WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hoffmann-La Roche Inc. v. Lilia Gurganious
Case No. D2008-1121
1. The Parties
Complainant is Hoffman-La Roche Inc. (“Complainant”), a corporation incorporated under the laws of the State of New Jersey, with a principal place of business located in Nutley, State of New Jersey, United States of America.
Respondent is Lilia Gurganious (“Respondent”), an individual residing in Mobile, State of Alabama, United States of America.
2. The Domain Name and Registrar
The domain name at issue is (the “Domain Name”). The registrar is B Inc. (the “Registrar”), located in Wilmington, State of Delaware, United States of America.
3. Procedural History
On July 23, 2008, the WIPO Arbitration and Mediation Center (the “Center”) received a copy of the Complaint of Complainant via email. On July 27, 2008 the Center sent an Acknowledgment of Receipt of Complaint to Complainant. On July 28, 2008, the Center received hardcopy of the Complaint. Complainant paid the required fee.
On August 4, 2008 after the Center sent a Request for Verification and several reminder letters to the Registrar requesting verification of registration data, the Registrar confirmed, inter alia, that it is the registrar of the Domain Name and that the Domain Name is registered in Respondent's name.
The Center verified that the Complaint satisfies 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 Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
On August 7, 2008, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to Respondent together with copies of the Complaint, with a copy to Complainant. This notification was sent by the methods required under paragraph 2(a) of the Rules.
On September 4, 2008, the Center advised Respondent that it was in default for failing to file its Response. No Response has been received.
On September 8, 2008 after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page (the “Panel”), the Center notified the parties of the appointment of a single-member panel consisting of the Panel.
4. Factual Background
Complainant, together with its affiliated companies, is one of the leading manufacturers of pharmaceutical and diagnostic products in the world. Roche has numerous registration of TAMIIFLU (the “TAMIFLU Mark”) for a pharmaceutical antiviral preparation in a multitude of countries worldwide. For example, the TAMIFLU Mark is registered to Complainant with the United States Patent and Trademark Office under Reg. No. 2,439,305, having a priority date of April 26, 1999. Complainant also owns the TAMILFLU Mark and Design registered on June 4, 2002 under Reg. No. 2,576,662.
The TAMIFLU Mark designates an antiviral pharmaceutical preparation, namely, a pharmaceutical product indicated for the treatment and prevention of influenza. In the past years, in particular in the past year, Complainant's TAMIFLU Mark has been extensively promoted, without limitation, in print advertisements, in medical journals, promotional materials, packaging, medical informational materials, television advertising and direct mailings. Complainant has used the TAMILFU Mark for an anti viral pharmaceutical preparation since November, 1999 in the United States of America. Sales of the Tamiflu pharmaceutical preparation have far exceeded hundreds of millions of dollars in the United States of America since 2000 and have been in the billions of dollars worldwide.
Advertising and promotion for this pharmaceutical preparation of Roche using the TAMIFLU Mark continues to be extensively used and widely circulated by Complainant in the United States of America. Many governments have decided to stockpile the product Tamiflu against bird flu, and the product has acquired fame and celebrity, symbolizing the goodwill that Roche has created in the United States of America and throughout the world. The Tamiflu product has received significant unsolicited media attention.
Roche's parent company, F. Hoffmann-La Roche AG (collectively “Roche”) owns and has registered the domain name through which Complainant's customers obtain information as to the Tamiflu antiviral product manufactured and sold by Roche.
5. Parties' Contentions
A. Complainant's contentions
Complainant contends that it has registrations of the TAMIFLU Mark, that its trademark registrations are valid and subsisting, and that they serve as prima facie evidence of its ownership and the validity of the TAMIFLU Mark.
Complainant argues that the Domain Name is confusingly similar to the TAMIFLU Mark, pursuant to Paragraph 4(a)(i) of the Policy, because the Domain Name wholly incorporates the TAMIFLU Mark with the addition of generic terms “-medicines” and “.info.”
Complainant contends that Respondent has no rights or legitimate interests in the Domain Name, pursuant to Paragraph 4(a)(ii), and that Respondent has failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Domain Name.
Complainant contends that Respondent cannot demonstrate rights or legitimate interest in the Domain Name under Paragraph 4(c)(i) because it has not made use or demonstrable preparations to use the Domain Name in connection with the bona fide offering of goods or services. Complainant alleges that “tamiflu” is not a word and has no use other than to create confusion with the TAMIFLU Mark. In addition, Complainant alleges that Respondent is offering a product identified as Tamiflu which has not been authorized by Complainant or by the FDA, thereby making the product illegal in the United States of America. Therefore, Respondent's use of the Domain Name cannot be bona fide.
Complainant contends that Respondent cannot demonstrate rights or legitimate interests in the Domain Name under Paragraph 4(c)(ii) because it is not commonly known under the Domain Name. Respondent has no connection or affiliation with Complainant and has not received any license or consent, express or implied, to use the TAMIFLU Mark in a domain name or in any other manner.
Complainant contends that Respondent cannot demonstrate rights or legitimate interests in the Domain Name under Paragraph 4(c)(iii) because it is not making a legitimate noncommercial or fair use of the Domain Name without the intent to (a) derive commercial gain, (b) misleadingly divert consumers, or (c) tarnish the trademark at issue. According to Complainant, Respondent has deliberately registered the Domain Name containing the TAMIFLU Mark and created links to promote products competitive with Complainant and to online pharmacies. Therefore, Respondent is engaged in commercial activity.
Complainant contends that Respondent registered and is using the Domain Name in bad faith in violation of Paragraph 4(a)(iii).
Complainant contends that Respondent has registered and used the Domain Name to intentionally attract, for commercial gain, Internet users to Respondent's website by creating a likelihood of confusion with Complainant's TAMIFLU Mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website. Therefore, bad faith is established pursuant to Paragraph 4(b)(iv).
B. Respondent's contentions
Respondent has chosen not to contest the allegations of Complainant in this proceeding.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall 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.”
Because both Complainant and Respondent are domiciled in the United States of America and United States courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States of America. See Tribeca Film Center, Inc. v. Lorenzo Brusasco-Mackenzie,WIPO Case No. D2000-1772, n. 3.
A. Failure to File a Response
A respondent is not obliged to participate in a domain name dispute proceeding, but if it were to fail to do so, asserted facts that are not unreasonable would be taken as true and the respondent would be subject to the inferences that flow naturally from the information provided by the complainant: Reuters Limited v. Global Net 2000, Inc.,WIPO Case No. D2000-0441. See also Hewlett-Packard Company v. Full System S.a.S., NAF Case No. FA94637; David G. Cook v. This Domain is For Sale, NAF Case No. FA0006000094957 and Gorstew Jamaica, and Unique Vacations, Inc. v. Travel Concierge, NAF Case No. FA0005000094925.
Even though Respondent has failed to file a Response or to contest Complainant's assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met.
Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:
(i) that the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and,
(ii) that Respondent has no rights or legitimate interests in respect of the domain name; and,
(iii) that the Domain Name has been registered and is being used in bad faith.
B. Enforceable Trademark Rights
Complainant contends that it has registrations of the TAMIFLU Mark, that its trademark registrations are valid and subsisting, and that they serve as prima facie evidence of its ownership and the validity of the TAMIFLU Mark. Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption. See, e.g., EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047.
However, Respondent has chosen not to contest Complainant's allegations. Therefore, the Panel finds that Complainant, for purposes of this proceeding, has enforceable rights in the trademark.
C. Identity or Confusing Similarity
Complainant further contends that the Domain Name is identical with and confusingly similar to the TAMIFLU Mark pursuant to the Policy paragraph 4(a)(i) because the Domain Name wholly incorporates the TAMIFLU Mark with the addition of generic terms”-medicines” and “.info.”
Respondent has not contested the assertions by Complainant that the Domain Name is confusingly similar to the TAMIFLU Mark.
As numerous courts and prior UDRP panels have recognized, the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to the complainant's registered mark. See Paccar, Inc. v. Telescan Technologies, L.L.C., 115 F. Supp. 2d 772 (E.D. Mich. 2000) (finding that , and similar domain names are not appreciably different from the trademarks PETERBUILT and KENWORTH); Quixtar Investments, Inc. v. Dennis Hoffman,WIPO Case No. D2000-0253 (finding that QUIXTAR and are legally identical).
The Panel notes that the entirety of the TAMIFLU Mark is included in the Domain Name. Further, the word “-medicines” is descriptive and non-distinctive under the present circumstances and the “.info” extension is a gTLD required for registration of a domain name.
Generally, a user of a mark “may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it.” 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23:50 (4th ed. 1998).
Therefore, the Panel finds that the Domain Name is confusingly similar to the TAMIFLU Mark pursuant to the Policy paragraph 4(a)(i).
D. Rights or Legitimate Interests
Complainant contends that Respondent has no rights or legitimate interest in the Domain Name pursuant to the Policy paragraph 4(a)(ii) and that Respondent has failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Domain Name.
Paragraph 4(a)(ii) requires Complainant to prove that Respondent has no rights to or legitimate interests in the Domain Name. Once a complainant establishes a prima facie showing that none of the three circumstances establishing legitimate interests or rights apply, the burden of production on this factor shifts to Respondent to rebut the showing. The burden of proof, however, remains with Complainant to prove each of the three elements of Paragraph 4(a). See Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
Respondent has chosen not to respond to the allegations of Complainant. Therefore, the Panel finds that Respondent has no rights or legitimate interest in the Domain Name pursuant to the Policy paragraph 4(a)(ii).
E. Registered and Used in Bad Faith.
Complainant contends that Respondent registered and is using the Domain Name in bad faith in violation of the Policy paragraph 4(a)(iii). The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of domain names:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web or location.
Complainant contends that Respondent registered and is using the Domain Name in bad faith in violation of Paragraph 4(a)(iii). Complainant contends that Respondent has registered and used the Domain Name to intentionally attract, for commercial gain, Internet users to Respondent's website by creating a likelihood of confusion with Complainant's TAMIFLU Mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website. Therefore, bad faith is established pursuant to Paragraph 4(b)(iv).
Respondent has failed to contest these allegations. Therefore, based on the record, the Panel concludes that Complainant has shown the necessary elements of bad faith under the Policy paragraph 4(b)(iv).
7. Decision
The Panel concludes (a) that the Domain Name is confusingly similar to Complainant's registered TAMIFLU Mark; (b) that Respondent has no rights or legitimate interest in the Domain Name; and (c) that Respondent registered and used the Domain Name in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to Complainant.
Richard W. Page
Sole Panelist
Date: September 23, 2008
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