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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Roche Products Inc. v. Peter Tonderby/Tonderby Designs Ltd

Case No. D2006-0698

 

1. The Parties

Complainant is Roche Products Inc., Hamilton, Bermuda, represented by Lathrop & Gage L.C., United States of America.

Respondent is Peter Tonderby/Tonderby Designs Ltd., Houston, Texas, United States of America.

 

2. The Domain Names and Registrar

The disputed domain names <buyvalium.net>, <cheapvalium.net> and <genericvalium.net> are registered with Wild West Domains, Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 2, 2006. On June 6, 2006, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the domain names at issue. On June 7, 2006, Wild West Domains, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant 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 Respondent of the Complaint, and the proceedings commenced on June 12, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was July 2, 2006. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 17, 2006.

The Center appointed Kevin C. Trock as the sole panelist in this matter on August 7, 2006. 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 domain names at issue are <buyvalium.net>, <cheapvalium.net> and <genericvalium.net>. The disputed domain names were registered to Peter Tonderby of Tonderby Designs Ltd., located in Houston, Texas.

Complainant is Roche Products, Inc. organized in Panama with offices in Bermuda. Complainant is in the pharmaceutical business, manufacturing pharmaceutical and diagnostic products. Complainant claims ownership of a U.S. trademark registration for VALIUM for use with psychotherapeutic agents since 1961, although the U.S. Trademark Registration No. 725,548 submitted as proof of ownership indicates on its face that the owner of the registration is Hoffman-La Roche Inc., a New Jersey corporation and not Complainant. Complainant offers no explanation as to how it became the owner of this registration, but merely asserts that it is.

Complainant also claims that its parent company, F. Hoffman-LaRoche AG, owns the registration for the domain name <valium.com>, which has apparently been registered since 1997.

Complainant seeks the transfer of the disputed domain names.

 

5. Parties’ Contentions

A. Complainant

Complainant asserts that it is one of the leading manufacturers of pharmaceutical and diagnostic products in the world. Complainant asserts that the mark VALIUM has been extensively promoted in print and electronic advertising, in medical journals, on packaging, and through direct mail since the product was introduced in the U.S. market in 1961. Sales of the VALIUM product have allegedly exceeded hundreds of millions of dollars during this time period.

Complainant also asserts that because of this extensive advertising that the VALIUM mark has acquired fame and celebrity in the United States, and now symbolizes the good will associated with the mark. Complainant has provided what it claims is evidence of this fame, largely in the form of press reports about the inventor of the drug diazepam (the generic name for the active ingredient in the VALIUM product) being inducted into the National Inventors Hall of Fame in 2005.

Complaint also asserts that visitors to the web site associated with the domain name <valium.com> are redirected to the web site located at <rocheusa.com/products> where visitors can obtain information about the VALIUM product manufactured and sold by Complainant.

Complainant alleges that Respondent is using the disputed domain names to host web sites that offer the prescription drug VALIUM and its generic equivalent, diazepam, for sale without a prescription. Complainant asserts that it has no affiliation with Respondent and has not authorized or licensed Respondent to use the VALIUM mark in connection with the sale of its product. Complainant also alleges that by offering to sell prescription drugs to the public without a prescription that Respondent is performing an illegal act in the United States. Complaint further alleges that Respondent is misinforming and deceiving the public as to the manner in which the VALIUM product can be dispensed in the United States when it claims “No Rx Needed” or “you do not need a prescription to purchase medication online” on the websites located at the disputed domain names.

B. Respondent

Respondent did not reply to Complainant’s contentions.

 

6. Discussion and Findings

In order to prevail, Complainant must prove the following three elements:

(i) Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

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

(iii) Respondent has registered the domain name and is using it in bad faith. (Policy, paragraph 4(a)).

Respondent has not filed a response to the Complaint. Pursuant to the Rules, paragraph 5(ix)(e), the Panel will decide the dispute based on the Complaint.

A. Identical or Confusingly Similar

The VALIUM mark has been registered in the United States since 1961, and has been used since that time for the sale of a branded version of the psychotherapeutic agent, diazepam. Hundreds of millions of dollars of the VALIUM product have been sold in the United States since 1961, and the VALIUM mark has been heavily and widely advertised in print and electronic media during this time period. Complainant’s parent company owns the registration for the domain name <valium.com>, which directs visitors to another web site where they can obtain information about the VALIUM product. Accordingly, Complainant appears to have established good will in the VALIUM mark.

The domain names at issue, <buyvalium.net>, <genericvalium.net> and <cheapvalium.net> contain the entire VALIUM mark preceded by a modifier, in this case the terms “buy”, “generic” and “cheap”. These modifiers merely describe some quality or feature of the VALIUM product, which still acts as the principal source identifier in the disputed domain names. Thus, merely preceding the VALIUM mark with descriptive matter to create domain names such as “buyvalium”, “genericvalium” or “cheapvalium” does little, if anything, to change the overall brand impact of the VALIUM mark. See General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087; America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004, citing Sporty’s Farm L.L.C. v. Sportsman’s Market, Inc., 202 F. 3d 489, 497-98 (2d. Cir. 2000).

Accordingly, the Panel finds that the disputed domain names are confusingly similar to Complainant’s VALIUM trademark.

B. Rights or Legitimate Interests

Respondent has no affiliation with Complainant and Complainant has not authorized or licensed Respondent to use the VALIUM mark. Neither Respondent nor its web sites are commonly known by the domain names <buyvalium.net>, <genericvalium.net> or <cheapvalium.net>.

Respondent’s web sites advertise and offer for sale Complainant’s VALIUM product to customers without a prescription as well as “generic Valium”. Neither Complainant’s VALIUM product nor its generic equivalent, diazepam, can be sold legally in the United States without a prescription.

Complainant alleges that Respondent’s use of the VALIUM mark in the disputed domain names is evidence of Respondent’s intent to trade upon the reputation and good will of the mark. Other panels have found that use which intentionally trades on the fame of another cannot create a bona fide offering of goods or services. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna Man”, WIPO Case No. D2000-0847. Respondent’s use of the disputed domain names to advertise that Complainant’s VALIUM drug is available for purchase in the United States without a prescription is not a bona fide offering of goods and services. See G.D. Searle & Co. v. Entertainment Hosting Services, Inc., NAF Case No. FA110783 (finding Respondent’s use of the disputed domain name to solicit pharmaceutical orders without a license or authorization from Complainant does not constitute bona fide offering of goods or services under the Policy, paragraph 4(c)(i)).

The record shows that Respondent is not making a legitimate noncommercial or fair use of the domain names. The evidence establishes that the domain names are being used to sell Complainant’s VALIUM product for commercial gain. Respondent is trading on Complainant’s goodwill and using the disputed domain names to offer and sell Complainant’s VALIUM drug without a prescription. Such activity does not represent a legitimate noncommercial or fair use under the Policy, paragraph 4(c)(iii).

Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

Pursuant to paragraph 4(b)(iv) of the Policy, there is evidence of registration and use of a domain name in bad faith where Respondent has “intentionally attempted to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product or service offered on Respondent’s web site or location.” The evidence supports a conclusion of bad faith here.

Here, there is confusing similarity between Complainant’s registered VALIUM mark and the disputed domain names. Moreover, it is reasonable to conclude that Respondent intentionally or recklessly created that confusion by registering and using the disputed domain names many years after Complainant had registered the VALIUM mark and had created goodwill in the mark through its extensive advertising and sales programs. See America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004. Respondent’s conduct is sufficient to establish bad faith registration of the disputed domain names. See also Sporty’s Farm, L.L.C. v. Sportsman’s Market, Inc., 202 F.3d 489, 497-98 (2d Cir. 2000).

Registration of a domain name that is confusingly similar to a famous trademark by any entity that has no relationship to that mark is itself sufficient evidence of bad faith registration and use. No relationship exists between Complainant and Respondent, and Complainant has not authorized or licensed Respondent to use the VALIUM mark. See Sporty’s Farm, 202 F.3d at 498; AT&T Corp. v. John Zuccarini d/b/a Music Wave and RaveClub Berlin, WIPO Case No. D2002-0440; Veuve Clicquot Ponsardin, Maison Fondйe en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (use of a name connected with such a well-known product by someone with no connection with the product suggests opportunistic bad faith).

Evidence of Respondent’s bad faith is also found in the posted photographs of Complainant’s VALIUM tablets, which are not approved for sale in the United States, on Respondent’s web site located at “www.buyvalium.net”. Consumers are potentially misled into believing that they can legitimately purchase Complainant’s VALIUM tablets in the United States when in fact they can not do so. Misleading consumers is further evidence of bad faith use of a domain name.

As for the element of commercial gain, there is a clear offer at Respondent’s site to sell VALIUM. The record clearly supports the inference that Respondent has created and exploited the likelihood of confusion intentionally for its own commercial purposes.

Based on the evidence, Respondent has intentionally used Complainant’s VALIUM mark in the registration and use of the disputed domain names to divert traffic to a web site which offers to sell VALIUM for its own commercial gain. See State Fair of Texas v. Granbury.com, NAF Case No. FA0095288; Veuve Clicquot Ponsardin, Maison Fondйe en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163.

Accordingly, the Panel concludes that Respondent registered and is using the disputed domain names in bad faith.

 

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 names, <buyvalium.net>, <cheapvalium.net> and <genericvalium.net> be transferred to Complainant.

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Kevin C. Trock
Sole Panelist

Dated: August 21, 2006