Case recognizes limitations of UDRP.
F. Hoffmann-La Roche has lost a domain name dispute for the domain name ValiumNoPrescription.biz in a case that recognizes important limits of the Uniform domain-name Dispute Resolution Process (UDRP).
Roche filed more domain disputes under UDRP last year than any other company, and it usually wins without contest. But in this case, even though Valium is a trademark of Roche, UDRP panelist Dan Hunter noted that there’s no way an internet user would confuse ValiumNoPrescription.biz with a site owned by Roche. After all, getting prescription drugs with no prescription isn’t something Roche would offer.
…here the domain name involves a drug name and a means of procuring it (i.e. without prescription). In this Panel’s view, Internet users are not going to be confused about the purpose of the website, nor are they likely to think that the site is operated by the Complainant. Rather, they will go to the website associated with the domain name thinking that they will be able to obtain drugs without a prescription, in the nature of all Internet pharmacies.
That’s not to say that Hunter finds the domain owner’s behavior acceptable. In fact, he believes the contrary. However, the panel discusses how the use of this domain name isn’t meant to be objected to under UDRP:
As much as unlicensed Internet pharmacies might be appalling and dangerous and desperately in-need of regulation, the Policy is not intended, nor is it well-adapted, to stop this type of Internet commerce. In this Panel’s opinion, Paragraph 4(a)(iii) was always intended to track the standard international understandings of what amounted to an abusive misappropriations of a trademark, misappropriations of which demand either consumer confusion or some kind of unfair competition / passing off. Proof of this can be seen both in the examples articulated in paragraph 4(b)â€”all of which fit into one or other of these categoriesâ€”and in the discussion in WIPO’s Final Report to ICANN of April 30, 1999 which led to the development of the UDRP.