Westmore · UDRP DecisionValium.name
The Panel ordered transfer of <valium.name>. It found the domain identical to the Complainant’s registered VALIUM trademark, found no rights or legitimate interests because the Respondent did not rebut the Complainant’s prima facie case and was using the domain for a website apparently advertising or selling VALIUM, and found bad-faith registration and use based on the mark’s longstanding global reputation and the website’s attempt to suggest a commercial relationship or endorsement.
The timeline behind valium.name
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This decision illustrates an exact-match pharmaceutical trademark dispute in which the domain’s associated commercial website reinforced both the absence of legitimate interests and bad faith. Particularly significant was the website language suggesting promotion by the trademark owner, which the Panel viewed as an attempted illusion of endorsement rather than merely nominative reference to a product.
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. Katina Chatterson Case No. D2014-1011 1. The Parties The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally. The Respondent is Katina Chatterson of Honolulu, Hawaii, the United States of America. 2. The Domain Name and Registrar The disputed domain name <valium.name> is registered with DNC Holdings, Inc. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 13, 2014. On June 13, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 15, 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 June 25, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 15, 2014. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on June 23, 2014 The Center appointed Petter Rindforth as the sole panelist in this matter on August 6, 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. The Panel shall issue its Decision based on the Complaint, the Policy, the Rules, the Supplemental Rules, and without the benefit of any Response from the Respondent. The case before the Panel was conducted in the English language. 4. Factual Background The Complainant is the owner of the trademark VALIUM, registered as International Registration No. 250 784 VALIUM (word), registered on December 20, 1961, for goods and services in Classes 1, 3 and 5, based on a national Swiss registration and covering 36 countries/regions. The disputed domain name <valium.name> was registered on April 29, 2012. No detailed information is provided about the Respondent’s activities, apart from what is mentioned below by the Complainant. 5. Parties’ Contentions A. Complainant The Complainant states that it is, together with its affiliated companies, one of the world’s leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics, having global operations in more than 100 countries. The well-known and notorious trademark VALIUM is protected as a trademark in over hundred countries worldwide, the International Registration No. 250 784 being one example. The Complainant notes that the disputed domain name <valium.name> is identical to the Complainant’s trademark. The Complainant claims that the Respondent has no rights or legitimate interests in <valium.name>. The Respondent has not been granted any license, permission or other authorization to use the trademark VALIUM in the disputed domain name. Further, it is obvious that the Respondent is using <valium.name> for commercial gain with the purpose of capitalizing on the fame of the Complainant’s trademark, by using the disputed domain name to redirect Internet users to a pharmacy on-line. Finally, the Complainant concludes that the Respondent has registered and is using the disputed domain name in bad faith. At the time of registration, the Respondent has, no doubt, knowledge of the Complainant’s well-known product and trademark VALIUM. It is used in bad faith, as <valium.name> is used to attract Internet users to the Respondent’s website, 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 the products and services posted or linked to the Respondent’s website. The Complainant requests that the Panel issue a Decision that the disputed domain name be transferred to the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings According to paragraph 4(a) of the Policy, the Complainant must prove each of the following: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant is the owner of the VALIUM trademark, registered in a number of countries, such as the International Registration No. 250 784, covering 36 countries/regions. The relevant part of the disputed domain name is “valium”, as it is well established in previous UDRP cases that the added Top-Level domain – being a required element of every domain name – is typically irrelevant when assessing whether or nota domain name is identical or confusingly similar to a trademark. As the disputed domain name consists of the Complainant’s trademark VALIUM, the Panel finds that the disputed domain name <valium.name> is identical to the Complainant’s registered trademark VALIUM. B. Rights or Legitimate Interests Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1 . By not submitting a Response, the Respondent has failed to invoke any circumstance which could demonstrate, pursuant to paragraph 4(c) of the Policy or otherwise, any rights or legitimate interests in the disputed domain name, to rebut the Complainant’s prima facie case under paragraph 4(a)(ii) of the Policy. According to the Complainant, the Respondent is not an authorized agent or licensee of the Complainant’s goods and has no other permission to apply for any domain name incorporating the trademark VALIUM. There is nothing in the Respondent’s name that indicates it may have become commonly known by the disputed domain name, enabling it to establish a legitimate interest in the disputed domain name thereby, nor any evidence in the present record to indicate that the Respondent is making any legitimate noncommercial or fair use of the disputed domain name. See Compagnie de Saint Gobain v. Com-Union Corp , WIPO Case No. D2000-0020 (finding no rights or legitimate interests where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name). The Respondent is using the disputed domain name to operate a website that seems to sell and advertise the Complainant’s product known under the trademark VALIUM. However, it is the Panel’s view that the collateral trademark use necessary to allow reselling, customer support, etc. in connection with the Complainant’s products does not confer the right to use the trademark as a domain name without permission from the trademark owner. See Sanofi-Aventis v. DomainsByProxy.com and Ravikant Singh , WIPO Case No. D2007-0540 (“The mere fact that the owner of a website is selling another’s branded product on the Internet does not give the owner of the website the right to register a domain name incorporating another’s trademark”); see also F. Hoffmann-La Roche AG v. Whois Agent, Whois Privacy Protection Service , WIPO Case No. D2014-0496 (“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”). The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith The Complainant has shown that the trademark VALIUM is a globally well-known trademark, including in the United States of America - the Respondent’s apparent home country – as well as used and registered long before the Respondent registered the disputed domain name. Thus, it is clear to this Panel that the Respondent had the Complainant’s trademark in mind when the Respondent registered the disputed domain name <valium.name>. Further, the Panel notes that disputed domain name is used for a website with advertisement related to VALIUM, claiming to sell the Complainant’s product VALIUM, and stating that “the company is promoted by Hoffmann-La Roche” (Annex 5 of the Complaint, printout from the Respondent’s website). In the absence of any response from the Respondent, this Panel cannot draw any other conclusion than the one that the Respondent has tried to create an illusion of commercial relationship with, or endorsement from, the Complainant, thus enabling the Respondent to earn revenues by attracting users to its website. See Popular Enterprises, LLC v. American Consumers First et al. , WIPO Case No. D2003-0742 (“using confusingly similar domain names to redirect web users away from a complainant’s website is evidence of bad faith”); see also Pfizer Inc. v. jg a/k/a Josh Green , WIPO Case No. D2004-0784 (“Respondent is not, nor has it ever been, a representative of PFIZER or licensed to use the PFIZER mark. Respondent’s domain names were registered intentionally to misdirect customers looking for PFIZER’s sites. The domain names are intended to deceive PFIZER’s customers, and the sale of PFIZER products on the resulting website reinforces the deception. This conduct is bad faith and violates the UDRP”). Thus, the Panel concludes that the disputed domain name was registered and is being used in bad faith, and that the Complainant has succeeded in proving the three elements within paragraph 4(a) 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 <valium.name> be transferred to the Complainant. Petter Rindforth Sole Panelist Date: August 16, 2014
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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