Roche Products Inc. v. Arnav Kumar
Claim Number: FA1710001751729
Complainant is Roche Products Inc. (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Arnav Kumar (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ordervaliumonline.us>, registered with GoDaddy.com, LLC.
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 Forum electronically on October 2, 2017; the Forum received payment on October 3, 2017.
On Oct 03, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <ordervaliumonline.us> domain name(s) is/are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 October 4, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 24, 2017 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@ordervaliumonline.us. Also on October 4, 2017, 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 October 27, 2017, 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 to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD 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
Complainant, Roche Products Inc., is the world’s third largest pharmaceutical company and is the owner of the distinctive and famous VALIUM trademark which it uses to provide and market what has become one of the most well-known pharmaceutical preparations for the treatment of a wide range of symptoms. Complainant has rights in the VALIUM mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 725,548, registered Dec. 26, 1961). Respondent’s <ordervaliumonline.us> domain name is confusingly similar to the VALIUM mark, as the domain name incorporates the mark in its entirety, in addition to the generic terms “order” and “online,” along with the “.us” country-code top-level domain (“ccTLD”).
Respondent has no rights or legitimate interests in the <ordervaliumonline.us> domain name. Respondent is not commonly known by the domain name under Policy ¶ 4(c)(iii) and nothing in the available evidence indicates Respondent has rights in a mark identical to the disputed domain name, which would serve to satisfy Policy ¶ 4(c)(i). Further, Respondent is not making a bona fide offering of goods or services of the domain name, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(ii) and (iv), respectively. Instead, the domain name redirects Internet users to the third-party website <techpharmagroupllc.com> which purports to sell pharmaceutical products in competition with Complainant’s goods.
Respondent registered and has used the <ordervaliumonline.us> domain name in bad faith. Respondent has used the domain name to confuse and attract Internet users for commercial gain. Further, Complainant’s longstanding registration of the Valium mark and Respondent’s conduct indicate Respondent had actual knowledge of Complainant’s rights in the mark at the time the domain name was registered and subsequently used.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Roche Products Inc., is the world’s third largest pharmaceutical company and is the owner of the distinctive and famous VALIUM trademark which it uses to provide and market one of the most well-known pharmaceutical preparations. Complainant has rights in the VALIUM mark based upon registration with the USPTO (Reg. No. 725,548, registered Dec. 26, 1961). Respondent’s <ordervaliumonline.us> domain name is confusingly similar to the VALIUM mark.
Respondent, Arnav Kumar, created the <ordervaliumonline.us> domain name on August 3, 2017.
Respondent has no rights or legitimate interests in the <ordervaliumonline.us> domain name. Respondent’s domain name redirects Internet users to the third-party website <techpharmagroupllc.com> which sells pharmaceutical products some of which are competitive with those provided by Complainant.
Respondent registered and has used the <ordervaliumonline.us> domain name in bad faith.
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 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.
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.”).
Complainant has rights in the VALIUM mark under Policy ¶ 4(a)(i) based upon registration of the mark with the USPTO. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark).
Respondent’s <ordervaliumonline.us> domain name is confusingly similar to Complainant’s VALIUM mark, as the domain name incorporates the mark in its entirety and merely adds the generic terms “order” and “online,” along with the “.us” ccTLD.
Respondent has no rights or legitimate interests in the <ordervaliumonline.us> domain name. Complainant has not authorized Respondent to use its VALIUM mark. Respondent is not commonly known by the disputed domain name. The WHOIS information of record identifies Respondent as “Arnav Kumar.” See Chevron Intellectual Property LLC v. Fred Wallace, FA 1626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ [4(c)(iii)], as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name).
Respondent has failed to use the <ordervaliumonline.us> domain name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(ii) or (iv). Rather, the domain name redirects Internet users to a third-party website which sells pharmaceutical products, some of which are competitive with those provided by Complainant. Use of a confusingly similar domain name to redirect to a competing website is not a use showing rights or legitimate interests under Policy ¶¶ 4(c)(ii) or (iv). See Invesco Ltd. v. Premanshu Rana, FA 1733167 (Forum July 10, 2017) (“Use of a domain name to divert Internet users to a competing website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.”).
Respondent’s use of <ordervaliumonline.us> to redirect Internet users to a competitive commercial website shows bad faith under Policy ¶ 4(b)(iv). See F. Hoffmann-La Roche AG v. Marina Kovtun, Case No. D2016-0852 (WIPO, July 6, 2016) (the respondent’s use of the disputed domain name to resolve to “an online pharmacy that sells both the trademarked goods and other goods, without disclosing the Respondent’s relationship with the Complainant” constituted bad faith registration and use); see also OneWest Bank N.A. v. Matthew Foglia, FA 1611449 (Forum Apr. 26, 2015) (concluding 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)). Also, Respondent likely receives click-through or affiliate compensation from the owner of the website.
Respondent had actual knowledge of Complainant’s rights in the VALIUM mark when he registered the <ordervaliumonline.us> domain name. Therefore, Respondent registered the domain name in bad faith according to Policy ¶ 4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii).").
Complainant having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ordervaliumonline.us> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: November 9, 2017
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