WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION F. Hoffmann-La Roche AG v. Aleksandr Kalinin Case No. D2009-1214 1. The Parties
Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally.
Respondent is Aleksandr Kalinin of Moskow, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 11, 2009. On September 14, 2009, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On September 14, 2009, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. Complainant filed an amendment to the Complaint on September 23, 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 Respondent of the Complaint, and the proceedings commenced on September 28, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was October 18, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on October 27, 2009.
The Center appointed José Pio Tamassia Santos as the sole panelist in this matter on October 29, 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
4.1 Complainant is the parent company of one of the world's largest pharmaceutical companies, being located in Basel, Switzerland.
4.2 Complainant is together with its affiliated companies a worldwide leading research-focused healthcare group in the fields of pharmaceuticals and diagnostics and having global operations in more than 100 countries.
4.3 Complainant's mark TAMIFLU is protected as a trademark in many countries worldwide. The mark TAMIFLU designates an antiviral pharmaceutical preparation, namely a product against influenza, or flu.
4.4 As of reference evidence, Complainant has submitted copies of the International Registration certificates Nos. 713623 and 727329, indicating that the priority date for the mark TAMIFLU is May 4, 1999.
4.5 The mark TAMIFLU is an invented term that has no meaning outside its trademark context.
4.6 According to Hoffmann-La Roche Inc. v. Tamiflu Shop, WIPO Case No. D2006-0308, Complainant is owner of the domain name , registered on June 28, 1999.
4.7 Respondent registered the disputed domain name at eNom registrar on September 8, 2009.
4.8 Respondent did not file a Response in these proceedings and was notified of its default by the Center. 5. Parties' Contentions A. Complainant
5.1 Complainant states that it has exclusive rights in the trademark TAMIFLU, granted by its registration in many countries worldwide.
5.2 Complainant contends that the disputed domain name is confusingly similar to the TAMIFLU trademark, that is, the disputed domain name incorporates this trademark in its entirety, adding only the prefix “online-” and the gTLD “.net”.
5.3 Complainant contends that Respondent has no rights or legitimate interests in respect of the disputed domain name, adding that no license, permission or authorization consent was granted by Respondent to use TAMIFLU into any domain name.
5.4 Complainant contends that Respondent has not used the disputed domain name in good faith offering of goods and services; instead, Respondent has used Complainant's mark incorporated into the disputed domain name to attract Internet users and forward them to a website that sells the pharmaceutical product.
5.5 Complainant contends that Respondent is not making a legitimate, noncommercial or fair use of the disputed domain name.
5.6 Complainant contends that Respondent registered and is using the disputed domain name in bad faith. Complainant contends that Respondent seeks to capitalize on the reputation of Complainant's mark – which is an invented term that has no meaning outside the trademark context – by offering Complainant's medicine for sale.
5.7 Complainant requests that the disputed domain name should be transferred to Complainant. B. Respondent
Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
6.1 The Policy, as affected by the Rules and the Supplemental Rules, provides specified remedies to trademark owners against registrants of domain names where the owner of the mark (Complainant) proves each of the following elements:
(a) The domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(b) The registrant (Respondent) has no rights or legitimate interests in respect of the domain name; and
(c) The domain name has been registered and is being used in bad faith.
6.2 Complainant has the burden of proof, by a preponderance of the evidence, respecting each element in Paragraph 6.1.
6.3 Respondent, having failed to respond in these proceedings, is in default, and in accordance with paragraph 14(b) of the Rules, “the panel shall draw such inferences […] as it considers appropriate”. A. Identical or Confusingly Similar
(Paragraph 4(a)(i) of the Policy)
6.4 Complainant has exclusive rights in the mark TAMIFLU and has provided evidence of this fact.
6.5 Complainant's mark is an invented term and has received worldwide recognition. The disputed domain name incorporates the entirety of the mark adding only the prefix term “online-” and the gTLD suffix “.net”. These additions do nothing to distinguish the disputed domain name from Complainant's well known trademark. This Panel accepts the decisions in Hoffmann-La Roche Inc. v. Tamiflu Shop, supra and EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047 cases, which establish that incorporation of the entirety of a mark in which complainant has rights amounts to confusing similarity between the mark and the disputed domain name. B. Lack of Rights or Legitimate Interests
(Paragraph 4(a)(ii) of the Policy)
6.6 According to paragraph 4(c) of the Policy, the burden of demonstrating a respondent's lack of rights or legitimate interests rests with a complainant.
6.7 In this case, Complainant has offered meaningful explanations and has provided enough evidence of its exclusive rights and legitimate interests concerning the mark TAMIFLU, therefore Respondent should bring forward evidence of its rights or legitimate interests, if such evidence exists.
6.8 However, Respondent has failed to counter reasoning Complainant's arguments and to provide any evidence of its rights or legitimate interests in the disputed domain name, as demonstrated by the notification of Respondent's default in these proceedings.
6.9 Such failure by Respondent contributes to admitting the truth of Complainant's version, according to Hoffmann-La Roche Inc. v. Tamiflu Shop, supra and cases mentioned therein.
6.10 Complainant states that Respondent has no license, authorization or granted permission to use the TAMIFLU mark, and there is no evidence to the contrary. Considering that Complainant's mark is an invented term that has achieved worldwide fame, it is highly unlikely that Respondent chose the disputed domain name just by chance. This position is reinforced by the fact that Complainant's mark registration and its domain name registration pre-date Respondent's registration of the disputed domain name.
6.11 Respondent's use of the disputed domain name is neither fair use nor noncommercial use. Rather Respondent's use of the disputed domain name is for sales offering of Complainant's antiviral medicine TAMIFLU without prescription through Respondent's website.
6.12 Claim for good faith usually cannot be made when a respondent uses a disputed domain name confusingly similar to an invented mark in which a complainant has rights and uses that disputed domain name to offer Internet users the very same product identified by the mark. To do otherwise would allow respondents to trade off the goodwill of trademark owners with impunity. This Panel is aware of the decisions and reasoning in Hoffmann-La Roche Inc. v. Tamiflu Shop, supra and Pfizer Inc. v. jg a/k/a Josh Green,WIPO Case No. D2004-0784, and cases cited therein, and the reasoning in those cases is equally applicable to the facts of this case. C. Registered and Used in Bad Faith
(Paragraph 4(a)(iii) of the Policy)
6.13 Paragraph 4(b) of the Policy indicates several, non-exclusive methods for showing bad faith registration and use of a disputed domain name. This Panel considers the discussions and findings of Hoffmann-La Roche Inc. v. Tamiflu Shop, supra fully applicable to this case:
“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 – considering the fact that the mark is an invented term – could have registered the disputed domain name. This suggests that Respondent registered the disputed domain name in bad faith.”
6.14 Evidence of Respondent's bad faith use of the disputed domain name can be found from an examination of the website contents to which the disputed domain name resolves. Respondent has placed Complainant's TAMIFLU mark and logo on the website. Thus, Respondent is misleading Internet users by suggesting relationship with Complainant that actually does not exist.
6.15 Regarding the use of the disputed domain name, paragraph 4(b)(iv) of the Policy is instructive. This Panel believes that the disputed domain name was intentionally registered and used to attract customers for commercial gain to a website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation or endorsement of a website or a product on that website. Thus, this Panel finds that the disputed domain name was also used in bad faith. 7. Decision
7.1 For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, be transferred to Complainant.
José Pio Tamassia Santos
Sole Panelist
Dated: November 12, 2009
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