WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION F. Hoffmann-La Roche AG v. Anoymous anonymous Case No. D2009-1599 1. The Parties
1.1 The Complainant is F. Hoffmann-La Roche AG of Switzerland, (the “Complainant”) internally represented.
The Respondent is Anonymous anonymous of Afghanistan (the “Respondent”). 2. The Domain Names and Registrar
2.1 The disputed domain names: , , , and (the “Disputed Domain Names”) are registered with eNom, Inc. (“the Registrar”). 3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 26, 2009. On November 26, 2009, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the disputed domain names. On November 30 2009, eNom, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
3.2 The Registrar by the same email confirmed that the disputed Domain Names would remain locked pending the outcome of these proceedings and that the registration agreement is in English. 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”).
3.3 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 December 1, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was December 21, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 22, 2009.
3.4 The Center appointed Ike Ehiribe as the sole panelist in this matter on December 28, 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 paragraph 7 of the Rules. 4. Factual Background
4.1 The Complainant, F. Hoffman-La Roche AG is a company duly organised under the laws of Switzerland, and together with its affiliated companies is one of the world's leading research focused healthcare groups in the fields of pharmaceuticals and diagnostics and having global operations in more than one hundred countries. The Complainant is the owner and holder of the trademark TAMIFLU which is registered in a multitude of countries worldwide, as evidenced by International Registration Certificate Nos: 713623 and 727329 with a priority date of May, 04 1999.
4.2 The trademark TAMIFLU designates an antiviral pharmaceutical preparation, namely a product against flu.
4.3 The Respondent according to the WhoIs database registered the disputed Domain Names on November 21, 2009 with the Registrar known as eNom, Inc. 5. Parties' Contentions A. Complainant
5.1 The Complainant contends that the disputed Domain Names are confusingly similar to the Complainant's trademark since all five disputed Domain Names incorporate the trademark TAMIFLU in the Domain Names. The Complainant asserts that the addition of the letter “x”, a hypen, and figures 1-5 do not sufficiently distinguish the disputed Domain Names from the Complainant's trademark.
5.2 The Complainant asserts that since the Complainant's trademark, TAMIFLU has been referred to repeatedly in the mass media since the outbreak of swine flu disease; the trademark's notoriety will increase the likelihood of confusion.
5.3 The Complainant states that having registered the TAMIFLU trademark with a priority date of May 1999, the trademark registration predates the Respondent's registration of the disputed Domain Names in November 2009 and therefore the disputed Domain Names are confusingly similar to the Complainant's pre-existing trademark.
5.4 The Complainant further contends that as the Complainant holds exclusive rights for the trademark, TAMIFLU, the Respondent has never been granted any licence, permission, consent or authority to use the trademark in any or all of the disputed Domain Names.
5.5 The Complainant points out that it is obvious; the Respondent is using the disputed Domain Names for illegitimate commercial gain and with the purpose of capitalizing on the fame of the Complainant's trademark TAMIFLU. Reference is made to the fact that the disputed Domain Names direct to webpages offering and or selling the Complainant's products under an online pharmacy and drives online consumers and internet visitors to pornographic sites
5.6 With reference to registration and use in bad faith, the Complainant submits that the Respondent registered the disputed Domain Names in bad faith since the Respondent no doubt had knowledge of the Complainant's well-known product and trademark TAMIFLU at the time of registration on November 21. 2009.
5.7 The Complainant also asserts that the disputed Domain Names are also being used in bad faith as the Respondent is intentionally attracting Internet users to their websites by creating a likelihood of confusion with the Complainant's well known trademark, as the source, affiliation and endorsement of the Respondent's websites or of products posted on or linked to the Respondents websites.
5.8 The Complainant requests a decision that the disputed Domain Names be transferred to the Complainant. B. Respondent
5.9 The Respondent did not reply to the Complainant's contentions and is in default. Therefore, in accordance with paragraphs 14 (a) and (b) of the Rules, the Panel shall draw inferences as it considers appropriate from the Respondent's default. 6. Discussion and Findings
6.1 Under paragraph 4 (a) of the Policy, to succeed in this administrative proceedings the Complainant must prove: (i) that the Domain Names are identical or confusingly similar to the trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in the Domain Names; and (iii) that the Domain Name have been registered and are being used in bad faith.
6.2 As expressly stated in the Policy, the Complainant must establish the existence of each of these three elements in the proceedings. A. Identical or Confusingly Similar
6.3 The Panel finds on the facts as submitted by the Complainant and unchallenged by the Respondent that the disputed Domain Names: , , and are confusingly similar to the well-known international trademark TAMIFLU owned exclusively by the Complainant. On a comparison of the trademark with each and every disputed Domain Name, herein, it is abundantly evident, that each disputed Domain Name incorporates the Complainant's trademark entirely. The Panel accepts just as the Complainant contends, that the addition of the letter “X”, a hyphen, a figure and the suffix “info” does not sufficiently distinguish any of the disputed Domain Names from the Complainant's trademark.
6.4 The Panel in this regard relies on the decision of F. Hoffmann- La Roche AG v. PrivacyP Domain Admin and Mark Sergijenko,WIPO Case No. D2007-1854 where it was held in relation to cases involving the infringement of Pharmaceutical products, that the addition of other descriptive or non descriptive words to a Complainant's trademark by a user of a trademark does not enable that user to avoid the likely confusion arising from appropriating entirely a Complainant's trademark .
6.5 Accordingly, the Panel finds that the Complainant has established that the disputed Domain Names are confusingly similar to the Complainant's trademark in accordance with paragraph 4(a)(i) of the UDRP Policy. B. Rights or Legitimate Interests
6.6 The Panel finds as a fact that the Respondent has failed to provide any evidence or circumstances required to establish that it has rights or legitimate interest in the disputed Domain Names within the ambit of paragraph 4 (c) of the Policy. The Complainant submits that the Respondent has not obtained any licence, consent, permission or authority to use the trademark TAMIFLU or in any of the disputed Domain Names. The Complainant asserts that the Respondent is obviously using the disputed Domain Names for illegitimate commercial gain as the disputed Domain Names directs to web pages offering and or selling pharmaceutical products of the Complainant under an online pharmacy. Secondly, the disputed Domain Names at least at one point, seem to have driven Internet visitors to pornographic sites.
6.7 The Panel finds that these weighty assertions supported by explicit documentary evidence, have not been controverted by the Respondent. The Panel accordingly draws adverse inferences from the Respondent's failure or inability to do so. The Panel also draws support from two cases cited by the Complainant in this regard. The first case is the decision in Hoffmann – La Roche Inc. v. Viagra Propecia Xenical & More Online Pharmacy,WIPO Case No. D2003-0793 where the sale of pharmaceutical products on a website associated with a disputed Domain Name was held to be evidence that the Respondent, in that case, was not making a legitimate non-commercial or fair use of the disputed Domain Name. The second case is the decision in Hoffmann- La Roche Inc. v. Mihey,WIPO Case No. D2007-1395, where the use of a domain name based on a Complainant's trademark to divert internet traffic to other pornographic websites has been found to be evidence of a lack of a legitimate interest in the disputed Domain Name.
6.8 The Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed Domain Names in accordance with Paragraph 4 (a) (ii) of the Policy. C. Registered and Used in Bad Faith
6.9 On the question of bad faith registration and use, the Panel finds that the Respondent registered the entire number of disputed Domain Names in bad faith. The Panel has taken into account a number of factors to arrive at this conclusion. First is that the Respondent knew or ought to have known that the Complainant has held and owned exclusive rights in the trademark, TAMIFLU since 1999, before registering the disputed Domain Names in November 2009; the trademark being a well-known international trademark designating an anti viral pharmaceutical preparation which in recent times has attracted mass media coverage since the outbreak of the swine flu disease. Secondly, the refusal of the Respondent to transfer the disputed Domain Names to the Complainant after becoming aware of the existence of these proceedings. Thirdly, the fact that the disputed Domain Names direct to web pages offering for sale the Complainant's pharmaceutical products among others and finally, the fact that the disputed domain names drive internet visitors and online consumers to pornographic sites.
6.10 As has been previously emphasised by other Panelists in other cases, it is abundantly clear that the Respondent in this case not only had the Complainant's trademark in mind or knew of the worldwide popularity of the trademark, but also the confusion that would follow in the minds of internet users and online consumers to divert them to the Respondent's websites for illegitimate commercial gain. See in this regard, the decision in F.Hoffmann-La Roche AG v. WhoisGuard,WIPO Case No. D2005-1288 and Pfizer Inc. v. jg aka Josh Green,WIPO Case No. D2004-0784 cited by the Complainant which also is authority for the contention that where the Respondent maybe using or intended to use the disputed Domain Names as a forwarding address to a for-profit online pharmacy, bad faith is established.
6.11 The Panel therefore finds that the Complainant has also established the finding of bad faith use and registration within the ambit of paragraph 4(b)(iv) of the Policy. 7. Decision
7.1 For these reasons, in accordance with paragraphs 4 (i) of the Policy and 15 of the Rules, the Panel orders that the disputed Domain Names: , , , and > be transferred to the Complainant forthwith.
Ike Ehiribe
Sole Panelist
Dated: January 11, 2010
Full & Egal Universal Law Academy