair opportunity to present its case.

By the Rules, paragraph 5(b)(i), it is expected of Respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…”

In the event of a default, under the Rules, paragraph (14)(b): “…the Panel shall draw such inferences therefrom as it considers appropriate.”

As stated by the panel in Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004: “Here, the potential evidence of good faith registration and use was in respondent’s control. Respondent’s failure to present any such evidence or to deny complainant’s allegations allows an inference that the evidence would not have been favorable to respondent.”

As stated by the panel in Viacom International Inc. v. Ir Suryani, WIPO Case No. D2001-1443: “Since the Respondent has not submitted any evidence and has not contested the contentions made by the Complainant, this Panel is left to render its decision on the basis of the uncontroverted contentions made, and the evidence supplied, by the Complainant. In the absence of any evidence to the contrary submitted by the Respondent, this Panel accepts in large measure (but not wholly) the submitted evidence and the contended for factual and legal conclusions as proven by such evidence.”

In this administrative proceeding, Respondent’s default entitles the Panel to conclude that Respondent has no compelling arguments or evidence in its favor to rebut the assertions of Complainant. The Panel has to take its decision on the basis of the statements and documents submitted by Complainant and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

A. Identical or Confusingly Similar

Complainant has provided sufficient evidence and has thus established its rights in the trademark VALIUM, registered in many countries. Complainant has also provided evidence for the status of this trademark as well-known and notorious.

It is a common practice under the Policy to disregard the “.com” section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i).

The Domain Name contains the combination of words “your” and “valium”. “Your” is a simple pronoun in the English language, and has no distinctiveness. Its addition to “valium” - the predominant element of the Domain Name - does not distinguish the combination from the trademark VALIUM of Complainant, but rather points the attention of Internet users at the trademark itself.

Therefore, the Panel finds that the Domain Name is confusingly similar to a trademark in which Complainant has rights.

B. Rights or Legitimate Interests

Complainant has contended that Respondent has no rights or legitimate interests in the Domain Name. In support to this contention, Complainant claims that it has granted no authorization or consent to Respondent to incorporate the trademark in the Domain Name. Further, Complainant contents, Respondent’s use of the Domain Name for an online pharmacy reselling Complainant’s drug cannot give rise to any rights or legitimate interests of Respondent in the Domain Name.

The Panel is satisfied in the circumstances that Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name.

It is well established that once Complainant makes out a prima facie case under the Policy, paragraph 4(a)(ii), the burden shifts to Respondent to rebut the showing by providing evidence of its rights to or legitimate interests in the Domain Name.

Respondent, although given a fair opportunity to do so, has chosen not to present to the Panel any allegations or documents in its defense in accordance with the Rules, paragraphs 5(b)(i) and 5(b)(ix), despite the consequences that the Panel may extract from the fact of a default (the Rules, paragraph 14). If Respondent had any legitimate reason for the registration or use of the Domain Name, it could have brought it to the attention of the Panel. In particular, Respondent has failed to contend that any of the circumstances described in the Policy, paragraph 4(c) – or any other circumstance – is present in its favor.

As within the prescribed time limits Respondent chose only to request a translation of the Complaint, without mentioning anything related to the substance of the dispute, the only information available about Respondent is the Whois information, provided by the Registrar, and the content of the website, associated to the Domain Name.

The Whois information contains no evidence that Respondent is commonly known by the Domain Name. Neither the registrant, nor its contact details contain anything that resembles the Domain Name. As evident from the record, Respondent also uses the services of Privacyprotect.org in order to remain anonymous, and its identity was revealed only upon the request of the Center for registrar verification in connection with the Domain Name.

Further, the Panel notes that the website associated to the Domain Name appears to function as an online pharmacy offering for sale the drug VALIUM produced by Complainant. There is no evidence that this resale is made with the consent of Complainant. Combined with the choice of a domain name that is confusingly similar to Complainant’s trademark, previous panels in similar cases have found that such use cannot of itself substantiate any rights or legitimate interests of Respondent in the Domain Name. See AVENTIS Pharma S.A. and Merrell Pharmaceuticals Inc. v. Rx USA, WIPO Case No. D2002-0290: “While the selling of goods which originate from the Complainant might entitle the Respondent to use a mark associated with the goods in connection with their sale, this does not give it the right to register and use the mark as a domain name without the consent of the holders of the trademarks. Thus, it is prevented from having prior rights to or legitimate interests in the Domain Name as against the Complainant.”

The Panel further notes that, even if Respondent were an authorized distributor of Complainant’s trademarked products, there is in any case no indication that Respondent has inter alia sought to accurately disclose its relationship (or lack thereof) with the VALIUM trademark holder. See e.g., Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.

Finally, it is evident that Respondent is not making a legitimate non-commercial or fair use of the Domain Name. The Respondent’s use is purely commercial – online sale of pharmaceuticals.

Based on these grounds, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.

C. Registered and Used in Bad Faith

Complainant has established that its trademark is well-known in many countries, including Ukraine, where Respondent has its address. Given the nature of the Respondent’s business (as evident from the nature and content of the website at the Domain Name) and the fame of the VALIUM trademark, the Panel finds that Respondent was in all likelihood fully aware of the existence of Complainant and its rights to the trademark VALIUM at the time he registered the Domain Name. Respondent also uses the website to sell Complainant’s drug products.

These circumstances indicate Respondent’s attempt to attract Internet users looking for Complainant’s products to the Respondent’s website, by suggesting that Respondent is in some way associated to Complainant. Respondent has not disclaimed any affiliation, sponsorship or endorsement of the website by Complainant. This is an attempt to misappropriate Complainant’s reputation for commercial gain. As noted in Research In Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492: “when a domain name is so obviously connected with a Complainant and its products, its very use by a registrant with no connection to the Complainant suggests ‘opportunistic bad faith’“.

Therefore, in consideration of the above and in the absence of any evidence to the contrary submitted by Respondent, the Panel finds that Respondent has registered and used the Domain Name in bad faith under the Policy, paragraph 4(b)(iv). By using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.

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 <yourvalium.com> be transferred to Complainant.


Assen Alexiev
Sole Panelist

Dated: September 28, 2007

 

Источник информации: https://internet-law.ru/intlaw/udrp/2007/d2007-0880.html

 

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