WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION F. Hoffmann-La Roche AG v. DRM Case No. D2010-0047 1. The Parties
The Complainant is F. Hoffmann-La Roche of Basel, Switzerland, represented by F. Hoffmann-La Roche AG, Switzerland.
The Respondent is DRM, St Helier, United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with In2net Network Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 12, 2010. On January 13, 2010, the Center transmitted by email to In2net Network Inc. a request for registrar verification in connection with the disputed domain name. On January 19, 2010, In2net Network 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 January 21, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was February 10, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 11, 2010.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on February 22, 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
The Complainant, F. Hoffman-La Roche AG is a company duly organized 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 trademark TAMIFLU designates an antiviral pharmaceutical preparation, namely a product against the flu. The Complainant's mark TAMIFLU is protected as trademark in a multitude of countries worldwide (Priority date for the mark TAMIFLU is May 4, 1999).
Tamiflu has been available in the United States for the treatment of influenza since at least November, 1999. With the advent of each influenza season, the Complainant's drug has become very famous. 5. Parties' Contentions A. Complainant
The complainant argues that, as the owner of the trademark TAMIFLU, the domain name is confusingly similar to the trademark because it incorporates this mark in its entirety. In addition, the descriptive term “uk” does not sufficiently distinguish the Domain Name from the Complainant's trademark. The Complainant says that Tamiflu is protected as a trademark in multitude of countries worldwide and such notoriety will increase the likelihood of confusion. Furthermore, the Complainant contends that the registration of the mark TAMIFLU is previous to the registration of the domain name.
The Complainant argues that the Respondent has no rights or legitimate interests in respect of the domain name. The Respondent uses the domain name for commercial gain and with the purpose of capitalizing on the fame of the Complainant's mark TAMIFLU because the domain name directs to a webpage offering/selling Complainant's products.
The domain name was registered and is being used in bad faith. The Respondent could not ignore the Complainant's well-known product/mark TAMIFLU at the time the Respondent registered it. Additionally, the Complainant says that the Respondent's intentions are to attract Internet users to the Respondent's website by creating a likelihood of confusion and making them believe that the websites behind the links are associated or recommended by the Complainant.
On the basis of these assertions, the Complainant requests that the Panel order the transfer of the domain name to the Complainant. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
According to Paragraph 15(a) of the Rules the Panel shall decide a complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,
2) that the Respondent has no rights or legitimate interests in respect of the domain name; and
3) that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
There are two requirements that a complainant must establish under this paragraph; that it has rights in a trade or service mark, and that the domain names are identical or confusingly similar to the marks.
The Complainant easily satisfies the first requirement of paragraph 4(a) of the Policy. The Complainant owns registered trademarks for the mark TAMIFLU. Given the Complainant's trademark registrations, which issued prior to the registration of the disputed domain name, the Complainant's rights in TAMIFLU are established and the Panel may not set aside, disallow or ignore the Complainant's rights. See WIPO Overview of WIPO Panel Views on Selected UDRP questions (noting consensus view that if a complainant owns a registered trademark it satisfies the threshold requirement of having trademark rights).
The domain name at issue incorporates the term “tamiflu” and the words “flu”, “treatment” and “uk”. The domain name is confusingly similar to the TAMIFLU trademark.
The addition of the generic words “flu” and “treatment” following the trademark does not eliminate the similarity between the Complainant's marks and the domain name. as the word “treatment” is a descriptive component of the disputed domain name without any significance. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to such trademark for purposes of the Policy despite the addition of descriptive words (See Sanofi-Aventis v. WhoisGuard Protected / Bogdan Mircea,WIPO Case No. D2007-0264; Sanofi-Aventis v. Mircea Taralunga,WIPO Case No. D2008-0460; Sanofi-Aventis v. John Adams,WIPO Case No. D2006-0688; Hoffmann-La Roche Inc. v. Eric Kaiser a/k/a eDrugNet,WIPO Case No. D2003-0721; In light of previous decisions, the Panel also considers that the mere addition of a generic term such as “flu” does not alleviate the likelihood of confusion (See F. Hoffmann-La Roche AG v. Steven Pratt,WIPO Case No. D2009-0589).
Furthermore, the addition of the term “uk” does not contribute to make a distinction from the trademark. The contested domain name contains the Complainant's trademark with the addition of the term “uk” and the addition of the top level domain. For the purpose of these proceedings the domain name must be considered confusingly similar to the Complainants trademark (See H-D Michigan, Inc. v. Metal Horse Motorcycles,WIPO Case No. D2003-0781; ; The Sage Group Plc v. Internet Commerce, Inc.,WIPO Case No. D2003-0236; Hoffmann-La Roche Inc. v. John Sanders,WIPO Case No. D2009-0157 ; Harrods Limited v. Josh Crutchley,WIPO Case No. D2008-0653; Bayerische Motoren Werke AG v. DLR,WIPO Case No. D2001-1231).
In addition, the Panel notes that the risk of confusion should be considered with even greater care since the products designated by the Complainant's mark are pharmaceuticals. Therefore, the likelihood of confusion could eventually lead to the sale of harmful or inappropriate products (See F. Hoffmann-La Roche AG v. PrivacyP/Catch4 Technologies, WIPO Case No. D2009-1721).
Therefore, the Panel finds that the Complainant has satisfied the first requirement 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 name:
(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 must establish at least a prima facie case under this heading and, if that is made out, the evidential onus shifts to the Respondent to rebut the presumption of absence of rights or legitimate interests (See Société des Produits Nestlé S.A. v. Transure Enterprise Ltd WIPO Case No. D2009-1666).
The Complainant has not licensed or otherwise authorized the Respondent to use its trademarks.
As to paragraph 4(c)(i) of the Policy, the pharmaceutical products including TAMIFLU appear to be offered or sold on the website at the domain name, but the website does not relate nor is affiliated with the Complainant. Considering the fact that TAMIFLU is well-known among consumers as the trademark of an antiviral pharmaceutical preparation, such use may easily confuse customers.
The Respondent has not submitted a Response to deny the Complainant's assertions concerning the inappropriate nature of such use of the Complainant's trademark or to explain why the disputed domain name was used for leading potential customers of the Complainant to the “www.” website when there is no obvious connection between the Respondent and the Complainant. Under the circumstances, the Panel has found that the Respondent is not in any way engaged in, or preparing for, a bona fide offering of goods or services using the disputed domain name (See F. Hoffmann-La Roche AG v. Alexandr Ulyanov, Private Person,WIPO Case No. D2009-1590).
The Complainant, has registered the mark TAMIFLU, and has not authorized, licensed, permitted or otherwise consented to the Respondent's use of the mark TAMIFLU in the disputed domain name.
Therefore, the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, if the following circumstances, in particular but without limitation, are found by the Panel to be present, it shall be evidence of the registration and use of the domain name in bad faith:
(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the holder's documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from using the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder's website or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the holder's website or location or of a product or service on the holder's website or location.
Both conditions are cumulative, as stated in many decisions adopted under the Policy.
The Panel considers that it has been established by previous decisions that the Complainant's trademarks enjoy a worldwide reputation. In previous decisions, panels have considered that in certain circumstances when a complainant's trademark is well-known respondent's bad faith could be inferred (F. Hoffmann-La Roche AG v. Steven Pratt,WIPO Case No. D2009-0589, “Bad faith can be presumed based on the fame of Complainant's marks, such that the Respondent was aware or should have been aware of Complainant's well-known marks and claims of rights thereto”).
Moreover, in recent times the Complainant's trademark has been the subject of important media coverage due to a viral disease also called the “swine flu”.
Consequently, it is reasonable to infer that the Respondent did not ignore the existence of the Complainant's trademark when it registered the domain name. These findings lead the Panel to conclude that the domain name in dispute was been registered in bad faith by the Respondent.
In order to meet the requirement of paragraph 4(a)(iii) of the Policy, it is not sufficient to prove that the domain name was registered in bad faith, it is also necessary to prove that the domain names are being used in bad faith.
The Respondent's domain name leads to a website displaying information on the swine flu and also offers users the possibility to order products online via a third website. The wording of the domain name as well as the content of the domain name is very likely to mislead Internet users which will believe that the Respondent is somehow affiliated to the Complainant and that it is legitimately authorized to sell online its products. In the Panel's opinion this clearly constitutes use in bad faith. Previous decisions confirm this opinion (See F. Hoffmann-La Roche AG v. Bulent Sedef,WIPO Case No. D2008-0636 and F. Hoffmann-La Roche AG v. Steven Pratt,WIPO Case No. D2009-0589).
The obvious inference to be drawn from using the domain name as a URL for the Respondent's online site is that the Respondent intended to attract traffic to that site. Internet users are likely to believe that a site identified by a name incorporating the TAMIFLU mark must belong to or at least be approved by the Complainant. Once on the site some of those users can be expected to buy pharmaceuticals from the Respondent from which it will derive commercial gain. Such use falls full square within paragraph 4(b)(iv) of the Policy and constitutes evidence of registration and use in bad faith.
Therefore, the Panel finds that the Complainant has satisfied the third requirement. 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 the Complainant.
Pablo A. Palazzi
Sole Panelist
Dated: March 8, 2010
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