WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Hoffmann-La Roche Inc., Genentech, Inc. v. BlueHost.Com - Inc./Carolyn Mardis Case No. D2009-1706 1. The Parties
Complainant is Hoffmann-La Roche Inc. of Nutley, New Jersey, United States of America, together with its affiliate Genentech, Inc. of South San Francisco, California, United States of America, both represented by Lathrop & Gage L.C., United States of America.
Respondent is Carolyn Mardis of Columbia, Maryland, United States of America. 2. The Domain Names and Registrar
The disputed domain name is registered with FastDomain, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 12, 2009. On December 14, 2009, the Center transmitted by email to FastDomain, Inc. a request for registrar verification in connection with the disputed domain name. On December 14, 2009, FastDomain, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on December 17, 2009 providing the registrant and contact information disclosed by the Registrar. The Center's December 17 email communication invited Complainant to submit an amendment to the Complaint, updating the named Respondent.
Accordingly, Complainant filed an amendment to the Complaint on December 18, 2010, updating the named Respondent. 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 Respondent of the Complaint, and the proceedings commenced on December 23, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was February 7, 2010. Respondent did not submit any Response. Accordingly, the Center notified Respondent's default on February 8, 2010.
The Center appointed Lorelei Ritchie as the sole panelist in this matter on February 17, 2010. 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
Complainant is Hoffman-La Roche, together with its affiliate Genentech Inc. (together, “Complainant”). Complainant is one of the leading research and development companies of pharmaceutical and diagnostic products in the world. Complainant sells an antiviral drug under the mark TAMIFLU. Complainant advertises its TAMIFLU product extensively throughout the world in many types of media, including television, medical journals, and direct mailings. Due to the extensive and pervasive types of influenza that have spread through the world over the past few years, Complainant has seen sales of its TAMIFLU drug in excess of hundreds of millions of dollars in the United States, where Respondent is based, and in the billions of dollars worldwide. The TAMIFLU mark has become quite famous, garnering unsolicited media attention year round from publications around the world.
Complainant has obtained several trademark registrations for TAMIFLU, including in the United States, where Respondent is based (2439305, issued 2001; and 2576662, issued 2002).
Complainant, via its parent company, F. Hoffman-La Roche AG, owns the registration for the domain name . Complainant uses this domain name to connect to a website through which it informs potential customers about its TAMIFLU mark and its antiviral, pharmaceutical product.
Respondent registered the domain name on April 28, 2009. Respondent has no affiliation with Complainant. Respondent has linked the disputed domain name to websites that describe or advertise goods or services that are unaffiliated with Complainant or Complainant's services. These include competing products, as well as potentially counterfeit versions of products offered under the TAMIFLU mark. Complainant has not authorized these links, nor the use of its trademarks therewith. 5. Parties' Contentions A. Complainant
Complainant contends that (i) is identical or confusingly similar to Complainant's trademarks; (ii) Respondent has no rights or legitimate interests in the disputed domain name; and (iii) Respondent registered and is using the disputed domain name in bad faith. B. Respondent
Respondent did not reply to Complainant's contentions in this proceeding. 6. Discussion and Findings A. Identical or Confusingly Similar
This Panel must first determine whether is identical or confusingly similar to a trademark or service mark in which the Complainant has rights in accordance with paragraph (4)(a)(i) of the Policy. The Panel finds that it is. The disputed domain name directly incorporates Complainant's famous, registered trademark TAMIFLU, and merely adds the descriptive word “info”.
The Panel finds that the added word “info” would be perceived by web users as descriptive of a website where they could find “information” about Complainant's mark and product, Tamiflu.
Numerous UDRP panels have agreed that supplementing or modifying a trademark with generic or descriptive words does not make a domain name any less “identical or confusingly similar” for purposes of satisfying this first prong of paragraph (4)(a)(i) of the Policy. See, for example, DaimlerChrysler A.G. v. Donald Drummonds,WIPO Case No. D2001-0160; and Microsoft Corporation v. Step Web,WIPO Case No. D2000-1500.
This Panel therefore finds that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph (4)(a)(i) of the Policy. B. Rights or Legitimate Interests
The Policy provides some guidance to respondents on how to demonstrate rights or legitimate interests in the domain names at issue in a UDRP dispute. For example, paragraph (4)(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that Respondent has been “commonly known by the domain name”; or (iii) “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”.
Respondent did not reply to the Complaint, however, and no evidence has been presented to this Panel that might support a claim of Respondent's rights or legitimate interests in the domain name. Rather, as mentioned in Section 4 of this Panel's decision, Respondent has used the disputed domain name to divert Internet users to websites that are unaffiliated with Complainant or Complainant's services. As Complainant points out, “tamiflu” is a coined term (at least as to the “–tami” prefix). Therefore, this Panel finds that Complainant has provided sufficient evidence of Respondent's lack of “rights or legitimate interests” in accordance with paragraph (4)(a)(ii) of the Policy. C. Registered and Used in Bad Faith
There are several ways that a complainant can demonstrate that domain names were registered and used in bad faith. For example, paragraph (4)(b)(iv) of the Policy states that bad faith can be shown where “by using the domain name [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent's] web site or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [respondent's] website or location or of a product or service on [the] web site or location”. As noted in Section 4 of this Panel's decision, Respondent has linked the disputed domain name to websites that describe or advertise goods or services that are unaffiliated with Complainant or Complainant's services. In so doing, Respondent is trading on the goodwill of Complainant's trademarks to attract Internet users, presumably for Respondent's own commercial gain. This evidences bad faith by Respondent.
In particular, Respondent has linked the disputed domain name to websites that describe or advertise goods or services that are unaffiliated with Complainant or Complainant's services. These include competing products, as well as potentially counterfeit versions of products offered under the TAMIFLU mark. Complainant has not authorized these links, nor the use of its trademarks therewith.
Therefore, this Panel finds that Respondent registered and used the disputed domain name in bad faith in accordance with paragraph (4)(a)(iii) of the Policy. 7. Decision
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.
Lorelei Ritchie
Sole Panelist
Dated: February 23, 2010
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