Westmore · UDRP DecisionValium-kaufen.com
The Panel ordered transfer of <valium-kaufen.com>. It found the domain confusingly similar to the Complainant’s longstanding and well-known VALIUM mark because the added German term “kaufen” (“to buy”) merely suggested an online source for the product. The Respondent had no rights or legitimate interests because the record indicated use involving VALIUM and competing products without clearly disclosing the absence of a relationship with the Complainant. The Panel also found bad-faith registration and use under paragraph 4(b)(iv), notwithstanding that the domain later redirected to an apparent official website of the Complainant.
The timeline behind valium-kaufen.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 that adding a direct purchasing term to a well-known pharmaceutical mark does not avoid confusing similarity and may reinforce the impression that the domain is a source for the branded product. It also shows that purported reseller use may fail where competing products are promoted and the site does not clearly disclose its lack of affiliation. A later redirect to the trademark owner’s website did not neutralize the Panel’s assessment of earlier deceptive commercial use.
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. Katharina Mertens Case No. D2015-0486 1. The Parties The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally. The Respondent is Katharina Mertens of Rüsselsheim, Germany. 2. The Domain Name and Registrar The disputed domain name <valium-kaufen.com> is registered with Tucows Inc. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 19, 2015. On March 19, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 19, 2015, 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 March 23, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 12, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 13, 2015. The Center appointed Steven A. Maier as the sole panelist in this matter on April 23, 2015. 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 is a pharmaceutical company and is the manufacturer of the product “Valium” which is a sedative and anxiolytic drug. The Complainant is the proprietor of trade mark registrations for the mark VALIUM in numerous territories worldwide. Its registrations include International (Madrid) Registration number 250784 for VALIUM registered on December 20, 1961, in International Classes 01, 03 and 05 and designating a total of 45 territories. The disputed domain name was registered on March 4, 2015. According to evidence submitted by the Complainant, on March 19, 2015, the disputed domain name resolved to a website which referred to the Complainant’s product “Valium” and to other pharmaceutical products. The Panel will comment further on this evidence below. On the date of the Panel’s own review, April 29, 2015, the disputed domain name resolved to a website at “www.roche.com” which appeared to be an official website of the Complainant. 5. Parties’ Contentions A. Complainant The Complainant submits that it is one of the world’s largest pharmaceutical companies. It states that it holds registrations for the mark VALIUM in over 100 countries and that the mark is well-known and notorious and has enabled the Complainant to build a worldwide reputation in psychotropic mediations. The Complainant exhibits an article from The New York Times dated February 22, 2005 which states: “One of the earliest benzodiazepines, Valium, was approved by the Food and Drug Administration in 1963 as a treatment for anxiety, and it would become not only the country’s best-selling drug, but an American cultural icon.” The Complainant submits that the Respondent has used the disputed domain name to redirect Internet users to an online pharmacy. While the Complainant exhibits what appears to be a screen print, this is in the form of a text document in the German language which appears to provide information concerning “Valium” and three other products named “Tavor”, “Lorazepam” and “Diazepam”. While the document refers to certain (lengthy) URLs, it does not appear to the Panel to contain any obvious hyperlinks, nor does the Complainant exhibit any screen prints of the online pharmacy to which it refers. In relation to all the products referred to, including “Valium”, the document does contain the words “kaufen ohne Rezept (rezeptfrei)” which the Complainant states means available to buy without prescription. The Complainant also appears to submit (although only indirectly, by reference to another decision under the UDRP) that the product “Tavor” and active ingredient “lorazepam” are products that compete with the Complainant’s drug “Valium”. The Complainant submits that that the disputed domain name is confusingly similar to a trademark or service mark in which it has rights. In particular, the Complainant submits that the disputed domain name incorporates the Complainant’s mark VALIUM in its entirety together with a hyphen and the term “kaufen” which means “to buy” in the German language. The Complainant submits that this term does not distinguish the disputed domain name from the Complainant’s notorious trademark. The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. In particular, the Complainant states that it has never authorized the Respondent to use its mark VALIUM for the purpose of the disputed domain name. It submits that the Respondent is using the disputed domain name to redirect to an online pharmacy with the intention of capitalizing on the fame of the Complainant’s mark VALIUM. The Complainant submits that the Respondent registered and is using the disputed domain name in bad faith. In particular, the Complainant submits that the Respondent is attempting to attract Internet users to its website by creating a likelihood of confusion with the Complainant’s well-known mark. The Respondent is misleading consumers and seeking to gain unjustified revenues by using the Complainant’s mark. The Complainant adds that the words “kaufen ohne Rezept (rezeptfrei)” cause further confusion because its genuine “Valium” product is not available to buy without a prescription. The Complainant seeks a transfer of the disputed domain name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings In order to succeed in its Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (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 has established to the satisfaction of the Panel that it is the owner of longstanding registered trademark rights in the mark VALIUM and that the mark is well known in numerous territories throughout the world. Ignoring the generic Top Level Domain (“gTLD”) “.com”, the disputed domain name comprises the Complainant’s mark VALIUM together with a hyphen and the term “kaufen”, which means “to buy” in the German language. The Panel accepts that the use of this descriptive term is ineffective to distinguish the disputed domain name from the Complainant’s trademark, as the term is merely suggestive of an online source of the Complainant’s product. Accordingly, the Panel finds that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. B. Rights or Legitimate Interests The Complainant states that it has never authorized the Respondent to use its mark VALIUM and that the use that the Respondent has made of the disputed domain name does not indicate any rights or legitimate interests in it. While paragraph 4(c) of the Policy sets out a number of circumstances upon which a respondent may rely in order to demonstrate rights or legitimate interests in a domain name, no Response has been filed in this case and the Respondent has therefore made no submissions in this regard. Nor does there appear to the Panel to be any other evidence of rights or legitimate interests on the Respondent’s part. While it is possible for a reseller of trademarked good to make legitimate use of that trademark in the circumstances discussed in paragraph 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), those circumstances are not present in this case. In particular, on the basis of the Complainant’s (somewhat unsatisfactory but undisputed) evidence, it appears that the Respondent has used the disputed domain name to sell not only the Complainant’s goods (if genuine) but also other, competing, goods. It also appears that the Respondent’s website has failed clearly to disclose the Respondent’s relationship, or in this case the lack of any relationship, with the Complainant. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith The Panel finds that the Respondent has used the disputed domain name to resolve to a website which refers to the Complainant’s product “Valium” and also to competing products. The website also purports to direct Internet users to a source of the Complainant’s product “Valium” without prescription, which the Panel accepts would not be permissible in the case of the genuine “Valium” product. Since the circumstances considered on paragraph 2.3 of the WIPO Overview 2.0 are not present, the Panel concludes that the Respondent has used the disputed domain name to take unfair advantage of the Complainant’s goodwill in its well known VALIUM name and mark. In particular, the Panel finds that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s 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 its website or location or of a product or service on the Respondent’s website or location (paragraph 4(b)(iv) of the Policy). The Panel’s view is not altered by the fact that the disputed domain name has more recently been directed to what appears to be the Complainant’s own website. In the view of the Panel, the disputed domain name remains an instrument of deception in the hands of the Respondent and it is reasonable to apprehend that, should the Respondent retain the disputed domain name, it is likely to be used again in the future in a similar manner as described above. In the circumstances, the Panel finds that the disputed domain name has been registered and is being used in bad faith. 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-kaufen.com>, be transferred to the Complainant. Steven A. Maier Sole Panelist Date: May 7, 2015
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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