Roche Products Inc. v. Roslyn Blowem / Blowem Inc
Claim Number: FA1611001701415
Complainant is Roche Products Inc. (“Complainant”), represented by Joel R. Feldman of Greenberg Traurig, LLP, Georgia, USA. Respondent is Roslyn Blowem / Blowem Inc (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <buyvalium5.com>, <buyvalium5mg.com>, <buyvalium10.com>, <buyvaliumonline5.com>, <buyvaliumonline5mg.com>, <buyvaliumonline10.com>, <buyvaliumonline10mg.com>, and <valiumprice.com>, registered with Mesh Digital Limited.
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 Forum electronically on November 4, 2016; the Forum received payment on November 4, 2016.
On November 9, 2016, Mesh Digital Limited confirmed by e-mail to the Forum that the <buyvalium5.com>, <buyvalium5mg.com>, <buyvalium10.com>, <buyvaliumonline5.com>, <buyvaliumonline5mg.com>, <buyvaliumonline10.com>, <buyvaliumonline10mg.com>, and <valiumprice.com> domain names are registered with Mesh Digital Limited and that Respondent is the current registrant of the names. Mesh Digital Limited has verified that Respondent is bound by the Mesh Digital Limited registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 9, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 29, 2016 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@buyvalium5.com, postmaster@buyvalium5mg.com, postmaster@buyvalium10.com, postmaster@buyvaliumonline5.com, postmaster@buyvaliumonline5mg.com, postmaster@buyvaliumonline10.com, postmaster@buyvaliumonline10mg.com, and postmaster@valiumprice.com. Also on November 9, 2016, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On November 6, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the 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 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 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 names be transferred from Respondent to Complainant.
A. Complainant
1. Respondent’s <buyvalium5.com>, <buyvalium5mg.com>, <buyvalium10.com>, <buyvaliumonline5.com>, <buyvaliumonline5mg.com>, <buyvaliumonline10.com>, <buyvaliumonline10mg.com>, and <valiumprice.com> domain names are confusingly similar to Complainant’s VALIUM mark.
2. Respondent does not have any rights or legitimate interests in the <buyvalium5.com>, <buyvalium5mg.com>, <buyvalium10.com>, <buyvaliumonline5.com>, <buyvaliumonline5mg.com>, <buyvaliumonline10.com>, <buyvaliumonline10mg.com>, and <valiumprice.com> domain names.
3. Respondent registered and uses the <buyvalium5.com>, <buyvalium5mg.com>, <buyvalium10.com>, <buyvaliumonline5.com>, <buyvaliumonline5mg.com>, <buyvaliumonline10.com>, <buyvaliumonline10mg.com>, and <valiumprice.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Roche Products, Inc., is a pharmaceutical manufacturer and owner of the well-known VALIUM mark. Complainant holds a registration for its VALIUM mark with the United States Patent and Trademark Office (“USPTO”) and other trademark agencies throughout the world (e.g., Reg. No. 725,548, registered Dec. 26, 1961).
Each of the disputed domain names redirects to <bestshippingtabss.com/valium/>, a page which features products in direct competition with Complainant’s VALIUM product.
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."
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.
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(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 (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.”).
The Panel finds that Complainant’s registration of the VALIUM mark with the USPTO is sufficient to establish Complainant’s Policy ¶ 4(a)(i) rights in the mark. See Paisley Park Enters. v. Lawson, FA 384834 (Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
The disputed domain names all contain the VALIUM mark in its entirety and differ only in the addition of generic and descriptive words and/or numbers and the generic Top Level Domain (“gTLD”) “.com.” Seven of the eight disputed domain names (<buyvalium5.com>, <buyvalium5mg.com>, <buyvalium10.com>, <buyvaliumonline5.com>, <buyvaliumonline5mg.com>, <buyvaliumonline10.com>, and <buyvaliumonline10mg.com>) contain the generic word “buy;” four of the disputed domain names (<buyvaliumonline5.com>, <buyvaliumonline5mg.com>, <buyvaliumonline10.com>, and <buyvaliumonline10mg.com>) contain the generic word “online,” and <valiumprice.com> contains the generic word “price.” The addition of generic terms to a mark does not adequately distinguish a domain name in an analysis of confusing similarity. See Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (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).
Seven of the eight disputed domain names (<buyvalium5.com>, <buyvalium5mg.com>, <buyvalium10.com>, <buyvaliumonline5.com>, <buyvaliumonline5mg.com>, <buyvaliumonline10.com>, and <buyvaliumonline10mg.com>) contain the numbers “5” or “10.” Complainant claims these numbers signify dosages, in milligrams, as highlighted in Respondent’s <buyvaliumonline5mg.com> and <buyvaliumonline10mg.com>. The addition of dosage indication does not distinguish a disputed domain name from a mark under the Policy. See Eli Lilly and Company v. Vitaliy Panov / Ivan Polyakov, FA 1692619 (Forum Oct. 20, 2016) (holding that <cialis40mg.review> is confusingly similar to the CIALIS mark because the addition of a dosage indication does not eliminate confusing similarity).
All eight of the disputed domain names append the gTLD “.com.” The addition of a gTLD is irrelevant to a confusing similarity analysis. See Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Forum Sept. 6, 2007) (“Furthermore, the addition of the generic top-level domain ‘.com’ does nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names.”). Thus, the Panel finds that Respondent’s disputed domain names are confusingly similar to Complainant’s VALIUM mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names 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 (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 (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 argues that Respondent lacks rights or legitimate interests in the disputed domain names, and is not commonly known by <buyvalium5.com>, <buyvalium5mg.com>, <buyvalium10.com>, <buyvaliumonline5.com>, <buyvaliumonline5mg.com>, <buyvaliumonline10.com>, <buyvaliumonline10mg.com>, or <valiumprice.com>. The WHOIS information identifies the registrant of the disputed domain names as “Roslyn Blowem” with “Blowem, Inc.” Panels have found that WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
Complainant further argues Respondent’s lack of rights or legitimate interests in the disputed domain names is evinced by its failure to use the domain names for a bona fide offering of goods or services or legitimate noncommercial or fair use. Complainant demonstrates that each of the disputed domain names ultimately redirects to the page <bestshippingtabss.com/valium/>, which features generic Diazepam pills that directly compete with Complainant’s VALIUM product. Complainant presumes that Respondent receives referral or click-through fees from the <bestshippingtabss.com> site. Panels have held that the use of confusingly similar domain names to advertise and sell goods in direct competition with a complainant does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). The Panel thus finds that Respondent’s use of the disputed domain names is not a bona fide offering of goods or services or legitimate noncommercial or fair use, and Respondent has no rights or legitimate interests in the disputed domain names.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent’s registration of the eight domain names in this case is evidence that there is a pattern of bad faith registration. All eight of the disputed domain names contain and are confusingly similar to Complainant’s VALIUM mark. Prior panels have found that a pattern of registering multiple infringing domain names can be indicative of bad faith. See Philip Morris USA Inc. v. RapidClic / VAUCLIN Olivier, FA1309001520008 (Forum Nov. 7, 2013) (finding that the respondent’s registration of multiple infringing domain names indicates a pattern of bad faith registration and use under Policy ¶ 4(b)(ii)). The Panel finds that Respondent’s registration of the eight disputed domain names constitutes bad faith registration and use under Policy ¶ 4(b)(ii).
All eight of the disputed domain names ultimately redirect to a site selling generic Diazepam pills that directly compete with Complainant’s VALIUM product. The Panel finds that this is evidence of disruption of Complainant’s business for Respondent’s commercial gain, bad faith under both Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv). See Univ. of Texas Sys. v. Smith, FA 1195696 (Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)); see also OneWest Bank N.A. v. Matthew Foglia, FA1503001611449 (Forum Apr. 26, 2015) (holding that the respondent’s use of the disputed domain name to direct Internet users to a website which competed with the complainant was evidence of bad faith pursuant to Policy ¶ 4(b)(iv)).
Complainant argues that Respondent had actual knowledge of Complainant's rights in the VALIUM mark. Panels look to a totality of the circumstances in making determinations of actual knowledge under Policy ¶ 4(a)(iii). See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to an in competition with Complainant.”). Complainant argues that Respondent's offering of competing products at the resolving website, as well as photographs of genuine VALIUM product and packaging, indicates that Respondent had actual knowledge of Complainant's mark and rights. The Panel agrees and finds that Respondent had actual knowledge of Complainant's mark and rights, and registered and used the disputed domain names in bad faith under Policy ¶ 4(a)(iii).
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 <buyvalium5.com>, <buyvalium5mg.com>, <buyvalium10.com>, <buyvaliumonline5.com>, <buyvaliumonline5mg.com>, <buyvaliumonline10.com>, <buyvaliumonline10mg.com>, and <valiumprice.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: December 8, 2016
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