Roche Products Inc. v. Jatin Jani / Expired Domains LLC
Claim Number: FA1112001418291
Complainant is Roche Products Inc. (“Complainant”), represented by Elizabeth Atkins of Lathrop & Gage LLP, New York, USA. Respondent is Jatin Jani / Expired Domains LLC (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <buyvalium.us>, registered with Enom, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 2, 2011; the National Arbitration Forum received a hard copy of the Complaint on December 5, 2011.
On December 5, 2011, Enom.Inc. confirmed by e-mail to the National Arbitration Forum that the <buyvalium.us> domain name is registered with Enom.Inc. and that Respondent is the current registrant of the name. Enom.Inc. has verified that Respondent is bound by the Enom.Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On December 6, 2011, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 26, 2011 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 6, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 <buyvalium.us> domain name is confusingly similar to Complainant’s VALIUM mark.
2. Respondent does not have any rights or legitimate interests in the <buyvalium.us> domain name.
3. Respondent registered or used the <buyvalium.us> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Roche Products Inc., is the owner of the VALIUM mark, registered with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 725,548 registered December 26, 1961), which it uses to market one of its pharmaceutical products.
Respondent, Jatin Jani / Expired Domains LLC, registered the disputed domain name on November 3, 2011. The <buyvalium.us> domain name resolves to a website which redirects Internet traffic to the website <americanpharmacy.org> which offers for sale Complainant's products and Complainant’s competitors' 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 has provided evidence of its registrations of the VALIUM mark through the USPTO. Panels have routinely found that the registration of a mark with a federal trademark authority is sufficient for a complainant to claim rights in the mark. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Automotive Racing Products, Inc. v. Linecom, FA 836787 (Nat. Arb. Forum Dec. 21, 2006) (finding that the Complainant’s federal trademark registration established its rights in the mark under UDRP ¶ 4(a)(i)). The Panel finds that Complainant’s registration of the VALIUM mark with a federal trademark authority confers rights in the mark upon Complainant pursuant to Policy ¶ 4(a)(i).
Respondent’s <buyvalium.us> domain name is confusingly similar to Complainant’ s mark. The addition of a generic term to a mark within a disputed domain name does not distinguish the disputed domain name from the mark. See Am. Online, Inc. v. Shanghaihangwei Packing Material Co. Ltd., D2001-0443 (WIPO May 22, 2001) (finding the <ouricq.com> domain name to be confusingly similar to the complainant’s ICQ mark); see also Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names).
The addition of a country-code top-level domain (“ccTLD”) is irrelevant to a Policy ¶ 4(a)(i) determination. See Circuit City Stores, Inc. v. Leeds, FA 139662 (Nat. Arb. Forum Feb. 2, 2003) (finding the <circuitcitystores.us> domain name to be confusingly similar to the CIRCUIT CITY mark because the presence of a top-level domain like “.us” is “inconsequential to a Policy ¶ 4(a)(i) analysis”); see also Am. Express Co. v. McWIlliam, FA 268423 (Nat. Arb. Forum July 6, 2004) (holding that the “.us” ccTLD does not negate confusing similarity under Policy ¶ 4(a)(i)). Respondent makes no changes to the <buyvalium.us> domain name beyond the addition of the generic term “buy” and the ccTLD “.us.” Thus, the Panel finds that the <buyvalium.us> domain name is confusingly similar to the VALIUM mark under Policy ¶ 4(a)(i).
The Panel finds that Complainant satisfies the elements of Policy ¶ 4(a)(i).
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name. Once a complainant makes a prima facie case in support of its allegations, the burden shifts to the respondent to provide evidence to the contrary. See Domtar, Inc. v. Theriault, FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the [UDRP].”); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech. Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (“Complainant has made a prima facie showing that Respondent lacks rights to the Domain Name. Here, Complainant has alleged that Respondent does not own any rights in the terms STARWOOD or STARWOODS, and that Respondent’s use of the Domain Name is not a fair one. These unsupported assertions, though sparse, are sufficient to make a prima facie showing in regard to the legitimacy element.”). The Panel finds that Complainant has made a prima facie case in support of its assertions, shifting the burden of disproving the claims to Respondent. Respondent has failed to submit a Response to the Complaint. Given this, the Panel will proceed making all reasonable inferences from the available information. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“[Rule 14(b)] expressly provide[s] that the Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with the rules ‘as it considers appropriate.”).
There is no evidence in the record to conclude that Respondent owns any service marks or trademarks that reflect the <buyvalium.us> domain name. Therefore, the Panel finds that Respondent does not have rights or 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 Respondent is not commonly known by the disputed domain name. The WHOIS record for the <buyvalium.us> domain name lists “Jatin Jani / Expired Domains LLC” as the domain name registrant, which suggests no connection to the disputed domain name. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name). Complainant contends that the VALIUM mark has no use or association apart from Complainant and that Respondent has not been authorized by to use the VALIUM mark. Complainant also argues that the disputed domain name immediately redirects to a different domain name, further evidence that Respondent has no rights or legitimate interests. The Panel finds that Respondent is not commonly known by the <buyvalium.us> domain name pursuant to Policy ¶ 4(c)(iii).
Complainant states that the <buyvalium.us> domain name resolves to the <americanpharmacy.org> website which offers for sale Complainant's products and Complainant’s competitors' products. The use of a domain name to sell the complainant’s products or competing products is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. See Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name); see also Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (finding that use of the complainant’s mark to sell the complainant’s perfume, as well as other brands of perfume, is not bona fide use). Thus, the Panel finds that Respondent’s use of the disputed domain name is neither a Policy ¶ 4(c)(ii) bona fide offering of goods or services nor a Policy ¶ 4(c)(iv) legitimate noncommercial or fair use.
The Panel finds that Complainant satisfies the elements of Policy ¶ 4(a)(ii).
Respondent’s <buyvalium.us> domain name resolves to Respondent’s website where Respondent sells Complainant’s products associated with the VALIUM mark as well as Complainant’s competitors’ products, which is disruptive to Complainant’s business under 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 Caterpillar Inc. v. Vine, FA 97097 (Nat. Arb. Forum June 22, 2001) (“Respondent registered each of the disputed domain names in order to gain customers and to disrupt Complainant's business of authorizing dealers to sell its CATERPILLAR equipment.”).
Respondent registered and used the disputed domain name in order to take commercial advantage of the resulting confusion regarding the source of the <buyvalium.us> domain name. Internet users are redirected to Respondent’s own website at <americanpharmacy.org> where Respondent sells Complainant’s products and Complainant’s competitors’ products, some of which will likely purchase the products that Respondent offers. Therefore, the Panel finds that Respondent’s registration and use of the <buyvalium.us> domain name constitutes attraction for commercial gain domain name pursuant to Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under UDRP ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark); see also AT&T Corp. v. RealTime Internet.com Inc., D2001-1487 (WIPO May 1, 2002) (“[U]se of domain names to sell Complainant’s goods and services without Complainant's authority . . . is bad faith use of a confusingly similar domain name.”).
The Panel finds that Complainant satisfies the elements of 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 <buyvalium.us> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: January 13, 2012
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