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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. PrivacyProtect.org / Contact Id 7065280, Shutikhin Sergey
Case No. D2008-0765
1. The Parties
Complainant is F. Hoffmann-La Roche AG, Basel, Switzerland, represented by internal counsel.
Respondents are PrivacyProtect.org / Contact Id 7065280 and Sergey Shutikhin, Moergestel, the Netherlands; Contact Id 7065280 Shutikhin Sergey, Ekaterinburg, Sverdlovskaya oblast, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <blogvalium-thbp.net> is registered with EstDomains, Inc..
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 15, 2008. On May 16, 2008, the Center transmitted by email to EstDomains, Inc. a request for registrar verification in connection with the domain name at issue. On May 20, 2008, EstDomains, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on May 23, 2008 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on May 23, 2008.
In addition to adding the new registrant and contact information for Respondent, in its amendment to the Complaint Complainant also agreed to submit with respect to any challenges to a decision in the administrative proceeding cancelling or transferring the domain name to the jurisdiction of the courts at the location of Respondent.
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 formally notified Respondent of the Complaint, and the proceedings commenced on May 26, 2008.
On May 27, 2008, in reply to the Center’s formal notification of the Complaint, Respondent sent a very brief email response in Russian (unsigned) to the Center which the Panel translates as follows:
I did not know that “valium” is a trademark. And I am ready to give up the domain name.
Will the sum I spent on it be returned to me?
In accordance with the Rules, paragraph 5(a), the due date for Response was June 20, 2008. Apart from this very short email, Respondent did not submit any formal Response to the Complaint. Accordingly, the Center notified Respondent’s default on June 24, 2008.
The Center appointed Paul E. Mason as the sole panelist in this matter on July 17, 2008. 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 has decided that the very brief unsigned email message above does not provide sufficient basis on which to find genuine consent on the part of Respondent to transfer of the domain name. Therefore, the Panel will proceed to evaluate the three elements of the Policy necessary to make out a case for transfer of the domain name.
4. Factual Background
According to paragraph 10(A) of the Complaint and annex 3 thereto, Complainant holds a multitude of trademark registrations for the name VALIUM all over the world. The mark VALIUM denotes a well-known drug sedative. It was first registered on October 20, 1961, many years before the disputed domain name was registered.
5. Parties’ Contentions
On the first element of the Policy – similarity of the domain name to Complainant’s mark – Complainant points out that the domain name incorporates its mark VALIUM in its entirety. And the fact that Valium is so well-known and notorious only increases the likelihood of confusion with Complainant’s products.
On the second element of the Policy – lack of rights or legitimate interests in the domain name – Complainant indicates that it has exclusive rights to the mark VALIUM, and has not licensed or otherwise authorized Respondent to use it.
On the third element of the Policy – bad faith registration and bad faith use of the domain name – Complainant asserts that the domain name must have been registered in bad faith because Valium is such a well-known product worldwide so that Respondent must have known of it when registering the domain name.
Regarding bad faith use, Complainant has taken a snapshot of the website which resolves from the domain name. It is basically an on-line pharmacy site advertising Valium products sold through channels directly competing with those of Complainant.
Complainant cites Pfizer Inc. v. jg a/k/a Josh Green,
WIPO Case No. D2004-0784 involving the domain names <pfizerwoman.com> and <wwwpfizerforwomen.com> where the Panel in that case stated: “several cases have found that 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.” The panel in that case found that bad faith is established when “Respondent is using the domain names as a forwarding address to a for-profit on-line pharmacy.” ((Id., p. 6).
Respondent did not formally reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel agrees with Complainant’s contentions and also finds that (a) the term “valium” – identical to Complainant’s mark – comprises the predominant element in the domain name; and (b) the use of the domain name prefix “blog”, which implies some kind of ongoing discourse about “Valium” here, the hyphen, and the suffix “thbp”, do not prevent confusion.
B. Rights or Legitimate Interests
Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the domain name. Respondent has not rebutted Complainant’s contentions.
The Panel has seen no evidence of any rights or legitimate interests on the part of Respondent in the domain name.
C. Registered and Used in Bad Faith
The Panel agrees with Complainant’s arguments above. On July 17, 2008, the Panel tried to visit the website deriving from the domain name, but it did not resolve. However, Annex 5 of the Complaint does contain a snapshot of Respondent’s website taken on May 14, 2008 complete with advertisements galore for valium to be sold online. This is clearly an activity commercially competing with Complainant’s own established sales channels for its product Valium – a classic example of bad faith use of a domain name to lure web visitors using the goodwill built up in Complainant’s mark for Respondent’s commercial gain.
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 <blogvalium-thbp.net> be transferred to Complainant
Paul E. Mason
Dated: July 30, 2008