WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION F. Hoffmann-La Roche AG v. Direct Privacy ID 9CCC6 Case No. D2010-0139 1. The Parties
The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented by an internal representative.
The Respondent is Direct Privacy ID 9CCC6 of George Town, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed Domain Name is 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 February 1, 2010. On February 1, 2010, 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 Name. On February 2, 2010 Intercosmos Media Group d/b/a directNIC.com. transmitted to the Center by email, 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 February 5, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was February 25, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 26, 2010.
The Center appointed Ada L. Redondo Aguilera as the sole panelist in this matter on March 8, 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 is one of the world's leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics, having global operations in more than one hundred countries.
The Complainant is the owner of the trademark TAMIFLU, an international trademark that has been registered world wide and the Complainant proves its trademarks rights in this mark with the International Registration Numbers 713623 & 727329 issued by the World Intellectual Property Organization, with the priority date of May 1999.
The Complainant is the owner of the domain name .
The trademark TAMIFLU designates an antiviral pharmaceutical preparation, namely a product against flu.
The Respondent registered the disputed Domain Name on January 15, 2010. 5. Parties' Contentions A. Complainant
The Complainant argues that the Domain Name is confusingly similar to a trademark or service mark to which the Complainant has rights.
According to the Complaint, the Complainant proves its trademarks rights in the mark TAMIFLU with the International Registration Numbers 713623 & 727329, issued by the World Intellectual Property Organization.
The Complainant has presence on the Internet and is also the owner of the domain name .
The Complainant contends that the trademark TAMIFLU is a well-known trademark that designates an antiviral pharmaceutical preparation, namely a product against flu.
Also the Complainant argues that the disputed Domain Name is confusingly similar to the Complainant's mark seeing that it incorporates the TAMIFLU trademark in its entirety. According to the Complainant, the mere addition of the descriptive term
“-online-store” (including the hyphens) does not sufficiently distinguish the Domain Name from the trademark.
The disputed Domain Name was registered on January 15, 2010, according to the WhoIs database provided by the Registrar. The Complainant mentioned in its Complaint, that in the past years and in particular in the past months the Complainant's mark TAMIFLU had been referred to in the media in view that various governments had decided to stockpile the product Tamiflu against bird flu.
The Complainant proves their exclusive intellectual property rights in the trademark TAMIFLU and argues that it has never given any authorization, license, permission or any other kind of grant of the use of the trademark TAMIFLU to the Respondent in order to register or use it as a part of a Domain Name.
Furthermore, the Complainant argues that it is obvious that the Respondent uses the disputed Domain Name for commercial gain and with the purpose of capitalizing on the notoriety of the Complainant's mark TAMIFLU.
The Complainant also argues that the Respondent's only reason in registering and using the disputed Domain Name is to benefit from the reputation of the trademark TAMIFLU and illegitimately trades on its fame for commercial gain and profit. This is underlined by the fact that the Respondent's website is using the same makeup, colors and presentation as the Complainant's site and even includes the Complainant's duly registered trademark logo and the Complainant's company name.
The Complainant concludes that there is no reason why the Respondent should have any rights or interest in the main part of the Domain Name, “tamiflu”.
The Complainant argues that the disputed Domain Name was registered in bad faith since at the time of the registration on January 15, 2010; the Respondent had without a doubt, knowledge of the Complainant's well-known product/mark TAMIFLU.
Also, the Complainant argues that the disputed Domain Name is also being used in bad faith. According to the Complainant this is obvious since when viewing the Respondent's website at the disputed Domain Name, one realizes that the Respondent is intentionally attempting (for commercial purpose) to attract Internet users to the Respondent's website, by creating a likelihood of confusion with the Complainant' well-known mark as to the source, affiliation and endorsement of the Respondent's website or of the products or services posted on, or linked to the Respondent's website.
The Complainant sustains that the Respondent is intentionally misleading consumers and confusing them so as to attract them to other websites, making them believe that the websites behind those links are associated or recommended by the Complainant. As a result, the Respondent may generate unjustified revenues and therefore is illegitimately capitalizing on the TAMIFLU trademark fame. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
As a preliminary matter though the Respondent has not submitted a response, the essential elements, arguments and evidence of the claim will be reviewed by this Panel to confirm that they have been met. In accordance with the Rules, paragraph 15(a), the Panel must decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any principles of law the Panel deems applicable”.
In this case, the facts and evidence presented by the Complainant are undisputed and accepted as true.
In order to prevail, the Complainant must prove the following (Policy, paragraph 4 (a)):
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being use in bad faith. A. Identical or Confusingly Similar
The Panel must find whether the disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
First, the Complainant provided to these proceedings enough evidence of its trademark rights in the mark TAMIFLU.
There is no doubt that the disputed Domain Name incorporates the trademark TAMIFLU as a part of it. Also there is no doubt for this Panel that main part of the Domain Name is the word “Tamiflu”; the other words incorporated in it, such as “-” are common, generic terms that does not give any distinctiveness to the disputed Domain Name.
The trademark TAMIFLU has been involved in other UDRP cases, this Panel notes the decision made in the Hoffmann-La Roche Inc. v. Tamiflu Shop, WIPO Case No. D2006-0308, regarding the incorporation of the trademark with the addition of a generic or descriptive term: “Complainant's mark is an invented term and has received worldwide recognition. The disputed domain name incorporates the entirety of the mark adding only “-cure” and the gTLD suffix “.com”. These additions do nothing to distinguish the disputed domain name from Complainant's well known trademark. “ Also as mentioned in Hoffmann-La Roche AG v. Alexandr Ulyanov, Private Person WIPO Case No. D2009-1590: “The disputed domain name includes the Complainant's trademark in its entirety, together with the generic word “market”. The addition of the word “market” does not dispel the confusing similarity between the domain name and the trademark. Rather, it simply strengthens the association by having people think that it relates to the website on which the pharmaceutical products including TAMIFLU are being offered or sold. The disputed is therefore confusingly similar to the Complainant's trademark. It is well-established the suffixes are disregarded for the purpose of this comparison.” This case is very similar to the above-mentioned case. The use of the words “online” and “store” really could deceive or mislead consumers, who believe that when entering the site at the disputed Domain Name they are entering a secured site, authorized or an official site of the Complainant, when in reality it is an unauthorized site.
Based on prior decisions and by its own judgment, this Panel finds that the Domain Name is confusingly similar the trademark TAMIFLU, because it is the mere incorporation of the complete trademark TAMIFLU with other generic and non-distinctive words such as “-online-store” that does not give any distinctiveness to the Domain Name. Therefore, the Complainant has met the requirement under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides the circumstances that can demonstrate the existence of rights or legitimate interests in a 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.”
In this case the Complainant must prove that the Respondent has no rights or legitimate interest in the disputed Domain Name. Once a complainant makes a prima facie case that the respondent has no rights or legitimate interests, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. In this case, the Complainant has established this prima facie case and we face the fact that the Respondent did not answer, did not present any evidence in which the Panel could rely, to confirm the existence of rights or legitimate interests by the Respondent.
First the Complainant has proven its trademark rights in the mark TAMIFLU and second the Complainant asserts that it has not licensed or otherwise authorized the Respondent to use the Complainant's TAMIFLU mark. There is no evidence to the contrary. Nor is there evidence that the Respondent was commonly known by the term “tamiflu-online-store” prior to these proceedings. The word “tamiflu” is a very original one and there is no evidence that the Respondent (as individual or as a company) is commonly known as such name or with the disputed Domain Name.
According to the Complainant, the Respondent's registration and use of the disputed Domain Name could not be taken as fair use or noncommercial use.
The Panel also agrees with the Complainant's argument that the Respondent's only reason in registering and using the disputed Domain Name is to benefit from the reputation of the trademark TAMIFLU and illegitimately trade on its fame for commercial gain and profit. The Panel confirms the fact that the Respondent's website is using the same makeup, colors and presentation as that of the Complainant's site and even includes the Complainant's duly registered trademark logo and the Complainant's company name.
The Respondent has not submitted a Response to deny the Complainant's arguments concerning the registration of a domain name that includes the Complainant's trademark or to explain why the disputed Domain Name was used for leading potential customers of pharmaceutical products to the “www.” website when there is no connection between them.
Under these 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, and that paragraphs 4(c)(ii) or (iii) of the Policy do not apply to the disputed Domain Name and therefore the Respondent does not have rights or legitimate interests in the disputed Domain Name.
The Panel finds that the Complainant has established the second element of the Policy. C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii) of the Policy the following circumstances, in particular but without limitation, if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith:
(i) Circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) You have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) You have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the domain name, you have intentionally attempted to attract for commercial gain, Internet users to your 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 your website or location or of a product or service on your web site or location.
The Complainant contends that the disputed Domain Name was registered in bad faith since at the time of the registration on January 15 2010, the Respondent had knowledge of the Complainant's well-known product/mark TAMIFLU.
The Complainant also asserts that the disputed Domain Name is being used in bad faith due to the fact that the Respondent's only reason in registering and using the contested Domain Name is to benefit from the reputation of the trademark TAMIFLU and illegitimately trade on its fame for commercial gain and profit and by the fact that the Respondent's website is using the same makeup, colors and presentation as that of the Complainant's site and even includes the Complainant's duly registered logo and the Complainant's company name.
The Panel visited the website at the disputed Domain Name, and found on it the trademark TAMIFLU and design (logo), the same colors and a very similar kind of website to that of the official website “www.” of the Complainant. At the foot page of the website the Panel found the following statement: “THIS SITE IS INTENDED FOR U.S. AUDIENCES ONLY.Copyright © 2006-2009 Roche Laboratories Inc. All rights reserved.” This Panel considers that such use of the trademark, logo, company name, on the webpage at the disputed Domain Name, without any authorization or association with the Complainant is in bad faith and can confuse or mislead consumers to a website that appears to be original when in fact is a non-authorized website. See Hoffman-La Roche Inc. v. Tamiflu Shop, WIPO Case No. D2006-0308, “Evidence of Respondent's bad faith use of the disputed domain name may be had from an examination of the website to which the disputed domain name resolves. Respondent has placed Complainant's mark and federally registered logo on the website. Thus, Respondent is falsely suggesting relationship with Complainant that does not, in fact, exist.” See also Hoffman-La Roche Inc. v. Aleksandr Kalinin,WIPO Case No. D2009-1214; “the Panel finds that the registration and use of the disputed domain name has been in bad faith”.
In the present case, the Panel has confirmed that the above mentioned conduct has been reproduced, the Respondent has registered a domain name which includes the Complainant's trademark, the use of the trademark (nominative trademark and logo or design) is present on the website at the disputed Domain Name and finally there is a false suggestion that there is a relationship with the Complainant that does not exist, creating the risk of confusion and misleading consumers to a non-official website resulting in a possible gain or profit for the Respondent.
The Respondent did not deny the Complainant's contentions or made any statement or provided any evidence in these proceedings.
Regarding the registration and use of the disputed Domain Name, Paragraph 4(b)(iv) of the Policy has been fulfilled in this case. This Panel is convinced that the disputed Domain Name was intentionally registered and used to attract consumers for commercial gain to a website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of a website or a product on that website.
In conclusion this Panel finds that the disputed Domain Name was registered and used in bad faith 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.
Ada L. Redondo Aguilera
Sole Panelist
Dated: March 18, 2010
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