Westmore · UDRP DecisionValiummedication.com
The Panel ordered transfer of <valiummedication.com>. It found the domain confusingly similar to the Complainant’s longstanding VALIUM mark because it incorporated the mark in its entirety with the generic word “medication.” The Respondent lacked rights or legitimate interests because the domain was used without the trademark owner’s authority for an online pharmacy offering competing products. The domain’s composition and use showed that the Respondent had the Complainant and its rights in mind and constituted bad-faith registration and use.
The timeline behind valiummedication.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 a straightforward pharmaceutical-trademark case in which a domain combines a well-known medicine mark with a directly related descriptive term and is then used for an unauthorized online pharmacy promoting competing products. The same facts reinforced confusing similarity, absence of legitimate interests, and bad faith.
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. Eduardo Gomes Case No. D2016-1533 1. The Parties The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, internally represented. The Respondent is Eduardo Gomes of Salvador, Brazil. 2. The Domain Name and Registrar The disputed domain name <valiummedication.com> (the “Domain Name”) is registered with Hosting Concepts B.V. d/b/a Openprovider (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 27, 2016. On July 27, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 3, 2016, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 4, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 24, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 25, 2016. The Center appointed Ian Lowe as the sole panelist in this matter on September 6, 2016. 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, together with its affiliated companies, is one of the world’s leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics. It has global operations in more than 100 countries. The Complainant has built up a world-wide reputation in psychotropic medications through the VALIUM trademark which designates a sedative and anxiolytic drug belonging to the benzodiazepine family. The Complainant is the proprietor of numerous registered trademarks around the world in respect of VALIUM, including International Registration No. R250784, registered on December 20, 1961. The Domain Name was registered on July 4, 2016. It resolves to a website comprising an online pharmacy offering a generic version of the Complainant’s VALIUM products and includes links to other websites offering, inter alia , competing diazepam products. 5. Parties’ Contentions A. Complainant The Complainant contends that the Domain Name is confusingly similar to its VALIUM trademarks, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Respondent registered and is using the Domain Name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name the Complainant must prove that: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant has uncontested rights in the trademark VALIUM, both by virtue of its numerous, longstanding trademark registrations around the world and as a result of its goodwill and reputation acquired through use of the VALIUM mark over many years. Ignoring the generic Top-Level Domain (“gTLD”) “.com”, the Domain Name comprises the entirety of the Complainant’s mark together with the word “medication”. In the Panel’s view, the addition of the generic word “medication” does not detract from the distinctiveness of the VALIUM mark. Accordingly, the Panel finds that the Domain Name is confusingly similar to a mark in which the Complainant has rights. B. Rights or Legitimate Interests The Complainant has made out a strong prima facie case that the Respondent could have no rights or legitimate interests in respect of the Domain Name. In the Panel’s view, the use of a domain name, similar to a pharmaceutical manufacturer’s trademark, to direct consumers to an online-pharmacy offering for sale products in competition with those of the manufacturer, without the authority of the trademark owner, does not give rise to rights or legitimate interests in the domain name. The Respondent has chosen not to respond to the Complaint and has accordingly failed to counter the prima facie case established by the Complainant. In the circumstances, the Panel finds that the Respondent does not have any rights or legitimate interests in respect of the Domain Name. C. Registered and Used in Bad Faith In light of the nature of the Domain Name, comprising as it does the widely-known trademark of the Complainant, and the use to which the Respondent has put the Domain Name, the Panel is in no doubt that the Respondent must have had the Complainant and its rights in the VALIUM mark in mind when it registered the Domain Name. The Panel considers that the Respondent’s subsequent use of the Domain Name to direct Internet users to an online pharmacy, including links to third-party websites selling competing products, amounts to paradigm bad faith registration and use for the purposes 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 Domain Name, <valiummedication.com> be transferred to the Complainant. Ian Lowe Sole Panelist Date: September 18, 2016
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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