WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION F. Hoffmann-La Roche AG v. Direct Privacy LTD Case No. D2009-1220 1. The Parties
The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland.
The Respondent is Direct Privacy LTD, of Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain names and are registered with Intercosmos Media Group d/b/a directNIC.com. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 14, 2009. On September 14, 2009, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the disputed domain names. On September 14, 2009, Intercosmos Media Group d/b/a directNIC.com 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 disputed domain names. The Center has verified that the Complaint satisfies 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 18, 2009. In accordance with the Rules, paragraph 5(a), the due date for the Response was October 8, 2009. The Respondent did not submit any Response. Accordingly, the Center notified the parties of the Respondent's default on October 12, 2009.
The Center appointed Sebastian Hughes as the sole panelist in this matter on October 13, 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 A. The Complainant
The Complainant is a Swiss company and the owner of international registrations for the TAMIFLU word and TAMIFLU stylised word and device marks, which predate the date of registration of the disputed domain names (the “Trade Marks”).
The Complainant is also the owner of the domain name comprising the Trade Marks. B. The Respondent
The Respondent is a company incorporated in Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
The disputed domain names were registered on July 31, 2009. 5. Parties' Contentions A. Complainant
The following facts are alleged by the Complainant in the Complaint.
The Complainant together with its affiliates is one of the leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics, with global operations in more than 100 countries.
The Trade Marks designate an antiviral pharmaceutical preparation, namely a product against flu.
In the past few years and in particular in the past few months the Trade Marks have been referred to in many mass media outlets in view of the decision of various governments to stockpile the Complainant's Tamiflu product against “swine flu.” i. The disputed domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights
The disputed domain names incorporate the Trade Marks in their entirety. The addition of the descriptive term “all about” does not sufficiently distinguish the disputed domain names from the Trade Marks. The notoriety of the Trade Marks increases the likelihood of confusion. ii. The Respondent has no rights or legitimate interests in respect of the disputed domain names
The Complainant has not granted any licence, permission or authorisation to the Respondent to use the Trade Marks in the disputed domain names.
The Respondent is using the disputed domain names for commercial gain and with the purpose of capitalising on the fame of the Trade Marks.
The Respondent is using the disputed domain names to redirect Internet users to an online pharmacy.
The Respondent's only reason in registering and using the disputed domain names is to benefit from the reputation of the Trade Marks and illegitimately trade on their fame for commercial gain and profit. This is underlined by the fact that the Respondent's websites are using the same makeup, colours and presentation as the Complainant's website, including the Complainant's registered logo trade mark and the Complainant's company name. iii. The disputed domain names were registered and are being used in bad faith
The disputed domain names were registered in bad faith since at the time of registration the Respondent had knowledge of the Complainant's well-known Trade Marks.
The disputed domain names are being used in bad faith. This is obvious since the Respondent is attempting (for commercial purpose) to attract Internet users to the Respondent's websites, by creating a likelihood of confusion with the Trade Marks as to the source, affiliation and endorsement of the Respondent's websites or of the products or services posted on or linked to the Respondent's websites.
As a result, the Respondent is generating unjustified revenues and is therefore illegitimately capitalising on the fame of the Trade Marks. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Marks acquired through use and registration.
The disputed domain names comprise the word mark TAMIFLU in its entirety. UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662).
It is established that, where a mark is the distinctive part of the disputed domain names, the domain name is considered to be confusingly similar to the registered mark (DHL Operations B.V. v. DHL Packers,WIPO Case No. D2008-1694).
It is also established that the addition of descriptive terms to the disputed domain names has little, if any, effect on a determination of legal identity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does not exclude the likelihood of confusion (PRL USA Holdings, Inc. v. Spiral Matrix,WIPO Case No. D2006-0189).
The addition of the descriptive term “all about” does not serve to distinguish the disputed domain names in any way. In the present circumstances, this additional term used in the disputed domain names may be disregarded in determining the question of confusing similarity.
The Panel finds that the disputed domain names are confusingly similar to the Trade Marks.
The Panel therefore holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain names:
(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 a legitimate noncommercial 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 Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain names or to use the Trade Marks. The Complainant has prior rights in the Trade Marks which precede the Respondent's registration of the disputed domain names by approximately 10 years. The Complainant has therefore established a prima facie case that the Respondent has no rights and legitimate interests in the disputed domain names and thereby shifted the burden to the Respondent to produce evidence to rebut this presumption (Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain names or that the disputed domain names are used in connection with a bona fide offering of goods or services.
The disputed domain names are currently redirected to websites which are offering for sale the Complainant's Tamiflu product under the Trade Marks (the “Websites”). In addition to offering for sale the Complainant's products, the Websites reproduce the get-up, logos and artwork used by the Complainant on the Complainant's Tamiflu website, and use the company name of the Complainant.
The Respondent has not been authorised by the Complainant to offer for sale Tamiflu products under the Trade Marks on the Websites or otherwise.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain names.
There has been no evidence adduced to show that the Respondent is making a legitimate non-commercial or fair use of the disputed domain names.
The Panel finds that the Complainant has established a prima facie case and the Respondent has failed to produce any evidence to establish its rights or legitimate interests in the disputed domain names. The Panel therefore finds that the Complaint fulfills the second condition of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:
“By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”
The Trade Marks are well-known trade marks globally. The Respondent is using the disputed domain names to direct Internet users to the Websites, which offer for sale the Complainant's Tamiflu product, reproduce the get-up, logos and artwork from the Complainant's website, and use the company name of the Complainant.
In all the circumstances, the Panel finds that the public is likely to be confused into thinking that the disputed domain names have a connection with the Complainant, contrary to the fact. There is a strong likelihood of confusion as to source, sponsorship, affiliation or endorsement of the Websites.
The Panel therefore concludes that the Respondent's registration and use of the disputed domain names falls under paragraph 4(b)(iv).
The failure of the Respondent to respond to the Complaint further supports an inference of bad faith (Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787).
For all the foregoing reasons, the Panel concludes that the disputed domain names have been registered and are being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled. 7. Decision
For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the disputed domain names, and , be transferred to the Complainant.
Sebastian Hughes
Sole Panelist
Dated: October 20, 2009
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