WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION F. Hoffmann-La Roche AG v. PrivacyP / Alex Maroon Case No. D2009-0890 1. The Parties
The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally.
The Respondent is PrivacyP/Alex Maroon of Moergestel, Netherlands and Noröurlandeystra, Iceland, respectively. 2. The Domain Name and Registrar
The disputed domain name is registered with UK2 Group Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 3, 2009. On July 6, 2009, the Center transmitted by email to UK2 Group Ltd. a request for registrar verification in connection with the disputed domain name. On July 9, 2009, UK2 Group Ltd. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 15, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on July 15, 2009. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 Respondents of the Complaint, and the proceedings commenced on July 29, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was August 18, 2009. The Respondents did not submit any response. Accordingly, the Center notified the Respondents' default on August 20, 2009.
The Center appointed Irina V. Savelieva as the sole panelist in this matter on September 1, 2009. 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.
The Registrar in charge of the disputed domain name informed that the language of the registration agreement for the disputed domain name is Russian. On July 15, 2009 the Center sent the Notification on the Language of the Proceedings to the Complainant and the Respondents in both English and Russian languages. On July 15, 2009 the Complainant replied and submitted its request that the language of the proceedings, including the language of the Complaint should be English and presented relevant arguments, which are dealt with in paragraph 6 (Discussion and Findings) below. No reply was received from the Respondents (further collectively referred to as the Respondent). 4. Factual Background
The Complainant together with affiliated companies is one of the world leading healthcare groups in the field of pharmaceuticals and diagnostics and operates in more than 100 countries. Among its numerous trademark is TAMIFLU, which has been registered worldwide since 1999. This name became well-known, in particular in the last few years in connection with influenza A(H1N1), so called swineflu.
The disputed domain name was registered on April 30, 2009. 5. Parties' Contentions A. Complainant
The Complainant contends the following:
(a) The disputed domain name is confusingly similar to the trademark owned by the Complainant:
- One of the Complainant popular pharmaceuticals is commonly known as “Tamiflu” and the Complainant owns a trademark TAMIFLU worldwide.
- The disputed domain name incorporates the TAMIFLU trademark in its entirety and the addition of the word “tabz” does not sufficiently distinguish the disputed domain name from the Complainant's trademark.
(b) The Respondent has no rights or legitimate interests in the domain name:
- The Complainant has exclusive rights for trademark TAMIFLU in most of the countries in the world (example in Annex 3 to the Complaint).
- The Respondent was never authorised by the Complainant to register disputed domain name and were never authorised to represent the Complainant.
- The Respondent is illegally taking advantage of the Complainant's trademark and associated goodwill for the Respondent's own financial benefit.
- The disputed domain name directs to a webpage offering/selling among others the Complainant's products (Annex 3 to the Complaint).
- The Respondent is not commonly known by the disputed domain name.
- The Respondent is not making legitimate noncommercial or fair use of the disputed domain name.
(c) The Respondent registered and is using the domain name in bad faith:
- At the time of registration, i.e. April 30, 2009 the Respondent no doubt knew or should have known about the Complainant's well-known product “Tamiflu”.
- On the set of facts, the Respondent registered the disputed domain name for the purpose of attracting Internet users to the Respondent's website for commercial gain by creating likelihood of confusion with the Complainant's product and trademark.
- Bad faith can be found when the Respondent intentionally creates a likelihood of confusion with the complainant's product and trademark as to the source, affiliation and endorsement of the Respondent's webpage and products it is linked to.
- The Respondent is currently using the disputed domain name for its own financial benefit as forwarding address to a for-profit online pharmacy. (Pfizer Inc. v. jg a/k/a Josh Green. WIPO Case No. D2004-0784)
- Respondent's use of the Complainant's product name and trademark may generate illegitimate profit. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
The Respondent was given notice of this proceeding in accordance with the Rules.
However the Respondent failed to file a Response to the Complaint and has not sought to answer the Complainant's assertions, evidence or contentions in any other manner. The Panel finds that the Respondent has been given fair opportunity to present its case, and the Panel will proceed to a decision on the Complaint.
The Respondent's default does not automatically result in a decision in favor of the Complainant. The Complainant must still prove the elements required by the Policy. In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, the Complainant must prove that each of the three following elements are satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Pursuant to paragraph 15(a) of the Rules the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, the Panel may draw such inferences as it considers appropriate from the Respondent's failure to reply to the Complainant's assertions and evidence or to otherwise contest the Complaint. In the circumstances, the Panel's decision is based upon the Complainant's assertions and evidence and inferences drawn from the Respondent's failure to reply.
As for the language of the administrative proceedings WIPO Overview of WIPO Panel Views on Selected UDRP Questions, section 4.3 states as follows:
“Consensus view: The language of the proceeding is the language of the registration agreement, unless both parties agree otherwise.
Relevant decisions:
Telstra Corporation Limited v. Telsra com /Telecomunicaciones Serafin Rodriguez y Asociados,WIPO Case No. D2003-0247 ;
Fondation Le Corbusier v. Monsieur Bernard Weber, Madame Heidi Weber,WIPO Case No. D2003-0251 among others; Advanced Magazine Publishers Inc. v. Computer Dazhong,WIPO Case No. D2003-0668.
However: In certain situations, where the respondent can clearly understand the language of the complaint, and the complainant would be disadvantaged by being forced to translate, the language of proceedings can remain the language of the complaint, even if it is different to the language of the registration agreement.
Relevant decisions: L'Oreal S.A. v. Munhyunja,WIPO Case No. D2003-0585; Deutsche Messe AG v. Kim Hyungho,WIPO Case No.D2003-0679.”
The Panel notes that the language of the registration agreement is Russian as confirmed by the Registrar. The Panel decides, however, in light of the circumstances, that the language of the proceedings should be English. The Panel notes that the Center has issued its communications both in English and in Russian during these proceedings and as such the Respondent had notice of and a fair opportunity to participate in the correct proceedings. The Panel further finds the request and supporting arguments submitted by the Complainant for English to be the language of the proceedings to be well-justified, among them the fact that Gibraltar where the Registrar is located is an overseas territory of the United Kingdon, that the Registrar' webside is in English, that the Respondent's webpage corresponding to the disputed domain name (and related website) is in English and finally that the Respondent is located in Iceland where English is commonly spoken. A. Identical or Confusingly Similar
The Complainant has registered the trademark TAMIFLU in many countries of the world. The Complainant submits that the disputed domain name is confusingly similar to the trademark TAMIFLU as the disputed domain name incorporates the whole of the trademark.
The Panel finds that the Complainant has registered the trademark TAMIFLU in 1999 and it corresponds to the product which is well-known.
The Panel finds that the Complainant has proved rights in a registered trademark TAMIFLU.
The Panel finds that the disputed domain name is confusingly similar to the Complainant's trademark TAMIFLU. The Panel agrees with the Complainant's arguments that the disputed domain name simply adds the letters ‘tabz” and it may be directly associated in the minds of the consumers with the Complainant's product and trademark.
The Panel refers to a number of past UDRP decisions, which confirm that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark (Toyota France and Toyota Motor Corporation v. Computer-Brain,WIPO Case No. D2002-0002 and Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd.,WIPO Case No. D2000-0802).
The Panel finds the Complainant has satisfied its burden of proof under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name.
Even though the Respondent has not filed a Response to the Complaint and has not contested the Complainant's assertions, it is up to the Panel to consider whether the Respondent's use of the disputed domain name demonstrates rights or legitimate interests in the disputed domain name.
According to paragraph 4(c) of the Policy the following circumstances, if proved, demonstrate a respondent's rights or legitimate interests in a domain name:
(i) Respondent used or demonstrably prepared to use the domain name or corresponding name in connection with a bona fide offering of goods or services prior to notice of the dispute; or
(ii) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the complainant's marks.
A respondent may elect to show rights and legitimate interests, non-exhaustively, by producing proof under paragraphs 4(c)(i)(iii) of the Policy. By not responding to the Complainant's contentions, the Respondent in this proceeding has not attempted to show its rights and legitimate interests.
Firstly, there is no evidence that before any notice of a dispute with the Complainant, the Respondent was using the disputed domain name for a legitimate offer of goods and services. The Respondent does not use the disputed domain name in connection with the bona fide offering of goods and services, for example, according to the standards set out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.
According to the documents submitted by the Complainant and a subsequent verification by the Panel, the webpage of the website at the disputed domain name is linked to a website offering various pharmaceutical products, including the Complainant's products, which are sold not under any legitimate business name. The Panel agrees with Complainant's contention that the Respondent is using the disputed domain name as a forwarding address to a for-profit online pharmacy (Pfizer Inc. v. jg a/k/a josh Green. WIPO Case No. D2004-0784). The webpage at the disputed domain name itself does not offer any goods or services; it merely provides a link to another website.
The Respondent has made no effort to commence use of the disputed domain name in connection with bona fide offering of goods and services. Misleadingly diverting customers in the Internet with the intent of commercial gain is not evidence of bona fide use.
Secondly, as for the Respondent's proof under paragraph 4(c)(ii) of the Policy there is no evidence that the Respondent has been commonly known by the disputed domain name.
The Panel notes that the Respondent registered the disputed domain name in 2009 (Annex 1 to the Complaint) when the Complainant's product and trademark was already known since 1999 and in particular, in connection with influenza A(H1N1), the so called swineflu.
The Panel believes based on the evidence that the Respondent knew about the Complainant's product and trademark at the time of registration of the disputed domain name and most likely registered the disputed domain name with full awareness of the Complainant's products and trademarks as well as goodwill associated with them.
Thus, the Panel finds that the Respondent's use of the disputed domain name does not constitute a bona fide offering of services under paragraph 4(c)(i) the Policy or that any of the other circumstances of paragraph 4(c) of the Policy would be applicable here.
The Panel finds the Complainant has carried out its burden of proof to show that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances are deemed to be evidence that a respondent has registered and is using a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has 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 the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) the Respondent has 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 the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of its website or location or of a product or service on its website or location.
The Complainant contends that the Respondent's actions correspond to the bad faith criteria of the Policy because the disputed domain name was registered and used (and it is still used) primarily for the purpose of confusing the public and diverting public attention to a potentially illegitimate website selling pharmaceutical products of well-known companies including the Complainants, i.e. for potential commercial gain.
According to the evidence submitted by the Complainant, the webpage at the disputed domain name displays a link to the website that is concerned with selling various pharmaceutical products (Annex 4 to the Complaint).
The Panel finds that the Respondent's webpage may have attracted potential attention from the public because of its probable association with the Complainant's products and trademark. At the same time it has created a risk of confusion with the Complainant's product and trademark as to the source, sponsorship, affiliation or endorsement of its website.
The Panel's independent verification has shown that the current use of the Respondent's webpage at the domain name is still the same. It is therefore clear that the Respondent continues using the disputed domain name.
The Panel finds that the Complainant presented evidence that the Respondent's actions demonstrate bad faith in accordance with the provisions of paragraph 4(b)(iv) of the Policy.
The Panel holds that the Respondent has registered the disputed domain name in bad faith. The Respondent does not conduct any legitimate business activity using the disputed domain name. The Respondent must have known the Complainant's well-known product and should have been aware of the corresponding trademark of the Complainant. These findings, together with the finding that the Respondent has no rights or legitimate interests in the domain name, lead the Panel to conclude that the disputed domain name has been registered by the Respondent in bad faith.
The Panel further finds that the fact that the Respondent's use of the disputed domain name has created a likelihood of confusion with the Complainant's products and trademarks under paragraph 4(b)(iv) of the Policy indicates that the disputed domain name has been used and is still being used in bad faith.
The Panel finds the Complainant has shown that the Respondent registered and used the disputed domain name in bad faith. 7. Decision
The Panel decides that the Complainant has proven each of the three elements in paragraph 4(a) of the Policy. In accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Irina V. Savelieva
Sole Panelist
Dated: September 16, 2009
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