Roche Products Inc. v. Jatin Jani / Expired Domains LLC
Claim Number: FA1202001429735
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 <cheapvalium.us>, registered with 1API GMBH.
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 February 14, 2012; the Forum received a hard copy of the Complaint on February 15, 2012.
On February 22, 2012, 1API GMBH confirmed by e-mail to the National Arbitration Forum that the <cheapvalium.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 February 23, 2012, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 14, 2012 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 March 27, 2012, 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 <cheapvalium.us> domain name is identical to Complainant’s VALIUM mark.
2. Respondent does not have any rights or legitimate interests in the <cheapvalium.us> domain name.
3. Respondent registered and used the <cheapvalium.us> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant uses the mark VALIUM in connection with pharmaceutical sales and holds trademark registrations for its VALIUM mark with the USPTO (e.g., Reg. No. 72122442; registered December 26, 1961).
Respondent is using the disputed domain name to divert Internet users to a third party site competing with Complainant.
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 the Complainant's undisputed representations pursuant to Paragraphs 5(f), 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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or 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.
The Panel finds that Complainant has established rights in the VALIUM mark pursuant to Policy ¶4(a)(i) through its trademark registrations with the USPTO. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to UDRP ¶ 4(a)(i)).
Respondent’s disputed domain name is confusingly similar to Complainant’s VALIUM mark. The disputed domain name contains Complainant’s mark in full with the addition of the generic word “cheap” and the country-code top-level domain (“ccTLD”) “.us.” Therefore, the Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s VALIUM mark pursuant to Policy ¶4(a)(i). See Check Into Cash, Inc. v. Questar, FA 1024235 (Nat. Arb. Forum Aug. 13, 2007)(holding that the addition of the ccTLD “.us” did not distinguish the disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name incorporates the VIAGRA mark in its entirety, and deviates only by the addition of the word “bomb,” the domain name is rendered confusingly similar to the complainant’s mark).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant sets forth a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding 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); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant claims that Respondent is not commonly known by the disputed domain name and that Respondent is not authorized or licensed to use its VALIUM mark. The WHOIS information does not indicate that Respondent is commonly known by the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(iii). See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under UDRP ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant argues that Respondent uses the disputed domain name to resolve to a website providing hyperlinks to a website offering “Generic Valium,” as well as websites offering competitors’ other anti-anxiety products and pharmaceutical products. Complainant contends that Respondent commercially benefits from these dealings. The Panel presumes that Respondent’s use of the disputed domain name is competing with Complainant’s VALIUM business. Therefore, the Panel concludes that Respondent is not making a Policy ¶4(c)(ii) bona fide offering of goods or services or a Policy ¶4(c)(iv) legitimate noncommercial or fair use of the disputed domain names. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under [UDRP] ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under [UDRP] ¶ 4(c)(iii).”); see also Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under UDRP ¶ 4(c)(i) or a legitimate noncommercial or fair use under UDRP ¶ 4(c)(iii).)
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s disputed domain name resolves to a website containing links to third-party websites directly competing with Complainant. This disrupts Complainant’s business by redirecting Internet users from Complainant to Complainant’s competitors, which constitutes both bad faith registration and use under Policy ¶ 4(b)(b)(iii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to [UDRP] ¶ 4(b)(iii).”); see also 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).
Respondent creates a likelihood of confusion with Complainant’s mark, thereby misleading and diverting Internet traffic to the resolving website for commercial gain. Respondent’s website offers a generic form of Complainants product as well as other competitor’s products. Respondent’s website also offers links connecting Internet users to sites competing with Complainant’s website, from which Respondent likely receives pay-per-click fees. Thus, the Panel finds that Respondent registered and uses the disputed domain names in bad faith pursuant to Policy ¶4(b)(iv). See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant); see also Maricopa Cmty. Coll. Dist. v. College.com, LLC, FA 536190 (Nat. Arb. Forum Sept. 22, 2005) (“The Panel infers that Respondent receives click-through fees for diverting Internet users to a competing website. Because Respondent’s domain name is identical to Complainant’s PHOENIX COLLEGE mark, Internet users accessing Respondent’s domain name may become confused as to Complainant’s affiliation with the resulting website. Thus, Respondent’s use of the <phoenixcollege.com> domain name constitutes bad faith registration and use pursuant to [UDRP] ¶ 4(b)(iv).”)
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cheapvalium.us> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: April 4, 2012
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