Roche Products Inc. v. Jatin Jani / Expired Domains LLC
Claim Number: FA1107001398013
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 NAMES
The domain names at issue are <valiumonline.us> registered with 1API GmbH and <genericvalium.us> registered with eNom, Inc.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 11, 2011; the Forum received a hard copy of the Complain on July 11, 2011.
On July 12, 2011, 1API GmbH confirmed by e-mail to the National Arbitration Forum that the <valiumonline.us> domain name is registered with 1API GmbH and that Respondent is the current registrant of the name. 1API GmbH has verified that Respondent is bound by the 1API GmbH 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 July 19, 2011, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <genericvalium.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 Policy.
On July 21, 2011, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 10, 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 August 15, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 <valiumonline.us> and <genericvalium.us> domain names are confusingly similar to Complainant’s VALIUM mark.
2. Respondent does not have any rights or legitimate interests in the <valiumonline.us> and <genericvalium.us> domain names.
3. Respondent registered and used the <valiumonline.us> and <genericvalium.us> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Roche Products Inc., researches and develops pharmaceutical and diagnostic products. Complainant owns the VALIUM mark, which it has used since 1961 to sell the VALIUM pharmaceutical for the treatment and prevention of anxiety. Complainant holds a registered trademark for its VALIUM mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 725,548 registered December 26, 1961).
Respondent, Jatin Jani / Expired Domains LLC, registered the <valiumonline.us> domain name on April 9, 2011 and the <genericvalium.us> domain name on March 23, 2011. The disputed domain names offer Complainant’s VALIUM pharmaceutical for sale as well as competing anti-anxiety products through the linked <americanpharmacy.org> website.
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 maintains that it has established rights in the VALIUM mark. In Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002), the Panel determined that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under UDRP ¶ 4(a)(i) through registration of the mark with the USPTO). Here, Complainant holds a trademark registration for its VALIUM mark with the USPTO (Reg. No. 725,548 registered December 26, 1961). The Panel finds that Complainant has demonstrated its rights in the VALIUM mark pursuant to Policy ¶ 4(a)(i) by registering its mark with the USPTO.
Complainant also contends that Respondent’s <valiumonline.us> and <genericvalium.us> domain names are confusingly similar to its VALIUM mark. The <valiumonline.us> domain name incorporates Complainant’s entire mark and only changes it by adding the generic word “online” and the country-code top-level domain (“ccTLD”) “.us.” The <genericvalium.us> domain name also incorporates the entire VALIUM mark and adds the descriptive word “generic,” which references the generic form of the anti-anxiety pharmaceutical, and the ccTLD “.us.” The Panel finds that the addition of generic or descriptive words, which reference the sale of generic brand pharmaceuticals or pharmaceuticals online, does not sufficiently distinguish the disputed domain names from Complainant’s mark. See American Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under UDRP ¶ 4(a)(i)). Additionally, the Panel finds that the affixation of a ccTLD does not factor into a Policy ¶ 4(a)(i) analysis. See Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding that the addition of the country-code “.us” fails to add any distinguishing characteristic to a disputed domain name). Therefore, the Panel concludes that Respondent’s disputed domain names are confusingly similar to Complainant’s VALIUM mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been met.
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain names. In Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006), the panel held that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name. Complainant has made a prima facie case in its Complaint. Respondent failed to submit a response to the Complaint, which the Panel may interpret as Respondent’s admission of a lack of rights or legitimate interests under Policy ¶ 4(a)(ii). See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name). However, the Panel chooses to examine the record to determine whether Respondent has rights or legitimate interests under Policy ¶ 4(c).
There is no evidence presented to conclude that Respondent owns any service marks or trademarks reflected in the disputed domain names. Thus, the Panel finds that Respondent does not have rights or legitimate interests pursuant to Policy ¶ 4(c)(i). See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name); see also 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).
Complainant claims that Respondent is not commonly known by the disputed domain names. The WHOIS information identifies Respondent as “Jatin Jani,” which is not similar to the disputed domain names. Furthermore, Complainant states it has not authorized Respondent to use its VALIUM mark within the disputed domain names. The Panel concludes that Respondent is not commonly known by the disputed domain names, under Policy ¶ 4(c)(iii), as nothing in the record indicates otherwise. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that [UDRP] ¶ 4(c)(ii) does not apply); see also IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).
Complainant states that the domain names resolve to a website offering Complainant’s VALIUM pharmaceutical, as well as competing anti-anxiety medications, and pharmaceutical products from competing companies sold through the linked <americanpharmacy.org> domain name. Respondent likely receives referral fees or click-through fees from the competing companies. The Panel finds that Respondent’s use of the disputed domain name to redirect Internet users to a competing website, which offers Complainant’s goods and other companies’ pharmaceuticals for sale, is not a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv). See American Int’l Group, Inc. v. Benjamin, FA 944242 (Nat. Arb. Forum May 11, 2007) (Panelist Tyrus R. Atkinson, Jr., dissenting) (finding that the respondent’s use of a confusingly similar domain name to advertise real estate services which competed with the complainant’s business did not constitute a bona fide offering of goods or services under UDRP ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of UDRP ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site).
The Panel finds that Policy ¶ 4(a)(ii) has been met.
Complainant claims that Respondent registered and is using the disputed domain names for the purpose of disrupting its pharmaceutical business. The <valiumonline.us> and <genericvalium.us> domain names resolve to websites which offer for sale various pharmaceuticals that directly compete with Complainant’s VALIUM product and other pharmaceutical products. The resolving websites link directly to <americanpharmacy.org>. Internet users intending to purchase Complainant’s medication may find Respondent’s website instead and purchase similar products from a competitor as a result. The Panel finds that Respondent’s use of the disputed domain names indicate an intent to disrupt Complainant’s business and is evidence of bad faith under Policy ¶ 4(b)(iii). See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to UDRP ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under UDRP ¶ 4(b)(iii)).
The Panel infers that Respondent receives click-through fees or referral fees from the previously mentioned links or competing companies. Complainant argues that Respondent’s registration and use of the confusingly similar disputed domain names to sell Complainant’s goods and competing pharmaceuticals creates a likelihood of confusion as to Complainant’s association with the resolving website. Presumably, Respondent profits from this confusion. The Panel concludes that Respondent’s registration and use of the disputed domain names is evidence of bad faith according to Policy ¶ 4(b)(iv). See Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005) (finding evidence of bad faith under UDRP ¶ 4(b)(iv) where the respondent was using the <dellcomputerssuck.com> domain name to divert Internet users to respondent’s website offering competing computer products and services); see also Asbury Auto. Group, Inc. v. Texas Int’l Prop. Assocs., FA 958542 (Nat. Arb. Forum May 29, 2007) (finding that the respondent’s use of the disputed domain name to advertise car dealerships that competed with the complainant’s business would likely lead to confusion among Internet users as to the sponsorship or affiliation of those competing dealerships, and was therefore evidence of bad faith registration and use pursuant to UDRP ¶ 4(b)(iv)).
The Panel finds that Policy ¶ 4(a)(iii) has been met.
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <valiumonline.us> and <genericvalium.us> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: August 22, 2011
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