Westmore · UDRP DecisionPurchasevaliumonline.com
The Panel ordered transfer of <purchasevaliumonline.com>. It found the domain confusingly similar to the Complainant’s distinctive and globally well-known VALIUM mark because VALIUM was the dominant element and the additional words “purchase” and “online” were descriptive. The Respondent lacked rights or legitimate interests because the domain was commercially used to link to an online pharmacy offering various pharmaceutical products, without the Complainant’s authorization. Bad-faith registration and use were established from the Respondent’s knowledge of the earlier well-known mark and its intentional use of confusion to attract users for commercial gain.
The timeline behind purchasevaliumonline.com
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 decision illustrates the treatment of a well-known pharmaceutical mark combined with descriptive online-purchasing terms and used to direct traffic to a commercial pharmacy. The descriptive additions reinforced rather than displaced the trademark reference, while the pharmacy-forwarding use affected both the legitimate-interests and bad-faith analyses.
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. Whois Agent, Whois Privacy Protection Service Case No. D2014-0496 1. The Parties The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, internally represented. The Respondent is Whois Agent, Whois Privacy Protection Service of Xiamen, Fujian, China. 2. The Domain Name and Registrar The disputed domain name <purchasevaliumonline.com> is registered with Bizcn.com, Inc. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 28, 2014. On March 28, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 31, 2014, 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 8, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 28, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 29, 2014. The Center appointed Charles Gielen as the sole panelist in this matter on May 15, 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 the Rules, paragraph 7. 4. Factual Background The Complainant owns the trademark VALIUM that is protected on the basis of registrations in a multitude of countries worldwide. Among others, this trademark is registered as an International Registration No. R250784 with a priority date of October 20, 1961. The Respondent registered the disputed domain name <purchasevaliumonline.com> on February 5, 2012. According to Annex 6 of the Complaint the disputed domain name resolves to a website which links to an online webshop (<24x7-pharmacy.com>) where various pharmaceutical products such as VALIUM can be purchased. 5. Parties’ Contentions A. Complainant 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 having global operations in more than 100 countries. The mark VALIUM designates a sedative and anxiolytic drug belonging to the benzodiazepine family, which enabled the Complainant to build a world-wide reputation in psychotropic medications. For the mark VALIUM the Complainant holds registrations in over hundred countries on a world-wide basis. The Complainant has exclusive rights for VALIUM, as mentioned above and no license, permission, authorization or consent was granted to the Respondent to use VALIUM in the disputed domain name. Furthermore, 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 mark VALIUM. The disputed domain name is being used in bad faith. This is obvious since when viewing the website from the Respondent it becomes clear that the Respondent has intentionally attempted (for commercial purpose) to attract Internet users to the website operated by the Respondent, by creating a likelihood of confusion with the Complainant’s well-known mark as to the source, affiliation and endorsement of this website or of the products or services posted on or linked to this website and the webshop to which this website links. The Respondent, by using the disputed domain name, is intentionally misleading the consumers and confusing them by making them believe that the website behind the link is associated or recommended by the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings The Panel is of the opinion that the Complainant’s contentions are justified and that the disputed domain name should be transferred to the Complainant. The Panel gives the following reasons for its decision. A. Identical or Confusingly Similar The Complainant proves that it has rights in the trademark VALIUM based on the aforementioned International Registration. This trademark is a distinctive mark and is notorious. The word “valium” is the dominant element in the disputed domain name, since the words “purchase” and “online” are purely descriptive. In making the comparison between the trademark and the disputed domain name the generic Top-Level Domain (“gTLD”) suffix is usually disregarded. The Panel is of the opinion that applying these principles to this case, the disputed domain name should be considered confusingly similar to the trademarks. Therefore, the requirement under paragraph 4(a)(i) of the Policy is met. B. Rights or Legitimate Interests The Panel is of the opinion that the Complainant made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. First of all, the Respondent makes a commercial use of the disputed domain name by offering products, identical with, or similar to the products offered for sale by the Complainant under its VALIUM trademark. It is unclear whether the Respondent offers among others the genuine Valium product; however the Complainant made it clear that it did not give permission to the Respondent to use the trademark VALIUM. Even if the Respondent would sell original Valium products (which has not become clear in this case because the Respondent did not file a response), this would not automatically give it the right to use the trademark in the disputed domain name. Furthermore, the Panel agrees with the Complainant that the Respondent, whose website links to an online pharmacy which offers for sale of a great variety of pharmaceutical products, uses the domain for commercial gain and with the purpose of capitalizing on the fame of the Complainant’s mark. The Respondent did not present any allegations or evidence of rights or legitimate interests it might have in the disputed domain name. In view of the aforementioned, the Panel is of the opinion that the requirement of paragraph 4(a)(ii) of the Policy is met. C. Registered and Used in Bad Faith The Panel is furthermore of the opinion that the disputed domain name was registered and is being used in bad faith. The Panel recalls that the trademark VALIUM is a globally well-known trademark and is used and registered before the disputed domain name was registered. The Panel is of the opinion that at the time of the registration of the disputed domain name, the Respondent had knowledge of the Complainant’s well-known trademark VALIUM. The Panel furthermore agrees with the Complainant that the Respondent has intentionally attempted (for commercial purpose) to attract Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s trademark as to the source, affiliation and endorsement of the Respondent’s website or of the products or services posted on or linked to Respondent’s website. Also, the Respondent is intentionally misleading the consumers and confusing them by making them believe that the website and the webshop to which this website links are associated or recommended by the Complainant. Indeed, as has been held by a previous UDRP panel , bad faith may be established when“Respondent is using the domain names as a forwarding address to a for-profit on-line pharmacy” (see Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784 ) . In this case, the website of the Respondent functions as such a forwarding address. The Panel therefore considers the requirement of paragraph 4(a)(iii) to be met. 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 <purchasevaliumonline.com> be transferred to the Complainant. Charles Gielen Sole Panelist Date: May 27, 2014
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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