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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION Roche Products Inc. v. Michael Robert Case No. D2008-1155
1. The Parties Complainant is Roche Products Inc., a corporation duly organized under the laws of Panama, with offices in Hamilton, Bermuda, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, represented by Lathrop & Gage L.C., United States of America. Respondent is Michael Robert, Lawrenceville, Georgia, United States of America (“United States”).
2. The Domain Name and Registrar The disputed domain name <valiumpills.net> (the “Disputed Domain Name”) is registered with OnlineNic, Inc. d/b/a China-Channel.com.
3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 30, 2008. On July 30, 2008, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the Disputed Domain Name. On July 31, 2008, OnlineNic, Inc. d/b/a China-Channel.com transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on August 4, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was August 24, 2008. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 25, 2008. The Center appointed Philip N. Argy as the sole panelist in this matter on September 19, 2008 (the delay being attributable to another prospective panelist becoming unavailable). 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 facts, taken from the Complaint, are uncontested: (a) Complainant, together with its affiliated companies, is one of the world’s leading manufacturers of pharmaceutical and diagnostic products. Its VALIUM trademark is protected for a pharmaceutical psychotherapeutic agent in a multitude of countries. For example, VALIUM is registered to Complainant in the United States Patent and Trademark Office and has been in use by Complainant or its affiliates since 1961. (b) The psychotherapeutic in respect of which VALIUM is registered is a pharmaceutical product indicated for the treatment and prevention of anxiety. Complainant’s VALIUM product has been extensively promoted in medical journals, promotional materials, packaging, medical informational materials, television advertising and direct mailings. Sales of VALIUM have “exceeded hundreds of millions of dollars” in the United States alone since 1961. (c) Advertising and promotion for VALIUM has been sufficiently extensive that the product has acquired fame and celebrity, “symbolizing the goodwill that Roche has created in the United States and throughout the world.” (d) Complainant’s parent company, F. Hoffmann-La Roche AG, owns and has registered the domain name <valium.com>. When an Internet user in the United States types <valium.com> into a web browser’s address field, he or she is re-directed to the website at “www.rocheusa.com/products” through which Complainant’s customers and medical practitioners can obtain accurate and reliable information about VALIUM.
5. Parties’ Contentions A. Complainant Complainant’s submissions and contentions are, in summary, that its VALIUM trademark is a famous mark, that <valiumpills.net> is confusingly similar to Complainant’s mark, that Respondent has no rights or legitimate interests in the Disputed Domain Name, and that the Disputed Domain Name was registered and is being used in bad faith. Given the lack of a Response, Complainant’s submissions can be summarised for present purposes as follows: a) The Disputed Domain Name is confusingly similar to a trademark or service mark in which Complainant has rights The Disputed Domain Name, <valiumpills.net>, wholly contains Complainant’s VALIUM trademark. In light of the registered mark VALIUM and Roche’s domain name <valium.com>, Respondent’s registration and use of the Disputed Domain Name creates a strong likelihood of confusion as to source, sponsorship, association or endorsement by Complainant of Respondent’s website to which the Disputed Domain Name resolves. “Numerous Panel decisions have established that the addition of words or letters to a mark used in a domain name does not alter the fact that the domain name is confusingly similar to the mark…Generally, a user of a mark ‘may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it’.” 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23:50 (4th ed. 1998). Thus, the descriptive language added here, namely, “pills” does not prevent the likelihood of confusion in this case. See 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). Furthermore, on its website, Respondent uses without authorization Complainant’s VALIUM mark in its trade name, “www.valiumpills.net”. Thus, the Disputed Domain Name is identical or confusingly similar to Complainant’s VALIUM trademark within the meaning of the Policy, paragraph 4(a)(i). b) Respondent has no rights or legitimate interests in the Disputed Domain Name and has not been commonly known by the Disputed Domain Name Respondent has no rights or legitimate interests in the name <valiumpills.net>. “Valium” is not a dictionary word and has no valid use other than as Complainant’s trademark. Complainant has not authorized Respondent to use its trademark VALIUM nor to incorporate the trademark into any domain name or trade name. Respondent’s use of the Disputed Domain Name and the infringing trade name, “www.valiumpills.net”, indicates that the Disputed Domain Name and trade name are being used because of the goodwill created by Complainant in the VALIUM trademark. It is clear that neither Respondent nor its website have been commonly known by the Disputed Domain Name <valiumpills.net> pursuant to the Policy, paragraph 4(c)(ii). Respondent also uses <valiumpills.net> in a copyright notice as if it were a company name. Internet users who key the Disputed Domain Name into a browser are directed to various websites including “www.buymedsquick.com”, which is not affiliated with or sponsored by Complainant, on which an identical customer group is offered VALIUM as well as a competitive diazepam product online for purchase, all to the further confusion of purchasers and the detriment of Complainant as trademark owner. By Respondent’s use and registration of the Disputed Domain Name, it seeks to capitalize on the reputation associated with Complainant’s VALIUM trademark and to use that recognition to divert Internet users seeking Complainant’s website to a website wholly unrelated to Complainant, namely, Respondent’s website at “www.valiumpills.net”. The operator of the unrelated website has no affiliation or connection whatsoever with Complainant. Such uses, including sales of a VALIUM product through a domain name containing Complainant’s mark VALIUM in its entirety, to an identical customer group without permission from Complainant, for commercial gain, are clear indications of bad faith. If Respondent’s acts of unfair competition continue, they may cause very significant harm, namely, damage to Complainant’s reputation, and negative consequences to those consumers taking the VALIUM brand or generic diazepam psychotherapeutic agent medication when it is not appropriate for them. Respondent’s appropriation and use of Complainant’s famous trademark is a clear attempt to create and benefit from consumer confusion regarding the association between Complainant’s bona fide business and Respondent’s potentially health damaging activities. As such, it is clear that Respondent has no rights or legitimate interests in the Disputed Domain Name. See the Policy, paragraph 4 (a)(ii). The Disputed Domain Name is being used to promote products of Complainant’s competitors, and links to online pharmacies. Respondent’s use of the Disputed Domain Name demonstrates Respondent’s lack of a legitimate non commercial interest in, or fair use of, the domain name. Hoffmann-La Roche Inc. v. Onlinetamiflu.com, WIPO Case No. D2007-1806, citing Pfizer Inc. v. jg a/k/a/ Josh Green, WIPO Case No. D2004-0784. “The panel is free to infer that Respondent is likely receiving some pecuniary benefit […] in consideration of directing traffic to that site.” See The Bear Stearns Companies Inc. v. Darryl Pope, WIPO Case No. D2007-0593 (citing COMSAT Corporation v. Ronald Isaacs, WIPO Case No. D2004-1082). See also Fat Face Holdings Ltd v. Belize Domain WHOIS Service Lt, WIPO Case No. D2007-0626; Sanofi-aventis v. Montanya ILtd., WIPO Case No. D2006-1079. c) Respondent has not used the Disputed Domain Name for a bona fide offering of goods or services Respondent’s use and incorporation of Complainant’s famous trademark VALIUM in the Disputed Domain Name is evidence of Respondent’s intent to trade upon the reputation of Complainant’s VALIUM trademark. In Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847 the Panel found that “[u]se which intentionally trades on the fame of another cannot constitute a ‘bona fide’ offering of goods or services”. There is no bona fide offering of goods or services by Respondent. Respondent’s commercial activities undertaken through use of the Disputed Domain Name are neither fair use nor bona fide under the Policy. The unauthorized appropriation of another’s trademark in a domain name and the commercial use of the corresponding website cannot confer rights or legitimate interests upon Respondent. See, e.g. America Online, Inc. v. Xianfeng Fu, WIPO Case No. D2000-1374 (“it would be unconscionable to find […] a bona fide offering of services in a respondent’s operation of [its] website using a domain name which is confusingly similar to the complainant’s mark and for the same business”), cited in Hoffmann-La Roche Inc. v. Aneko Bohner, WIPO Case No. D2006-0629. Hoffmann-La Roche Inc. v. Samuel Teodorek, WIPO Case No. D2007-1814. As Respondent’s use of Roche’s trademark is infringing, its use of the Disputed Domain Name cannot be considered bona fide. See, e.g., AltaVista Company v. James A. Maggs, NAF Case No. FA95545 (“This Arbitrator cannot and does not find that Respondent’s offering of goods and/or services prior to August 18, 2000 were ‘bona fide.’ The American Heritage Dictionary of the English Language (Third Edition, 1992) defines ‘bona fide’ as ‘made or carried out in good faith’, ‘authentic’ or ‘genuine’. This Arbitrator cannot find the use by Respondent of marks identical and/or confusingly similar to valid, Federally-registered marks of another to constitute offering of services ‘in good faith’ and certainly not ‘authentic’ or ‘genuine’, especially since Respondent has no authorization from Complainant. Thus, [UDRP] 4(c)(i) is of no avail to Respondent on this record. Respondent has no rights or legitimate interest in respect of the domain name.”). Respondent’s unauthorized use of the Disputed Domain Name to solicit sales of a VALIUM product and a generic competitive product to an identical customer group without a license or permission by using the trade name “www.valiumpills.net” on its website is not a bona fide offering of goods and services under the Policy, paragraph 4(c)(i). 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)). d) Respondent is not making a legitimate non commercial or fair use of the Disputed Domain Name without intent for commercial gain There is no evidence that Respondent is making a legitimate non commercial or fair use of the Disputed Domain Name without intent for commercial gain. (Policy, paragraph 4(c)(iii)). Clearly, Respondent is trading on Complainant’s goodwill in its famous VALIUM trademark and is using the Disputed Domain Name <valiumpills.net> and trade name, “www.valiumpills.net”, to sell a VALIUM product as well as competitors’ pharmaceutical products including a competitive generic product to an identical customer group without permission or license. This does not represent a bona fide offering of goods or services under the Policy, paragraph 4(c)(i) or a legitimate noncommercial or fair use under the Policy, paragraph 4(c)(iii). See G.D. Searle & Co. v. James Mahony, NAF Case No. FA112559 (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)). Respondent has no legitimate interest in the disputed domain name containing Complainant’s famous mark VALIUM, is in no way connected with Complainant, and is trading on Complainant’s famous mark VALIUM for commercial gain. e) Respondent registered and is using the Disputed Domain Name in bad faith Respondent’s true purpose in registering the Disputed Domain Name which incorporates Complainant’s VALIUM mark in its entirety is to capitalize on the reputation of Complainant’s VALIUM mark by diverting Internet users seeking Complainant’s website to Respondent’s own website which uses the VALIUM mark in its trade name and domain name to solicit orders for Complainant’s product and various competitive diazepam and other pharmaceutical products without any permission from Complainant. Respondent’s bad faith is clearly evident from the following: (a) “Valiumpills” is not a word. (b) Complainant’s mark VALIUM is an invented and coined famous mark that has an extremely strong worldwide reputation. (c) There exists no relationship whatsoever between Respondent and Complainant, and Complainant has not given Respondent permission to use its famous mark VALIUM in a domain name, in a trade name, or in a copyright notice or to use it in any manner on Respondent’s website to sell any VALIUM product or any competitor’s diazepam or other pharmaceutical product. (d) Under these circumstances, the only reasonable conclusion is that Respondent was aware of the VALIUM trademark, and seeks to divert Internet users to a website for its own commercial gain, all to the confusion of the public and detriment of Complainant. (e) By operating the website located at “www.valiumpills.net” Respondent has intentionally attempted to attract for financial gain Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website or the goods sold on or through Respondent’s website. See State Fair of Texas v. Granbury.com, NAF Case No. FA95288 (finding bad faith where Respondent registered the domain name “bigtex.net” to infringe on Complainant’s goodwill and attract Internet users to Respondent’s website). (f) The site to which customers are directed through Respondent’s website, which sells Complainant’s VALIUM product and competitive generic diazepam and other products, has no legitimate business connection with Complainant or its VALIUM psychotherapeutic agent product. Such unauthorized use of Complainant’s mark suggests opportunistic bad faith. See Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163. (g) Use of the <valiumpills.net> Domain Name to promote sales of Complainant’s preparation and also to promote competing and unrelated products demonstrates bad faith use. Hoffmann-La Roche Inc. v. Samuel Teodorek, WIPO Case No. D2007-1814, citing Pfizer Inc. v. jg a/k/a/ Josh Green, WIPO Case No. D2004-0784 citing Google, Inc. v. wwwgoogle.com and Jimmy Siavesh Behain, WIPO Case No. D2000-1240; Casio Keisanki Kabushiki Kaisha (Casio Computer Co., Ltd.) v. Jongchan Kim, WIPO Case No. D2003-0400.
6. Discussion and Findings Although Complainant’s submissions are formally uncontested, it has the burden of demonstrating that the requirements of paragraph 4(a) of the Policy are made out, and the Panel believes it proper to consider the submissions, and the evidence, and to make formal findings. Also, under paragraphs 10 and 15(a) of the Rules, the Panel regards this as a desirable course to take in any event. A. Identical or Confusingly Similar Complainant has extensively demonstrated its rights in the trademark VALIUM. The use of the VALIUM trademark by Complainant can be traced back almost 50 years. There is more than sufficient evidence that Complainant’s VALIUM pharmaceutical is marketed in a pill dosage form, thus making the expression “valium pills” descriptive of Complainant’s pharmaceutical product. It follows that the addition of “pills” to Complainant’s trademark, to form the Disputed Domain Name, increases rather than reduces the likelihood of confusion. The Panel has no hesitation in finding the Disputed Domain to be confusingly similar to Complainant’s well-established VALIUM trademark. B. No Rights or Legitimate Interests Respondent has not asserted any basis for its use of VALIUM in the Disputed Domain Name. As this Panel has previously noted in numerous decisions, the lack of a response to a complaint involving famous trademarks makes it difficult for a panel not to find in a complainant’s favour on this element of the Policy. Where the Disputed Domain Name comprises a complainant’s mark with descriptive text that corroborates rather than dispels the apparent association, the legitimacy of a respondent’s interests is correspondingly more difficult to demonstrate and, in this Panel’s view, virtually impossible to demonstrate without filing a Response. For the reasons advanced by Complainant, the Panel comfortably concludes that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, and so finds. C. Registered and Used in Bad Faith The VALIUM mark has been in use for almost five decades in the United States. No plausible explanation for Respondent’s conduct has been proffered. Although not specifically noted by Complainant, the Panel notes from both the WhoIs information annexed to the Complaint and from the Registrar’s verification message that the Disputed Domain Name is pointed to “ns1.parked.com” and “ns2.parked.com”. In other words, the domain name record for the Disputed Domain Name nominates those servers as the location of the hosted website for the Disputed Domain Name. As is apparent from their name, those servers belong to Parked.com, a domain name monetization service described at <http://www.parked.com/>. A domain monetization service enables a domain name registrant to “park” their domain name instead of providing a website to which the domain name will resolve. When a user clicks on a link or types the Disputed Domain Name into their browser, instead of being taken to a website owned by Respondent, they are taken to a website owned by Parked.com and the Respondent receives payments from Parked.com for links that visitors to Parked.com then follow. The website that Parked.com provides is generated based on the domain name parked. So, in the case of the Disputed Domain Name, the “valiumpills” character string is used by Parked.com to generate a website where that character string is used as a keyword to determine the links that will be displayed to a visitor. The effect is similar to keying the Disputed Domain Name into a search engine instead of into a browser address field. Because of the potential for misuse of the technique, Parked.com requires in its terms of use at <https://secure.parked.com/tos/> that its customers agree not to use any domain name which embeds another person’s trademark. Two conclusions can therefore be drawn about Respondent from its use of Parked.com to host the Disputed Domain Name. First, its conduct is classic domain monetization unconnected with any bona fide supply of goods or services by Respondent. And secondly, it is also in breach of its agreement with Parked.com by use of an “Inappropriate URL” within the meaning of section 1(d) of those Terms of Service. Basically, Respondent sits passively collecting click-through revenue generated solely from Complainant’s goodwill and Internet users’ inaccurate guessing of the correct domain name associated with Complainant’s VALIUM branded pills. Given the obvious danger of consumers being afforded inaccurate, incomplete or misleading information about prescription pharmaceuticals, this Panel regards such conduct as constituting serious bad faith and also being against the public interest. Given the relative recency with which the Disputed Domain Name was registered (on February 28, 2005) compared to the 47 year period during which Complainant’s trademark has been in use in Respondent’s home country, it is not difficult for the Panel to infer that the Disputed Domain Name was also registered in bad faith. The trademark VALIUM is an invented word and Respondent proffers no plausible (nor indeed any) explanation for its use in the Disputed Domain Name, let alone in conjunction with “pills”, which is the dosage form of Complainant’s product. Therefore the Panel formally and comfortably finds that the Disputed Domain Name was registered and is being used by Respondent 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 <valiumpills.net> be transferred to Complainant. Philip N. Argy Date: September 28, 2008
: https://xn--c1ad2agd.xn--p1ai/intlaw/udrp/2008/d2008-1155.html
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