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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

F. Hoffmann-La Roche AG v. Neata Ioana

Case No. D2007-0363

 

1. The Parties

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

The Respondent is Neata Ioana of Bucaresti, Romania.

2. The Domain Name and Registrar

The disputed domain name <valium98.info> is registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 12, 2007. On March 14, 2007, the Center transmitted by email to Registerfly.com a request for registrar verification in connection with the domain name(s) at issue. No verification response was received. On June 5, 2007, the Center transmitted by email another urgent request for registrar verification, now to Go Daddy Software, and notified the Complainant by email on the same day of the transfer of the disputed domain name to Go Daddy Software. On 5 June 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. 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 8, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was June 28, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 3, 2007.

The Center appointed WiIliam A. Van Caenegem as the sole panelist in this matter on July 17, 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.

While the complaint was filed with the Center on March 12, 2007, the Respondent was only notified of the Complaint on June 8, 2007. The delay was essentially due to adverse developments involving ICANN and the Registrar Registerfly.com, about which the Complainant was notified by the Center on March 21, 2007. The Center was only able to proceed when the disputed domain name was transferred to the Registrar GoDaddy.com. The Complainant was notified of the transfer to the new Registrar on June 5, 2007, and a request for registrar verification was communicated by email on the same day to the Registrar. The Respondent was notified of the Complaint on 8 June, 2007 and notification of respondent default was issued by the Center on July 3, 2007. The Respondent was thus afforded the time required under the Rules to respond to the Complaint. The Respondent was not adversely affected or disadvantaged by the delay in notifying or communicating the Complaint, which was due to difficulties in verifying registrant details entirely out of the control of the Center or the Complainant.

 

4. Factual Background

The Complainant is an international healthcare group with operations in more than 100 countries. The Complainant’s trademark VALIUM is registered in over one hundred countries, in relation to chemical and medical substances. The trademark is used in relation to psychotropic medications. The initial registration in Switzerland is dated November 20, 1961 which constitutes the priority date of the registration. The Complainant has provided evidence International Registration No. R250784 of its trademark VALIUM.

 

5. Parties’ Contentions

A. Complainant

The Complainant owns the registered trademark VALIUM. The Respondent’s domain name wholly incorporates the Complainant’s trademark. The trademark is notorious and its notoriety and registration predates the incorporation of the trademark into the disputed domain name.

The Respondent did not grant any consent to the Respondent relating to any use of the trademark. The Respondent’s website to which the domain name resolves is a search engine with sponsored links. Diversion to unrelated websites, clearly for profit from pay-per-click commissions, is not a bona fide offering of goods and services. The Respondent registered the domain name to trade illegally on the Complainant’s fame in the trademark VALIUM. The Respondent has no legitimate right or interest in the domain name.

The registration of the domain name was in bad faith as the Respondent must have had knowledge of the Complainant’s well known product and mark. It is also used in good faith because it is used in a manner which attracts internet users to the Respondent’s website by creating likely confusion as to the source, sponsorship or affiliation of the website with the Complainant. Exploiting another’s reputation to obtain click-through commissions is a common example of use in bad faith. The Respondent is intentionally misleading internet users to attract them to third party websites, thereby illegitimately capitalizing on their VALIUM trademark fame.

B. Respondent

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

 

6. Discussion and Findings

A. Identical or Confusingly Similar

The domain name at issue wholly incorporates the Complainant’s trademark VALIUM. The addition of ‘98’ and means that the domain name is not identical to the Complainant’s trademark. However, the addition of ‘98’ does nothing to dispel the confusion caused by the incorporation of the Complainant’s trademark into the disputed domain name. It is well established that the gTLD (in this case ‘.info’) is disregarded for purposes of comparison under the first element of the Policy. The additional numbers are generic and convey no meaning and they do not when joined together with the Complainant’s trademark constitute some other word or convey a different meaning. Numerous Panel decision have held that the incorporation of a trademark into a domain name in the manner comparable to that demonstrated here has been held to result in a confusingly similar domain name.

The Panel finds that the domain name is confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

The Respondent has not obtained any right, license, permission or authorization from the Complainant in relation to any use of the trademark VALIUM. The manner of use of the domain name does not suggest that the Respondent has any legitimate interest in the trademark or the use of the trademark. The domain name is not being used for any legitimate purposes. Instead, the domain name is apparently being used to generate click-through revenue on a website with sponsored links. Use of a famous trademark by way of its incorporation into a domain name to generate revenue in this manner does not constitute or establish a legitimate interest in respect of the domain name on the part of the Respondent. This has been frequently observed by Panelists. The Respondent has filed no response to the Complaint to support any right or legitimate interest.

The Panel finds that the Respondent has no rights or legitimate interests in the Domain name at issue.

C. Registered and Used in Bad Faith

At the time of registration of the domain name the Complainant’s trademark had been registered in many countries and for a very long time. The Complainant’s trademark designates, on its own submission, a well-known product. The Respondent has not filed a response and has thus not established that the trademark, whether with or without the addition of ‘98’, has some other meaning, usage or connection which would support registration in good faith. The trademark at issue is distinctive and notorious in many jurisdictions. The Respondent would have known about the trademark and the strong association of the trademark with the Complainant’s products at the time of registration. The trademark was therefore registered in bad faith.

The use of a domain name incorporating a notorious, widely-known or famous mark in which the registrant has no legitimate right or interest, for the purpose of generating click through commissions to websites unrelated to the trademark owner, is a recognized use in bad faith of a domain name. In this case, the Respondent apparently intends to take advantage of the confusion of internet users that will result from the incorporation of the trademark into the domain name. Internet users will likely expect that the domain name is associated with the Complainant, whereas in fact it is not, and such users will likely expect to be taken to a website concerning the Complainant’s products or company, whereas they are not. The Respondent seems to aim at making profits from misleading internet users as to the existence of some legitimate connection between the domain name and the Complainant.

The Panel finds that the domain names is registered and used 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 name <valium98.info> be transferred to the Complainant.

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WiIliam A. Van Caenegem
Sole Panelist

Dated: July 31, 2007