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Pfizer Inc v. Ian Patrick [2005] GENDND 312 (18 April 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

F. Hoffmann-La Roche AG v. Titan Net

Case No. D2005-1151

1. The Parties

The Complainant is F. Hoffmann-La Roche AG, Basel, Switzerland, of Switzerland, represented by Jérôme Rhein, Switzerland.

The Respondent is Titan Net, Net, Kenyatta Ave., Eldoret, of Kenya.

2. The Domain Name and Registrar

The disputed domain name <rochevalium.name> is registered with Intercosmos Media Group d/b/a directNIC.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 4, 2005. On November 8, 2005, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. On November 9, 2005, Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 November 10, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was November 30, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 2, 2005.

The Center appointed Clive N.A. Trotman as the Sole Panelist in this matter on December 12, 2005. 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, according to the documentation it has provided, is an internationally famous manufacturer of pharmaceuticals, operating in over one hundred countries. The company is of long standing and its trademark name ROCHE has been registered since 1913.

The Complainant has since 1961, owned the trademark VALIUM for one of the world’s most successful and widely prescribed sedative and anxiolytic drugs (tranquilizers), belonging to the benzodiazepine chemical family.

The Respondent registered the domain name <rochevalium.name> on August 22, 2005.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the dispute is properly within the scope of the Policy. The registration agreement, pursuant to which the domain name being the subject of this Complaint was registered, incorporates the Policy by reference.

The disputed domain name is confusingly similar to well-known trademarks, namely ROCHE and VALIUM, in which the Complainant has rights and which considerably predate the registration of the disputed domain name.

The Complainant’s trademark name ROCHE has been registered in numerous countries worldwide over a period of time dating back to December 16, 1913. Copies of specimen international registration documents Nos. 2R135432 and 832631 are submitted in evidence. The Complainant’s trademark VALIUM has been registered in over one hundred countries over a period of time dating back to December 20, 1961. Evidence of specimen Community Trademark Registration No. 000223107 is submitted.

The Complainant has exclusive rights to the trademarks ROCHE and VALIUM. By registering and using the disputed domain name the Respondent has used the trademarks for commercial gain. The Respondent has no legitimate rights or interests in the Complainant’s trademarks and the Complainant has not authorized the Respondent to use them.

The disputed domain name was registered and is being used in bad faith. The Respondent had constructive knowledge of the Complainant’s trademarks when registering the disputed domain name comprising them. The Respondent’s website attracts Internet users by trading on the Complainant’s well-known trademarks, thereby creating a likelihood of confusion as to the source, affiliation or endorsement of the Respondent’s website. Users are directed without authority to commercial suppliers of merchandise bearing the Complainant’s trademarks and may be misled into thinking these suppliers are endorsed by the Complainant.

The Complainant requests that the disputed domain name <rochevalium.name> be transferred to the Complainant.

B. Respondent

No response has been received and the Respondent has not contested the allegations of the Complainant.

6. Discussion and Findings

Jurisdiction of Administrative Panel

Paragraph 4(a) of the Policy states:

“You are required to submit to a mandatory administrative proceeding in the event that a third party (a ‘complainant’) asserts to the applicable Provider, in compliance with the Rules of Procedure, that:

(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) you have no rights or legitimate interests in respect of the domain name; and

(iii) your domain name has been registered and is being used in bad faith.”

The Complainant has made the relevant assertions as above. This dispute is properly within the scope of the Policy and the Administrative Panel has jurisdiction to decide the dispute.

A Whether the Domain Name is Identical or Confusingly Similar to a Trademark

The Complainant provides documentary evidence to the effect that it has registered and used the trademark ROCHE in many countries worldwide since 1913, and has registered and used the trademark VALIUM in many countries worldwide since 1961. The disputed domain name <rochevalium.name> entirely comprises both trademarks, in which the Complainant clearly has rights. The gTLD suffix “.name”, being an inevitable part of the domain name, has no bearing on the question of confusing similarity. The Panel finds the disputed domain name to be confusingly similar and in fact identical to the Complainant’s trademarks in the terms of paragraph 4(a)(i) of the Policy.

B Whether Respondent has Rights or Legitimate Interests in Respect of the Domain Name

The Complainant has to prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant certifies that it has not licensed the Respondent to use the trademarks in question, nor entered into any relationship that could give the Respondent any right or interest in them, and that there is no reason why the Respondent could have any right or interest in them. A prima facie case is thereby made out to the effect that the Respondent does not have any rights or legitimate interests in the disputed domain name.

The Respondent has not refuted the Complainant’s assertions in terms of paragraph 4(c) of the Policy or in any other way by attempting to establish rights or legitimate interests in respect of the domain name. The Respondent does not claim to have used the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or to have been commonly known by the domain name; or to have made a legitimate noncommercial or fair use of the domain name.

The Panel notes that even legitimate selling of or agency for goods or services bearing the Complainant’s trademarks (had the Respondent offered any such defense) would not necessarily have given the Respondent rights to use the trademarks without authority. As reiterated by the Panelist in another Roche case (Hoffmann-La Roche Inc. v. #1 Viagra Propecia Xenical & More Online Pharmacy, WIPO Case No. D2003-0793), “...a reseller does not have the right to incorporate the trademark of the resold goods into the domain name of the reseller”. Furthermore, “While the selling of goods which originate from the Complainant might entitle the Respondent to use a mark associated with the goods in connection with their sale, this does not give it the right to register and use the mark as a domain name without the consent of the holders of the trademarks” (AVENTIS Pharma S.A. and Merrell Pharmaceuticals Inc. v. Rx USA, WIPO Case No. D2002-0290).

The Panel finds that the Respondent does not have a legitimate interest in the domain name in the terms of paragraph 4(a)(ii) of the Policy.

C Whether the Domain Name Has Been Registered and Is Being Used in Bad Faith

In accordance with paragraph 4(a)(iii) of the Policy the Complainant must prove that the domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four circumstances, without limitation, that shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b)(iv) provides for a finding of bad faith where:

“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”

It is clear that the business of the Respondent in respect of the website associated with the disputed domain name is to benefit commercially and to derive revenue, directly or indirectly, from sales or referred sales over the Internet of goods that include Valium and other Roche products. The Complainant has established that it has no connection with the Respondent. Nevertheless the Respondent has registered and is using the Complainant’s long-established trademarks as its Internet banner without the Complainant’s authority. This is unlikely to have been done inadvertently. News articles submitted by the Complainant recount that the name ROCHE is one of the most famous in the world in the pharmaceutical sphere. The product VALIUM has achieved iconic status as one of the best known pharmaceuticals over forty years, selling in literally billions of tablets and portrayed in films, songs and books. Based on the case file, there is no reasonable interpretation of the Respondent’s purpose other than to lead people who search for the names ROCHE, VALIUM or both to the Respondent’s website, thereby trading on the Complainant’s goodwill. Such a device accords with the provisions of paragraph 4(b)(iv) of the Policy in establishing registration and use in bad faith.

The circumstances listed in paragraphs 4(b)(i) - (iv) of the Policy are without limitation and bad faith may be found alternatively. Registration of a well known trademark of which the Respondent must have been aware is of itself sufficient to amount to bad faith (Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Société des Hôtels Méridien v. LaPorte Holdings, Inc., WIPO Case No. D2004-0849). The Complainant’s documentary evidence of the content of the Respondent’s website leaves the Panel in no doubt that the Respondent was well aware of the Complainant’s trademarks. The Panel finds bad faith proven additionally in this respect.

In summary, the Panel is satisfied that the disputed domain name is identical to the Complainant’s trademarks in the terms of paragraph 4(a)(i) of the Policy; the Respondent has no rights or legitimate interests in the domain name in the terms of paragraph 4(a)(ii) of the Policy; and the Respondent has registered and is using the domain name in bad faith in the terms of paragraph 4(a)(iii) of the Policy. The Complainant has proven all three elements required by paragraph 4(a) of the Policy and accordingly the Administrative Panel decides for the Complainant.

7. Decision

The Decision of the Administrative Panel is that the disputed domain name <rochevalium.name> is confusingly similar to the trademarks ROCHE and VALIUM in which the Complainant has rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the Respondent has registered and is using the disputed domain name in bad faith. In accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <rochevalium.name> be transferred to the Complainant.

Clive N. A. Trotman
Sole Panelist

Dated: December 28, 2005