WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. Kentech Inc.
Case No. D2006-0386
1. The Parties
The Complainant is F. Hoffmann-La Roche AG, Basel, Switzerland.
The Respondent is Kentech, Inc., Eldoret, Kenya.
2. The Domain Name and Registrar
The disputed domain name is registered with Domain Contender, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 28, 2006. On March 29, 2006, the Center transmitted by email to Domain Contender, LLC a request for registrar verification in connection with the domain name at issue. On March 29, 2006, Domain Contender, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 3, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was April�23,�2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 26, 2006.
The Center appointed Hariram Jayaram as the sole panelist in this matter on May�18,�2006. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Together with its affiliated companies, the Complainant is one of the world’s leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics, having global operations in more than 100 countries. The Complainant’s mark TAMIFLU designates an antiviral pharmaceutical preparation, namely a product against flu and is protected as a trademark in a multitude of countries worldwide by registration and use.
The Respondent is the registrant of the disputed domain name .
5. Parties’ Contentions
A. Complainant
The Complainant contends as follows:
(a) The disputed domain name is confusingly similar to TAMIFLU, a trademark of the Complainant, since it incorporates the Complainant’s mark in its entirety. In the past years and particularly in the past months, the Complainant’s mark TAMIFLU has been referred to in the mass media because various governments have decided to stockpile the product TAMIFLU against the outbreak of bird flu. The trademark’s notoriety will increase the likelihood of confusion. The Complainant’s use and registration of the mark TAMIFLU predates the Respondent’s registration of the disputed domain name.
(b) The Respondent has no rights or legitimate interests in respect of the disputed domain name . The Complainant has exclusive rights for TAMIFLU. No licence, permission, authorization or consent was granted to the Respondent to use TAMIFLU as part of the disputed domain name. The Respondent uses the disputed domain name for commercial gain. Its website is a search engine with sponsored links. The website even provides a link to a website owned by the Complainant. The Respondent’s only reason for registering and using the disputed domain name is to benefit from the reputation of the trademark TAMIFLU and illegitimately trade on its fame for commercial gain and profit.
(c) The registration of the disputed domain name was in bad faith since the Respondent must have known of the Complainant’s well-known product/mark TAMIFLU at the time of the registration. The disputed domain name is also being used in bad faith. The Respondent uses the disputed domain name to address Internet users to a search engine website where links to third parties are displayed. The Respondent is attempting (for commercial purpose) to attract Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s well-known mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of the products or services posted on or linked to the Respondent’s website. The disputed domain name is used to advertise links to websites promoting and/or offering products and services of third parties, especially in the pharmaceutical field being the business area of the Complainant. The Respondent, by using the disputed domain name, is intentionally misleading consumers and confusing them so as to attract them to other websites making them believe that the websites behind those links are associated with or recommended by the Complainant. As a result, the Respondent may generate unjustified revenues for each click-through by on-line consumers of the sponsored links on the Respondent’s website. The Respondent is therefore illegitimately capitalizing on the fame of the TAMIFLU trademark.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The trademark of the Complainant is TAMIFLU. The domain name in dispute is . It incorporates the Complainant’s trademark TAMIFLU as an essential feature but has another word, i.e. “purchase”. The word “purchase” is a descriptive word. As has been decided in Lilly ICOS LLC v. Jay Kim, WIPO Case No. D2004-0891, the word “purchase” is generic and therefore does not dispel the confusion created by the use of the word TAMIFLU.
The Panel finds that the disputed domain name registered by the Respondent is confusingly similar to the Complainant’s trademark TAMIFLU.
B. Rights or Legitimate Interests
The Complainant has not consented to the use of the trademark TAMIFLU as part of the domain name of the Respondent. As may be seen from the Respondent’s name, it is not commonly known by the domain name. The Respondent’s website is a search engine composed of sponsored links, e.g. a link to a website owned by the Complainant, “.” In Bellsouth Intellectual Property Corporation v. Michele Dinoia, WIPO Case No. D2004-0486, it was observed that
“it would be difficult to presume that the Respondent did not know about the Complainant’s right’s when he provided a direct link to the Complainant’s website on the Respondent’s own website … [T]his fact is sufficient in itself to show that the Respondent, even if he has used the disputed domain name, has not done it in connection with a bona fide offering of goods or services”.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name .
C. Registered and Used in Bad Faith
As the Complainant’s trademark is well known, with extensive coverage in the mass media about TAMIFLU as a medicine for bird flu, the Respondent must have had knowledge of the Complainant’s trademark at the time of the registration. As observed in Hoffman-La Roche Inc. v. WhoisGuard, WIPO Case No. D2005-1288
“With the widespread fame of the TAMIFLU mark it is simply not credible to believe that Respondent registered the disputed domain name without knowledge of Complainant’s mark. Only someone with knowledge of the mark … could have registered the disputed domain name. Thus, Respondent registered the disputed domain name in bad faith”.
By incorporating the Complainant’s mark TAMIFLU in the disputed domain name, it is reasonable to infer that the Respondent has one aim in mind: It is attempting to attract consumers of the TAMIFLU product to the Respondent’s website, by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or of the products or services posted on or linked to the Respondent’s website.
The Panel concludes that the Respondent has registered and used the disputed domain name in bad faith.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, , be transferred to the Complainant.
Hariram Jayaram
Sole Panelist
Dated: May 31, 2006
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