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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION F. Hoffmann-La Roche AG v. TMNET, Anton Gorodov Case No. D2008-0995
1. The Parties The Complainant is F. Hoffmann-La Roche AG, Switzerland. The Respondent is TMNET, Anton Gorodov, Latvia.
2. The Domain Name and Registrar The disputed Domain Name is <valiumplus.com>. The registrar of the disputed Domain Name is EstDomains, Inc.
3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 1, 2008. On July 2, 2008, the Center transmitted by email to EstDomains, Inc. a request for registrar verification in connection with the Domain Name. On July 4, 2008, EstDomains, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the Domain Name and providing the contact details. On July 7, 2008, the Center notified the Complainant that its Complaint was administratively deficient and that if it wishes to proceed further with the case it was requested to file an amendment to the Complaint, indicating that the Complainant will submit to the jurisdiction at the location of the Respondent’s address. The Complainant filed such amendment to the Complaint on July 7, 2008. 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 the Respondent of the Complaint, and the proceedings commenced on July 8, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was July 28, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 29, 2008. The Center appointed Geert Glas as the sole panelist in this matter on August 4, 2008. The Administrative Panel (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. On August 6, 2008, the Complainant and the Respondent were notified by the Center by email of the appointment of Geert Glas as the sole panelist in this matter. The same day, the Complainant, the Respondent and the Panel were notified by the Center that the Panel, in absence of exceptional circumstances, would be required to forward its decision to the Center by August 20, 2008. Also on the same day, the Panel received an electronic file in this matter by e-mail from the Center. The Panel subsequently received a hard copy of the file in this matter via courier mail from the Center. The Panel has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties. The proceedings have been conducted in English.
4. Factual Background The Complainant and its affiliated companies are a healthcare group in the field of pharmaceuticals and diagnostics and having global operations in more than 100 countries. See F. Hoffmann-La Roche AG v. Bulent Sedef, WIPO Case No. D2008-0636; F. Hoffmann-La Roche AG v. Denis Zaicev, WIPO Case No. D2008-0635; F. Hoffmann-La Roche AG v. Domain Administration Limited, WIPO Case No. D2008-0626; F. Hoffmann-la Roche AG v. Popo, WIPO Case No. D2008-0423. Its products include the pharmaceutical product Valium which designates a sedative and anxiolytic drug belonging to the benzodiazepine family. According to the documentary evidence submitted, Valium is widely used as a treatment for anxiety and panic disorder. Valium remains the most prescribed anxiety drug in the United States of America. The Complainant is the owner of the international trademark VALIUM which has been registered pursuant to the Madrid Protocol under registration number 250784 since 20 October 1961. On June 5, 2008, the Respondent registered the Domain Name <valiumplus.com> with EstDomains Inc. It is clear from the evidence that the “www.valiumplus.com” website is used by the Respondent to run an on-line pharmacy selling the pharmaceutical product Valium. This finding of the Panel is confirmed by the following introductory text on the website: “We guarantee that you won’t find a better portal to buy Valium online elsewhere. We have the best resources on genuine Valium and offer you the best deals on authentic and cheap Valium. Buy-valium-online is a complete platform with detailed information on Valium Effects, Valium Benefits, Valium Prescriptions et al. Valium information site has a wealth of information on Valium and Anxiety Disorders. Step in and surf for Valium Medication before you order Valium online”. (Underlined) The “www.valiumplus.com” website also contains some background information about VALIUM, information about the medicine itself and its use (e.g. ‘Why is this medication prescribed?’, ‘How should this medicine be used?’, ‘What special precautions should I follow?’, ‘What side effects can this medication cause?’, etc.). This website was still available on August 7, 2008.
5 Parties’ Contentions A. The Complainant The Complainant states that it is the owner of the registered trademark VALIUM, protected in a multitude of countries worldwide. It claims that it is among the world’s leading research-focused pharmaceutical and diagnostic enterprises and that its trademark VALIUM is well-known. The Complainant believes this notoriety increases the likelihood of confusion. The Complainant’s legal argumentation is as follows: The Complainant states that the Domain Name <valiumplus.com> entirely comprise its trademark VALIUM, in which it has rights. The Complainant contends that the Domain Name is confusingly similar to its registered trademark VALIUM. The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name because (i) the Complainant has not licensed, consented or authorized such use and (ii) it is obvious that the Respondent uses the Domain Name for commercial gain and with the purpose of capitalizing on the fame of the Complainant’s trademark VALIUM. The Complainant further contends that the bad faith of the Respondent in registering and using the Domain Name results from the fact that: (i) the Respondent knew of the existence of the Complainant’s well-known trademark/product VALIUM, and that (ii) the Domain Name is being used to intentionally attract Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s well-known trademark as to the source, affiliation and endorsement of the Respondent’s website or of the products or services posted on or linked to the Respondent’s website. The Complainant also contends that the Domain Name <valiumplus.com> might be harmful to the health of the Internet users, who purchase Valium products under the mistaken impression that they are dealing with the Complainant. The Complainant requests that the Domain Name be transferred to it. B. The Respondent The Respondent did not file a Response.
6 Discussion and Findings A. Effect of the Default The consensus view is that a respondent’s default does not automatically result in a decision in favour of the Complainant and that the Complainant must establish each of the three elements required by paragraph 4(a) of the Policy. See e.g., Franklin Resources, Inc., Franklin Advisers, Inc., Templeton Asset Management Ltd. v. Franklin Fund Group, WIPO Case No. D2006-1607; Kieskeurig B.V. v. P. de Vries, WIPO Case No. D2008-0432; AIDA Cruises German Branch of Società di Crociere Mercurio S.r.l. v. Belize Domain WHOIS Service Lt, WIPO Case No. D2008-0109. However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules. This Panel finds that there are no exceptional circumstances which should prevent the Panel from drawing inferences from the failure of the Respondent to submit a Response. As a result, the Panel infers that the Respondent does not deny the facts asserted and contentions made by the Complainant. See e.g., Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084; Ross-Simons, Inc. v. Domain.Contact, WIPO Case No. D2003-0994. Therefore, asserted facts that are not unreasonable will be taken as true and the Respondent will be subject to the inferences that flow naturally from the information provided by the Complainant. See e.g. Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441; RX America, LLC. v. Matthew Smith, WIPO Case No. D2005-0540. The Panel will now review the three cumulative elements set forth in paragraph 4(a) of the Policy to determine whether the Complainant has complied with such requirements. B. The three cumulative elements set forth in paragraph 4(a) of the Policy (a) Identical or confusingly similar The Domain Name <valiumplus.com> consists of a mere combination of the Complainant’s trademark VALIUM, the word “plus” and the generic top level domain indicator “com”. The latter cannot be taken into consideration when judging confusing similarity. See e.g., Swarovski Aktiengesellschaft v. Kimi DeLuca, WIPO Case No. D2007-0252. The suffix “plus” is of a descriptive nature only and the distinctive element of the Domain Name is obviously the term “valium”. In these circumstances, Internet users finding <valiumplus.com> are likely to be misled into believing that the Complainant is the registrant or is otherwise affiliated or associated with the Domain Name. See e.g., F. Hoffmann-la Roche AG v. Popo, WIPO Case No. D2008-0423. The Panel finds therefore that the Domain Name <valiumplus.net> is confusingly similar with the Complainant’s trademark VALIUM. (b) Right or Legitimate Interests The Complainant has exclusive rights to the trademark VALIUM and has not licensed or otherwise permitted the Respondent to use its trademark or to apply for any domain name corresponding to its trademark. There is no indication that the Respondent has registered or used the name “valium” as a trademark, or has ever been known by this name. Moreover, by not filing a Response, the Respondent has failed to invoke any circumstance which could indicate the existence of any right or legitimate interest he would have in the Domain Name; or otherwise rebut the Complainant’s prima facie case that no such rights or legitimate interests exist. The Panel is of the view, also taking into account the use of the disputed Domain Name as defined below, that the Respondent has no rights or legitimate interests in respect of the Domain Name. (c) Bad Faith (i) Registration in Bad Faith The trademark VALIUM is well-known in the field of pharmaceuticals. In view of the fame of the Complainant’s trademark, there is no doubt that Respondent was aware of the trademark VALIUM prior to registering the Domain Name. This finding of the Panel is also evidenced by the fact that the Respondent’s homepage contains links titled ‘Valium Info’, ‘Valium Benefits’, ‘Valium FAG’, Valium Price’, ‘Valium Effects’ and ‘Valium Background’ which consist of information concerning the product Valium itself and its use. Indeed, there could be no other reason for the Respondent’s registration of the Domain Name than to use it to direct Internet traffic to Respondent’s on-line pharmacy. Consequently, the Respondent intentionally created a situation which is at odds with the legal rights and obligations of the parties. (ii) Use in Bad Faith Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances which if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith. In support of their case the Complainant based its argument concerning bad faith on paragraph 4(b)(iv) which reads as follows “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”. The Panel has to consider whether it is reasonable for it to infer from the submitted evidence and the surrounding circumstances that the Respondent used the Domain Name primarily for any of the purposes set out in paragraph 4(b)(vi) of the Policy or whether there are other reasons for finding bad faith. The Panel considers that the following circumstances are particularly relevant in the assessment of the use in bad faith: - The Complainant’s trademark VALIUM is internationally well-known mark in the field of pharmaceuticals; - The Respondent was using the Domain Name as a forwarding address to a for-profit on-line pharmacy; - At this on-line pharmacy orders could be placed by the public to buy Valium. 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. See e.g., F. Hoffmann-La Roche AG v. PrivacyProtect.org / Contact Id 7065280, Shutikhin Sergey, WIPO Case No. D2008-0765. - The Respondent appears to be trading on the Complainant’s goodwill and reputation, which the Complainant has built up over many years. This, without any explanations by the Respondent to the contrary, of which none have been forthcoming, constitutes bad faith. See e.g., the case of eBay Inc. v. Sunho Hong, WIPO Case No. D2000-1633. In view of those circumstances, it seems indeed that the Respondent has, by using the Complainant’s trademarks in its Domain Name, diverted Internet users to an on-line pharmacy, and intentionally created a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s affiliated on-line pharmacy website. The deliberate diversion of Internet users constitutes bad faith, by creating initial interest confusion that takes advantage of the Complainant’s goodwill. It is well-established in UDRP decisions that “initial interest confusion” and the resultant misdirection of Internet traffic is independently sufficient to establish bad faith. See e.g., Sony Ericsson Mobile Communications International AB, Telefonaktiebolaget LM Ericsson, Sony Corporation v. Party Night Inc., WIPO Case No. D2002-1128. The Respondent did not file a Response in this proceeding, thereby failing to invoke any element or circumstance which could indicate the good faith nature of his registration and use of the Domain Name. (iii) Conclusion concerning registration and use in bad faith The Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy and that the Respondent has registered and is using the Domain Name in bad faith.
7 Decision In the light of the foregoing, the Panel decides that the Domain Name registered by the Respondent is confusingly similar to the Complainant’s trademarks, that the Respondent has no rights or legitimate interests in respect of the Domain Name, and that the Respondent’s Domain Name has been registered and is being used in bad faith. Accordingly, pursuant to paragraph 4(i) of the Policy, and 15 of the Rules the Panel orders that the registration of the Domain Name <valiumplus.com> be transferred to the Complainant. Geert Glas Dated: August 20, 2008
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