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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

F. Hoffmann-La Roche AG v. Avieltech Consultant

Case No. D2007-0930

 

1. The Parties

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

The Respondent is Avieltech Consultant, Ottawa, Ontario, Canada.

2. The Domain Name and Registrar

The disputed domain name <getvaliumonline.com> is registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 25, 2007. On June 27, 2007, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On June 27, 2007, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details and that the Uniform Domain Name Dispute Resolution Policy applied to the domain name. 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 June 29, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was July 19, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 20, 2007.

The Center appointed Derek M. Minus as the sole panelist in this matter on July 31, 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 following uncontested and unchallenged facts appear from the Complaint and the supporting documents submitted with it:

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 has global operations in more than 100 countries. As an example the Complainant provided a copy of its International Registration Certificate for VALIUM, being registration No. R250784. The date of priority for the mark VALIUM is October 20, 1961. The Complainant’s states that its mark VALIUM, is protected as a trademark in over one hundred countries, worldwide.

The Complainant advised that the mark VALIUM designated a sedative and anxiolytic drug belonging to the benzodiazepine family. Invented by Hoffmann-La Roche chemist, Dr. Leo Sternbach, VALIUM was released in 1963. It quickly became a popular tranquilizer, and it was reported in the Complainant’s material that between 1969 and 1982, VALIUM was the most heavily prescribed drug in America. The wide spread use of VALIUM also led to its popularization and notoriety, in songs and TV sitcoms and enabled the Complainant to build a world-wide reputation in psychotropic medications.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that each of the elements specified in paragraph 4(a) of the Policy have been satisfied.

(a) The domain name is confusingly similar to a trademark or service mark in which the Complainant has rights.

According to the Complainant, the VALIUM trademark is well-known and notorious.

The Complainant asserts that the domain name <getvaliumonline.com> is confusingly similar to the VALIUM trademark. The addition of the descriptive words “get” and “online” do not sufficiently distinguished the domain name from the Complainant’s trademark. The notoriety of the Complainant’s trademark increases the likelihood of confusion.

The Complainant asserts that it has no affiliation with the Respondent and has not authorized or licensed the Respondent to use the VALIUM trademark in connection with the sale of its product. The Complainant’s use and registration of the mark VALIUM also predate the Respondent’s registration of the domain name.

(b) The Respondent has no rights or legitimate interests in respect of the domain name.

According to the Complainant, the Respondent’s only reason in registering and using the contested domain name is to benefit from the reputation of the trademark VALIUM and illegitimately trade on its fame for commercial gain and profit. The Complainant asserts that it has exclusive rights for VALIUM, and no consent was granted to the Respondent to use its trademark in the disputed domain name.

(c) The domain name was registered and is being used in bad faith.

The Complainant claims that the domain name was registered in bad faith since at the time of the registration on April 26, 2007, the Respondent no doubt had knowledge of the Complainant’s well-known product and trademark, VALIUM.

It further claims that the domain is being used in bad faith because the Respondent is intentionally attempting (for commercial purpose) to attract Internet users to the Respondent’s website. It is doing this 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 the Respondent’s website.

The use of the domain name seems to be advertising links to websites promoting and/or offering products and services of third parties.

B. Respondent

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

 

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant carries the burden of proving, on the balance of probabilities, each of the following three elements:

(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant holds rights;

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

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

A. Identical or Confusingly Similar

The Panel accepts that the Complainant is the owner of the trademark rights in the name VALIUM in a multitude of countries worldwide.

The disputed domain name <getvaliumonline.com> wholly incorporates the Complainant’s VALIUM trademark with the addition of the words “get” and “online”. These additional words, “get” and “online”, added by the Respondent, are not distinctive, but merely descriptive words.

Earlier decisions have found that the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered trademark (see Janus International Holding Co. v. Rademacher, WIPO Case No. D2002-0201).

Further, merely adding generic words “get” and “online” and the top level “.com” identifier, is not sufficient to create a distinct domain name, and does not sufficiently distinguished the disputed domain name from the Complainant’s trademark (see Arthur Guinness Son & Co. (Dublin) Ltd. v. Tim Healy/BOSTH, WIPO Case No. D2001-0026).

The addition of descriptive terms in the domain name does not affect a finding that the domain name is identical or confusingly similar to the Complainant's registered trademark (see Accor, Sociйtй Anonyme а Directoire et Conseil de Surveillance v. Tigertail Partners, WIPO Case No. D2002-0625, and Volvo Trademark Holding AB v. Lost in Space, SA, WIPO Case No. D2002-0445). Panelists have similarly found in F. Hoffmann-La Roche AG v. Dmitry Gerasymenko, WIPO Case No. D2007-0736, F. Hoffmann-La Roche AG v. Bobik Marley, WIPO Case No. D2007-0694 and F. Hoffmann-La Roche AG v. Brian Robinson, WIPO Case No. D2007-0659.

Therefore, the Panel finds that the domain name <getvaliumonline.com> is confusingly similar to the Complainant’s registered trademark, in which the Complainant has rights.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant asserts that it has rights for the trademark VALIUM, and that no licence, permission, authorization nor consent was granted to the Respondent to use its VALIUM trademark in the Respondent’s domain name.

The Respondent did not provide a Reply, so there is no evidence that the Respondent has any rights or legitimate interests in the disputed domain name.

Specifically, there is no evidence that the Respondent’s use of the domain name was in connection with a bona fide offering of goods or services. According to the Complainant, the Respondent is operating a website that is a search engine composed of sponsored links, some related and others unrelated to the Complainant’s business. Also, the registration of the Complainant’s trademark predates the registration of the domain name, so there is no evidence that the Respondent has been commonly known by the domain name.

Finally, there is no evidence that the Respondent is making a legitimate, noncommercial or fair use of the domain name, without intent for commercial gain.  On the contrary the Complainant’s evidence suggests that the Respondent may generate revenues from each click-through by online consumers of the sponsored links. This would constitute a use of the domain name for commercial gain as users of the Respondent’s website would have been misleadingly diverted to the site by the unauthorized and illegitimate use of the Complainant’s trademark to trade on its fame for commercial gain and profit. In Sigikid H. Scharrer & Koch GmbH & Co. KG, MyBear Marketing-und Vertriebs GmbH, Mr. Thomas Dufner v. Bestinfo, WIPO Case No. D2004-0990, the Panel was of the view that “diversion of Internet traffic by the Respondent to other, unrelated websites, does not represent a use of the domain name in connection with a bona fide offering of goods and services. Rather, the conduct of the Respondent serves the purpose of generating revenues, e.g. from advertised pay-per-click products.”

The Respondent has therefore not provided evidence of circumstances required by paragraph 4(c) of the Policy, or any other circumstances giving it a right or legitimate interest in the domain name. The Panel finds that the Respondent has no rights or legitimate interests in the domain name and that the requirement of paragraph 4(a)(ii) is also satisfied.

C. Registered and Used in Bad Faith

The Policy provides in paragraph 4(b) that certain circumstances, “in particular but without limitation,” will be evidence of bad faith registration and use of a domain name. In this matter circumstances that are relevant to such a finding are where the Respondent has registered and used a domain name to intentionally attempt to attract, for commercial gain, Internet users to a website or other on-line location, by creating the likelihood of confusion with the Complainant’s mark.

The Panel has found that the Respondent has capitalized on Complainant’s famous trademark by registering and using as a domain name a name confusingly similar to the Complainant’s trademark. Evidence of bad faith registration is shown when registration of a domain name occurs in order to utilize another’s well-known reputation by attracting Internet users to the registrant’s website, for commercial gain (see Sociйtй Air France v. Patrick Ory, WIPO Case No. D2003-0628).

It has been stated in L’Orйal, Biotherm, Lancфme Parfums et Beautй & Cie v. Unasi, Inc, WIPO Case No. D2005-0623, that “such exploitation of the reputation of trademarks to obtain click-through commissions from the diversion of internet users is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous decisions: see e.g. Future Brands LLC v. Mario Dolzer, WIPO Case No. D2004-0718; ACCOR v. Mr. Young Gyoon Nah, WIPO Case No. D2004-0681 and Deloitte Touche Tohmatsu v. Henry Chan, WIPO Case No. D2003-0584.”

Accordingly, the Panel finds from the circumstances that the Respondent registered and is using the disputed domain name in an attempt to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. Pursuant to paragraph 4(b)(iv) of the Policy, this constitutes evidence of bad faith registration and use of a domain name for purposes of paragraph 4(a)(iii).

It is therefore established that the Complainant has made out each of the three elements that it is required to prove.

 

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, <getvaliumonline.com> be transferred to the Complainant.


Derek M. Minus
Sole Panelist

Dated: August 14, 2007

 

Источник информации: https://internet-law.ru/intlaw/udrp/2007/d2007-0930.html

 

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