WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION F. Hoffmann-La Roche AG v. Frederic Delstanche Case No. D2009-1081 1. The Parties
The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented by an internal representative.
The Respondent is Frederic Delstanche of West-Vlaanderen, Belgium. 2. The Domain Names and Registrar
The disputed domain names and are registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 12, 2009. On August 12, 2009, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain names. On August 12, 2009, GoD, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that 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 Respondent of the Complaint, and the proceedings commenced on August 24, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was September 13, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 15, 2009.
The Center appointed Cherise M. Valles as the sole panelist in this matter on September 22, 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. 4. Factual Background
The Complainant and its affiliated companies are internationally recognised as one of the world's leading healthcare entities in the fields of pharmaceuticals and diagnostics, with operations in more than 100 countries. The Complainant's mark TAMIFLU is protected as a trademark in a multitude of countries. Copies of the Complainant's certificates for International Registration Nos. 713623 & 727329 for the mark TAMIFLU were provided as Annex 3 to the Complaint. The priority date for the mark TAMIFLU is May 4, 1999. The mark TAMIFLU designates an antiviral pharmaceutical preparation that is used to combat flu.
The disputed domain names were both registered on August 3, 2009. 5. Parties' Contentions A. Complainant
The Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, the Complainant asserts that:
The disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant's mark TAMIFLU is protected as a trademark in many countries around the world. Copies of the Complainant's certificates for International Registration Nos. 713623 & 727329 for the mark TAMIFLU were provided as Annex 3 to the Complaint. The priority date for the mark TAMIFLU is May 4, 1999. The mark TAMIFLU designates an antiviral pharmaceutical preparation, namely a product against flu. The Complainant asserts that the disputed domain names, and , are confusingly similar to the Complainant's mark in the light of the fact that both domain names incorporate the mark in its entirety. Moreover, the addition of the generic terms “buy”, “online” “without prescription” do not sufficiently distinguish the disputed domain name from the Complainant's registered mark. The Complainant's mark TAMIFLU has been the subject of much media attention recently in the light of the so-called “swineflu” outbreak. The trademark's current notoriety will increase the likelihood of confusion. The Complainant's use and registration of the mark TAMIFLU predates the Respondent's registration of the dispute domain names.
The Respondent has no rights or legitimate interests with respect to the disputed domain names. The Complainant has the exclusive rights to the mark TAMIFLU and has not authorised, licensed, permitted or otherwise consented to the use of the mark TAMIFLU in the disputed domain names. The disputed domain names and divert Internet users to parking websites of the Internet Service Provider Go Daddy with links to commercial websites. The only reason the Respondent is registering and using the disputed domain names is to benefit illegitimately from the reputation of the trademark TAMIFLU for its own commercial gain and profit.
The domain name was registered and is being used in bad faith. The Complainant asserts that the disputed domain names were registered in bad faith. At the time of their registration, that is, on August 3, 2009, the Respondent undoubtedly had knowledge of the Complainant's well-known product/mark TAMIFLU and intentionally attempted to attract Internet users to its website by creating a likelihood of confusion with that well-known mark. The Complainant asserts that the Respondent is intentionally attempting to attract Internet users to its websites, by creating a likelihood of confusion with the Complainant's well known mark. Even though the Respondent's website is merely a “parked” site, such use constitutes “use in bad faith” within the meaning of paragraph 4(a)(iii) of the Policy. By capitalising on this confusion, the Respondent may generate unjustified revenues from Internet users looking for the Complainant's products.
The Complainant requests that the Panel issue a decision finding that the disputed domain names be transferred to the Complainant, in accordance with paragraph 4(b)(i) of the Policy. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
The Policy, the Rules and the Supplemental Rules provide specific remedies to trademark owners against registrants of domain names where the owner of the mark (the Complainant) establishes each of the following elements:
(a) the disputed domain names are identical or confusingly similar to a trademark in which the Complainant has rights;
(b) the Respondent has no rights or legitimate interests in respect of the domain names; and,
(c) the domain names were registered and are being used in bad faith.
The Complainant has the burden of proof in establishing each of these elements.
The Respondent, having failed to respond in these proceedings is in default, and the panel shall draw such appropriate inferences therefrom. A. Identical or confusingly similar
To prove this element, the Complainant must have trademark rights and the disputed domain names must be identical or confusingly similar to the Complainant's trademark.
The Complainant has submitted evidence demonstrating that it is the owner of the registered mark TAMIFLU. Copies of the Complainant's certificates for International Registration Nos. 713623 & 727329 for the mark TAMIFLU were provided as Annex 3 to the Complaint. The priority date for the mark TAMIFLU is May 4, 1999. The disputed domain names differ from the Complainant's mark by the addition of the prefix “buy” and the suffix “online” to the term “tamiflu”, and the terms “without” and “prescription”. Thus, the disputed domain names incorporate the Complainant's mark in its entirety. It has been held in many prior panel decisions that when a domain name incorporates a registered mark in its entirety, it is confusingly similar to that registered trademark. See, EAuto, L.L.C v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc,WIPO Case No. D2000-0047. The addition of the common, generic terms here do not serve to distinguish the Complainant's mark from the disputed domain name. See, ECredit Suisse Group v. Kingdomdatnet Network, Inc,WIPO Case No. D2004-0846.
It is also well-established that the top level of a domain name such as “.info” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar. See, F. Hoffmann-LaRoche AG v. Digi Real Estate Foundation,WIPO Case No. D2005-1286. Therefore, the use of the gTLD “info” in the disputed domain names is not germane to the determination of whether that domain names are confusingly similar to the Complainant's registered mark.
In the light of the foregoing, the Panel finds that the disputed domain names are confusingly similar to the Complainant's registered mark and that paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
The burden of proof is on the Complainant to establish a prima facie case that the Respondent lacks rights or interests in the disputed domain names. If a prima facie case is established, then the burden shifts to the Respondent to demonstrating that it has rights or legitimate interests in the disputed domain names.
Paragraph 4(c) of the Policy enumerates three, non-exclusive ways in which a respondent may demonstrate rights or legitimate interests in the disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Respondent did not submit a response or attempt to demonstrate any rights or legitimate interests in the disputed domain names, and the Panel draws adverse inferences from this failure.
The Panel finds that the Respondent, at the time of registration of the disputed domain names, most likely knew or should have known of the existence of the Complainant's trademark TAMIFLU. The mark TAMIFLU is famous and known globally for its connection with the current swineflu outbreak. The Complainant, who has registered the mark TAMIFLU, has not authorised, licensed, permitted or otherwise consented to the Respondent's use of the mark TAMIFLU in the disputed domain names.
The Respondent has not attempted to make any bona fide or legitimate non-commercial or fair use of the disputed domain names. The disputed domain names link to a website that contains references to the Complainant's product/mark TAMIFLU. The evidence suggests that the Respondent registered, and is using the disputed domain names, only because they are is similar to the Complainant's well known mark, and due to user confusion, will generate a lot of traffic by mistake.
As stated by the panel in F. Hoffman-LaRoche AG v. Macalve e-dominios SA,WIPO Case No. D2006-0451, “the use of the domain name as a parking website is not a bona fide non-commercial use pursuant to paragraph 4(c)(iii) of the Policy, even if the content on the parking website available at the disputed domain name is not developed by the Respondent but provided by the Internet Service Provider Go Daddy.”
The Panel finds that, in these circumstances, the Respondent is not using the domain names in connection with a bona fide offering of goods or services.
The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests, and the Respondent has failed to demonstrate such rights or legitimate interests. Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(ii) circumstances indicating that the respondent 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;
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, or
(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its website 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 the respondent's website or location or of a product or service on its website or location.
The Panel finds that the Respondent in all probability had intended to use the Complainant's mark when registering the disputed domain names. In the light of the current widespread media coverage of swineflu and the drug TAMIFLU, it is not credible to assume that the Respondent was not aware of the Complainant's registered trademark. Indeed, as the Panel held in Hoffmann-LaRoche Inc v. WhoisGuard, WIPO Case No. D2005-1288, “only someone with knowledge of the mark – considering the fact that it is an invented term – could have registered the disputed domain name”. This Panel is of the view that the Respondent registered the disputed domain names with full knowledge and for the express purpose of re-directing Internet users to an on-line pharmacy. Thus, the Respondent has intentionally attempted to attract, for commercial gain, internet users to a website in order to create a likelihood of confusion with the Complainant's well-known mark.
The evidence in this dispute, in the Panel's view, supports the conclusion that the Respondent sought to profit from, or exploit the trademark TAMIFLU of the Complainant. Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain names under paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names: and be transferred to the Complainant.
Cherise M. Valles
Sole Panelist
Dated: October 7, 2009
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