Roche Products Inc. v. xxxxx
Claim Number: FA1011001356459
Complainant is Roche Products Inc. (“Complainant”), represented by Elizabeth Atkins of Lathrop & Gage L.C., New York, USA. Respondent is xxxxx (“Respondent”), Indiana, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vvalium.us>, registered with DIRECTNIC, LTD.
The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on November 3, 2010; the Forum received a hard copy of the Complaint on November 4, 2010.
On November 23, 2010, DIRECTNIC, LTD. confirmed by e-mail to the Forum that the <vvalium.us> domain name is registered with DIRECTNIC, LTD. and that Respondent is the current registrant of the name. DIRECTNIC, LTD. has verified that Respondent is bound by the DIRECTNIC, LTD. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On November 30, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 28, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no Response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On December 22, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <vvalium.us> domain name is confusingly similar to Complainant’s VALIUM mark.
2. Respondent does not have any rights or legitimate interests in the <vvalium.us> domain name.
3. Respondent registered and used the <vvalium.us> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Roche Products Inc., owns multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its VALIUM mark (e.g., Reg. No. 725,548 issued December 26, 1961). Complainant’s VALIUM mark is used to market a pharmaceutical psychotherapeutic product for the treatment and prevention of anxiety.
Respondent registered the disputed domain name on June 6, 2010. The disputed domain name resolves to a website the purports to sell Complainant’s VALIUM drug in Complainant’s packaging, but appears to actually sell a competitive generic product, as well as other competitors’ anti-anxiety products.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Complainant asserts rights in its VALIUM mark based on its multiple registrations of the mark with the USPTO (e.g., Reg. No. 725,548 issued December 26, 1961). The Panel finds that Complainant’s longstanding registration of its VALIUM mark with a federal trademark authority such as the USPTO is conclusive evidence of Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to [UDRP] ¶ 4(a)(i).”); see also Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to UDRP ¶ 4(a)(i)).
Complainant argues that Respondent’s <vvalium.us> domain name is confusingly similar to Complainant’s VALIUM mark. Respondent’s disputed domain name merely adds an additional letter “v” to Complainant’s mark and then appends the country-code top-level domain (“ccTLD”) “.us.” The Panel finds that the addition of a single letter to a Complainant’s mark does not distinguish the disputed domain name from Complainant’s mark, especially where, as here, the resulting domain name is phonetically identical to the preexisting mark. See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (finding the respondent’s <microssoft.com> domain name to be confusingly similar to the complainant’s MICROSOFT mark because they differ by only one letter, and “such a small alteration is insufficient to avoid a finding of confusing similarity under [UDRP] ¶ 4(a)(i)”); see also Hewlett-Packard Co. v. Cupcake City, FA 93562 (Nat. Arb. Forum Apr. 7, 2000) (finding that a domain name which is phonetically identical to the complainant’s mark satisfies ¶ 4(a)(i) of the UDRP). Additionally, the Panel finds that the presence of a ccTLD in a domain name does not affect the Policy ¶ 4(a)(i) confusingly similar analysis as a TLD is a required element in every domain name. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). Therefore, pursuant to Policy ¶ 4(a)(i), the Panel finds that Respondent’s <vvalium.us> domain name is confusingly similar to Complainant’s VALIUM mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant has alleged that Respondent does not have any rights or legitimate interests in the <vvalium.us> domain name. The burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii) when Complainant makes a prima facie case in support of its allegations. See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”). The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume Respondent does not have rights or legitimate interests in the disputed domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
There is no evidence in the record to conclude that Respondent owns any service marks or trademarks that reflect the <vvalium.us> domain name. Therefore, the Panel finds that Respondent does not have rights and legitimate interests pursuant to Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.us> domain name); see also Pepsico, Inc. v Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
Complainant asserts that it has not authorized Respondent or any former owner of the disputed domain name to use its VALIUM mark or to incorporate the mark into any domain name. Additionally, the Panel notes that the WHOIS information for the disputed domain name fails to establish that Respondent is commonly known by the disputed domain name. Therefore, the Panel concludes that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(iii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
Complainant alleges that Respondent’s disputed domain name resolves to a website which purports to sell Complainant’s VALIUM drug in Complainant’s packaging, but appears to actually sell a competitive generic product, as well as other competitors’ anti-anxiety products. The Panel finds that based on such a use, Respondent has failed to establish the disputed domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iv). See Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Nat. Arb. Forum Apr. 12, 2002) (“Respondent’s use of the confusingly similar domain name [<hpmilenium.com>] to sell counterfeit versions of Complainant’s [HP] products is not a bona fide offering of goods or services pursuant to [UDRP] ¶ 4(c)(i).”); see also Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (finding that the respondent used a domain name for commercial benefit by diverting Internet users to a website that sold goods and services similar to those offered by the complainant and thus, was not using the name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant alleges that Respondent’s true purpose in registering the disputed domain name which incorporates Complainant’s VALIUM mark in its entirety, is to capitalize on the reputation of Complainant’s mark by diverting Internet users seeking Complainant’s website to Respondent’s own website where competitors’ products are sold. The Panel finds this to be evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to [UDRP] ¶ 4(b)(iii).”); see also Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 30, 2006) (concluding that the respondent registered and used the <sportlivescore.com> domain name in order to disrupt the complainant’s business under the LIVESCORE mark because the respondent was maintaining a website in direct competition with the complainant).
Complainant argues that, by registering and using the disputed domain name, Respondent has intentionally attempted to attract, for financial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or the goods on Respondent’s website. The Panel presumes that Respondent profits from the sale of a generic form of Complainant’s VALIUM product and also through click-through fees or sponsored ad fees associated with the competing products advertised on Respondent’s resolving website. Therefore, the Panel concludes that Respondent’s conduct in registering and using the disputed domain name amounts to bad faith under Policy ¶ 4(b)(iv). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to UDRP ¶ 4(b)(iv)); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <vvalium.us> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: December 30, 2010
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page