Westmore · UDRP DecisionBuy-online-valium.net
The Panel ordered transfer of <buy-online-valium.net>. It found the domain confusingly similar to the Complainant’s well-known VALIUM mark, that the Respondent lacked rights or legitimate interests because its online-pharmacy use did not satisfy reseller legitimacy criteria, and that the domain was registered and used in bad faith to attract users for commercial gain through confusion with the VALIUM mark.
The timeline behind buy-online-valium.net
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
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The case illustrates how a domain combining a pharmaceutical mark with direct purchasing terms can satisfy confusing similarity and how online-pharmacy use may fail the reseller test when competing products are offered and the registrant’s relationship with the trademark owner is not disclosed. The same commercial use also supported the finding of knowledge and intentional confusion under paragraph 4(b)(iv).
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION F. Hoffmann-La Roche AG v. Med2shop, Thomas Donald Stenzel Case No. D2013-2120 1. The Parties The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally. The Respondent is Med2shop, Thomas Donald Stenzel of Sunland Park, Arkansas, United States of America. 2. The Domain Name and Registrar The disputed domain name <buy-online-valium.net> is registered with Web Commerce Communications Limited dba WebNic.cc (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 6, 2013. On December 6, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 6, 2013, the Registrar 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” or “UDRP”), 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 10, 2013. In accordance with paragraph 5(a) of the Rules, the due date for Response was December 30, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 8, 2014. The Center appointed Brigitte Joppich as the sole panelist in this matter on January 17, 2014. 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 paragraph 7 of the Rules. 4. Factual Background The Complainant is together with its affiliated companies one of the world's leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics and has global operations in more than a hundred countries. One of the Complainant’s products is VALIUM, which designates a sedative and anxiolytic drug belonging to the benzodiazepine family. The Complainant owns rights in the trademark VALIUM again in more than a hundred countries worldwide, inter alia through International Registration No. R250784 VALIUM, registered on December 20, 1961 (hereinafter referred to as the “VALIUM Mark”). The disputed domain name was registered on November 11, 2013 and is being used in connection with a website offering products of competing third parties as well as the Complainant’s products. Furthermore, the website contains links to the Respondent’s online pharmacy at “www.med2shop.com”. 5. Parties’ Contentions A. Complainant The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case. (1) The Complainant states that the disputed domain name is confusingly similar to the well-known and notorious VALIUM Mark as it incorporates such mark in its entirety and as the addition of the descriptive terms "buy” and “online” as well as the two hyphens does not sufficiently distinguish the disputed domain name from the VALIUM Mark. (2) The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name as the Complainant has exclusive rights in the VALIUM mark, as no license, permission, or other authorization respectively consent to use VALIUM mark in the disputed domain name was granted to the Respondent, as the disputed domain name clearly alludes to the Complainant, as it is obvious that the Respondent uses the disputed domain name for commercial gain and with the purpose of capitalizing on the fame of the Complainant’s VALIUM Mark and as the Respondent is using the disputed domain name to redirect Internet users to an online pharmacy. (3) The Complainant finally alleges that the disputed domain name was registered and is being used in bad faith. With regard to bad faith registration, the Complainant argues that the Respondent had doubtlessly knowledge of the well-known VALIUM Mark when registering the disputed domain name. Furthermore, the Complainant argues that the disputed domain name is also being used in bad faith as the Respondent is intentionally attempting (for commercial purpose) to attract Internet users to the Respondent's websites, by creating a likelihood of confusion with the Complainant's well-known mark 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. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present: (i) the disputed domain name is identical or confusingly similar to the Complainant’s trade mark; and (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The disputed domain name fully incorporates the well-known VALIUM Mark in which the Complainant has exclusive rights. In the view of the Panel, the mere addition of the words "buy” and “online” as well as the two additional hyphens does not eliminate the similarity between the VALIUM Mark and the disputed domain name, as the word VALIUM is the predominant part of the disputed domain name and as the additional generic words “buy” and “online” are just as insufficient to hinder a finding of confusing similarity as the two hyphens (cf. F. Hoffmann-La Roche AG v. PrivacyProtect.org / Yuriy Khokhlov , WIPO Case No. D2012-1038 ; F. Hoffmann-La Roche AG v. Globex International , WIPO Case No. D2006-1008 (<buyonlinetamiflu.net>); F. Hoffmann-La Roche AG v. George McKennitt , WIPO Case No. D2005-1300 (<buyonlinevalium.com> et al.)). Furthermore, it is well established that the generic Top Level Domain (gTLD) is generally not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the complainant’s trademark and the disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr. , WIPO Case No. D2000-1525 ; Rollerblade, Inc. v. Chris McCrady , WIPO Case No. D2000-0429 ; Phenomedia AG v. Meta Verzeichnis Com , WIPO Case No. D2001-0374 ). Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e. : (i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or (ii) the respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if the respondent has acquired no trademark or service mark rights; or (iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue. Even though the Policy requires a complainant to prove that the respondent has no rights or legitimate interests in the disputed domain name, it is the consensus view among UDRP panelists that a complainant has to make only a prima facie case to fulfill the requirements of paragraph 4(a)(ii) of the Policy. As a result, the burden of coming forward with evidence of the respondent’s rights or legitimate interests in the disputed domain name will then shift to the respondent. The Complainant has substantiated that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that the Complainant has fulfilled its obligations under paragraph 4(a)(ii) of the Policy. The Respondent did not deny these assertions in any way and therefore failed to prove any rights or legitimate interests in the disputed domain name. Based on the evidence before the Panel, the Panel cannot find any rights or legitimate interests of the Respondent either. In particular, the Respondent’s use is no bona fide use under the Policy. The Panel acknowledges that a reseller can make a bona fide offering of goods and services and thus have a legitimate interest in a domain name if the use fits certain requirements, including the actual offering of goods, the use of the site to sell only the trademarked goods, and the site's accurately and prominently disclosing the registrant's relationship with the trademark holder (cf. Oki Data Americas, Inc. v. ASD, Inc. , WIPO Case No. D2001-0903 ; Mariah Boats, Inc. v. Shoreline Marina, LLC , NAF Claim No. 94392; Nikon, Inc. and Nikon Corporation v. Technilab, Inc. , WIPO Case No. D2000-1774 ; Experian Information Solutions, Inc. v. Credit Research, Inc. , WIPO Case No. D2002-0095 ). Given that the Respondent does not disclose its relationship to the Complainant at all, that the Respondent’s website offers products of the Complainant’s competitors for sale as well, and that the website also links to the Respondent’s online pharmacy at “www.med2shop.com”, the Respondent’s use of the disputed domain name does not meet the criteria set out in Oki Data Americas, Inc. v. ASD, Inc. , supra . Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the domain name under paragraphs 4(a)(ii) and 4(c) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy sets out four illustrative circumstances, which can be evidence of the registration and use of the disputed domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e .: (i) circumstances indicating that the respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out of pocket costs directly related to the disputed domain name; or (ii) the respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or (iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the respondent’s website or location or of a product or service on its website or location. The Panel is satisfied that the Respondent registered the disputed domain name with full knowledge of the Complainant and its rights in the well-known VALIUM Mark as it itself offers the Complainant’s VALIUM products for sale. In the Panel’s view, it is simply inconceivable that the Respondent registered the disputed domain name without knowledge of the Complainant and its rights in the VALIUM Mark. As to bad faith use, by fully incorporating the VALIUM Mark into the disputed domain name and by using such domain name in connection with a website offering inter alia the Complainant’s competitors’ products for sale, the Respondent was, in all likelihood, trying to divert traffic intended for the Complainant’s website to its own for commercial gain as set out under paragraph 4(b)(iv) of the Policy. The Panel is therefore satisfied that the Respondent has also used the disputed domain name in bad faith. Consequently, the Panel finds that the Respondent registered and used the disputed domain name in bad faith and that the Complainant satisfied the requirements of paragraph 4(a)(iii) of the Policy. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <buy-online-valium.net> be transferred to the Complainant. Brigitte Joppich Sole Panelist Date: January 19, 2014
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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