WIPO Domain Name Decision D2010-0193 for swineflutamiflu.info

WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Hoffmann-La Roche Inc. v. WhoisGuard Protected/Domain Holding Ltd, Diane Sanchez Case No. D2010-0193 1. The Parties

The Complainant is Hoffmann-La Roche Inc. of New Jersey, United States of America, represented by Lathrop & Gage L.C., United States of America.

The Respondent is WhoisGuard Protected/Domain Holding Ltd, Diane Sanchez, WhoisGuard, United Kingdom of Great Britian and Northern Ireland; Domain Holding Ltd, Diane Sanchez, London, United Kingdom of Great Britian and Northern Ireland. 2. The Domain Name and Registrar

The disputed Domain Name is registered with eNom. 3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 9, 2010. On February 10, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed Domain Name. On February 10, 2010, eNom 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 the Complainant on February 12, 2010 providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on February 15, 2010. The Center verified that the Complaint together with the amended version 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 17, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 9, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 12, 2010.

The Center appointed Ada L. Redondo Aguilera as the sole panelist in this matter on March 18, 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.

The Complainant is the owner of the trademark TAMIFLU and presented as evidence the copy of the certificate. TAMIFLU is registered to the Complainant in the United States Patent and Trademark Office (“U.S.P.T.O.”) under Reg. No. 2,439,305, having a priority date of April 26, 1999, and also owns the trademark TAMIFLU and Design registered on June 4, 2002 under Reg. No. 2,576,662 under the U.S.P.T.O.

The Complainant's parent company, F. Hoffmann-La Roche AG, registered the Domain Name .

The Respondent registered the disputed Domain Name on August 26, 2009 with eNom.

Before beginning with these proceedings, in November 23, 2009, the Complainant sent a cease and decease letter to the Respondent by email and by certified air mail, in order to advice the Respondent that the registration and use of the disputed Domain Name infringed the Complainant's trademark rights and requested that the Respondent transfer the disputed Domain Name to the Complainant. The letter sent to the Respondent was returned to the sender (the Complainant) because the mailing addressed was not complete or correct – the courier was unable to deliver the letter - but by all indications the letter transmitted by email was received by the Respondent. The Respondent did not answer to the communications made by the Complainant before these proceedings. 5. Parties' Contentions A. Complainant

The Complainant argues that it is the owner of the trademark TAMIFLU and presented to these proceedings as evidence, copy of the certificate of the trademark TAMIFLU that certifies that it is registered to the Complainant in the U.S.P.T.O. under Reg. No. 2,439,305, having a priority date of April 26, 1999, and also owns the trademark TAMIFLU and Design registered on June 4, 2002 under Reg. No. 2,576,662 under the U.S.P.T.O.

According to the Complainant, the trademark TAMIFLU designates an antiviral pharmaceutical preparation, namely, a pharmaceutical product indicated for the treatment and prevention of influenza. In the past years and, in particular, in the last year, the Complainant's mark TAMIFLU has been extensively promoted, without limitation, in print advertisements, in medical journals, promotional materials, packaging, medical informational material, television advertising and direct mailings.

The Complainant argues that the disputed Domain Name is confusingly similar to the Complainant's trademark TAMIFLU, because it contains the entire word “tamiflu” with the additional words swine flu. The Complainant also argues that the descriptive terms added to the disputed Domain Name, namely “swine” and “flu” does not prevent the likelihood of confusion in this case.

The Complainant argues that the disputed Domain Name is identical or confusingly similar to Complainant's TAMIFLU trademark in accordance to the Policy, paragraph 4(a)(i).

The Complainant argues that the Respondent has no rights or legitimate interests in the name , because, “Tamiflu” is not a word and has no valid use other than in connection with Complainant's trademark. The Complainant has not authorized the Respondent to use its trademark TAMIFLU or to incorporate the trademark into any Domain Name. Furthermore, the Complainant has never granted the Respondent a license to use the TAMIFLU mark. According to the Complainant and based upon the Respondent's website; it is clear that neither the Respondent nor its website has been commonly known by the disputed Domain Name pursuant to the Policy, paragraph 4(c)(ii).

The Complainant argues that the Respondent, by the use and registration of the disputed Domain Name, which contains the Complainant's TAMIFLU trademark in its entirety, seeks to obtain a commercial benefit out of the reputation associated with the Complainant's TAMIFLU trademark and that the Respondent's use of the disputed Domain Name is purely disreputable. First, such use by the Respondent of “Tamiflu” in its Domain Name is without license or permission by the Complainant. Second, the Respondent's website published at the disputed Domain Name offers the Complainant's TAMIFLU drug, as well as other competitors' pharmaceutical products, and notably the generic version of Tamiflu, which is illegal as there is no FDA-approved generic for sale in (to) the United States of America, without any permission whatsoever from the Complainant, the trademark owner.

The Complainant argues that the disputed Domain Name is being use to promote products of the Complainant's competitors. The Respondent's use of the disputed Domain Name therefore demonstrates the Respondent's absence of a legitimate non-commercial interest in, or fair use of, the Domain Name.

The Complainant argues that the Respondent is not using the Domain Name in dispute, in connection with a bona fide offering of goods or services. The Respondent is using the disputed Domain Name to divert Internet users seeking TAMIFLU information on the web site located at “www.” controlled by the Complainant or the TAMIFLU pharmaceutical product, to an unrelated website which uses the Complainants famous trademark TAMIFLU without license or authorization of any kind, in connection with an illegal generic, as well as other pharmaceutical products of competitors.

The Complainant also argues that there is no evidence that the Respondent is making a legitimate non-commercial or fair use of the disputed Domain Name without intent for commercial gain, according to the Policy, paragraph 4(c)(iii). From the Complainant's point of view, the Respondent is trading on the Complainant's goodwill and is using the disputed Domain Name through which he offers and sells the product TAMIFLU without a license or authorization from the Complainant. Such activity does not represent a bona fide offering of goods or services under the Policy, paragraph 4(c)(i) or a legitimate non-commercial or fair use under the Policy, paragraph 4(c)(iii).

Finally, the Complainant sustains that the Respondent has no legitimate interest in the disputed Domain Name containing the Complainant''s famous mark TAMIFLU that is in no way connected with the Complainant, and is trading on the Complainant's famous mark TAMIFLU in for commercial gain, all to the detriment of the rightful trademark owner, the Complainant.

The Complainant argues that the Respondent is acting in bad faith in registering and using the disputed Domain Name as it incorporates the Complainant's TAMIFLU mark in its entirety, which is to obtain commercial benefit from the reputation of the Complainant's TAMIFLU mark by diverting Internet users seeking the Complainant's website to the Respondent's own website through which orders for the Complainant's famous TAMIFLU prescription drug, as well as an illegal generic version of TAMIFLU and other prescription drugs where the Complainant's competitors can be placed. B. Respondent

The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings 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 on the record sufficient evidence of its trademark rights in the mark TAMIFLU.

There is no doubt that the disputed Domain Name includes the trademark TAMIFLU as a part of it. Also there is no doubt for this Panel that the main part of the disputed Domain Name is the word “Tamiflu”; the other words incorporated in it, such as “swine and flu” are common, generic terms that do not add 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: “The 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 the Complainant's well known trademark.” The present case is very similar to the above mentioned, first the disputed Domain Name includes a well-known and original trademark TAMIFLU and the addition of the words “swine flu” does not give any distinctiveness to the Domain Name because those are generic terms.

This Panel finds that the Domain Name is confusingly similar to the trademark TAMIFLU, because it is the mere incorporation of the complete trademark TAMIFLU with other generic and non-distinctive words such as “swine flu” 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.

The Panel finds that the Complainant has established the first element of the Policy. B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a non-exhaustive list of the circumstances that can demonstrate the existence of rights or legitimate interests in a Domain Name, by the Respondent:

“(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 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 Respondent did not answer, so the Panel must decide based on in part the Complainant's following arguments:

According to the Complainant, the Respondent is not using the Domain Name in dispute with connection with a bona fide offering of goods or services, because the Respondent is using the disputed Domain Name to divert Internet users seeking TAMIFLU information on the web site located at “www.” controlled by the Complainant or the TAMIFLU pharmaceutical product to an unrelated website (the one published in the disputed domain name) which uses the Complainant's famous trademark TAMIFLU without license or authorization of any kind, in connection with an illegal generic, as well as other pharmaceutical products of the competitors.

Based on the uncontested Complaint and the relevant evidence, the Panel agrees with the above mentioned Complainant's argument and recognizes that it is not likely that the Respondent registered or is using the disputed domain name with connection with a bona fide offering of goods or services, specially when the website published in the disputed Domain Name is promoting and selling generic or illegal TAMIFLU medicine and other competitive products, this by any circumstances could not be consider by this Panel a “bona fide offering of goods or services”.

Finally, this Panel finds that the Respondent conduct, and the use of a Disputed Domain Name, cannot be considered a bona fide use, marketing, sale and distribution of medicinal products in its generic form, together with other competitive products. without authorization.

The Panel, agrees with the Complainant and finds that the Respondent's use and incorporation of the Complainant's famous trademark TAMIFLU in the disputed Domain Name is evidence of the Respondent's intent to trade upon the reputation of the Complainant's TAMIFLU trademark, and shares the opinion of the Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “M,”WIPO Case No. D2000-0847 the panel found that “[u]se which intentionally trades on the fame of another cannot constitute a ‘bona fide' offering of goods or services.” Also the Panel has the opinion, that there is no bona fide offering of goods or services by the Respondent, when the disputed Domain Name displays a website that contains activities such as promoting and selling the “generic” version of the original product, among other competitive pharmaceutical products, in this case, including the Complainant's trademark TAMIFLU, it is not consider by this Panel a bona fide offering of goods or services.

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. There is no evidence to the contrary. Nor is there evidence that the Respondent was commonly known by the term “tamiflu” prior to these proceedings. The word “tamiflu” is a 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.

The Panel recognizes that the record contains no evidence showing that Respondent has been commonly known by the disputed domain name.

The Panel also agrees with the Complainant's argument that the Respondent's main intention is to obtain a commercial benefit out of the prestige of the trademark TAMIFLU, because the disputed Domain Name is being used to promote products of generic origin (non authorized or illegal) and also other products of the Complainant's competitors, therefore the Respondent's use of the disputed Domain Name demonstrates the absence of a legitimate non-commercial interest in, or fair use of, the Domain Name. This Panel shares the opinion of Hoffmann-La Roche Inc. v. Online,WIPO Case No. D2007-1806, citing Pfizer Inc. v. jg a/k/a/ Josh Green WIPO Case No. D2004-0784. “Respondent is likely receiving some pecuniary benefit … in consideration of directing traffic to (sales) site(s)”, See The Bear Stearns Companies Inc. v. Darryl Pope, WIPO Case No. D2007-0593. Also, the Panel shares the opinion of the Roche Products Inc. v. Kristofer Hogg,WIPO Case No. D2008-1120 “The uncontested evidence submitted by Complainant shows that the website to which the contested domain name resolves, contains links related to the sale of pharmaceutical products, some of which compete with those of Complainant, such as DIAZEPAM. This kind of use cannot be considered as legitimate or fair. Respondent's conduct generates a risk of confusion regarding the existence of an apparent association, origin or sponsorship of Complainant, in connection to the domain name, website, or products and services of Respondent (see, mutatis mutandis, Philip Morris Incorporated v. Alex Tsypkin,WIPO Case No. D2002-0946).”

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 does 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

According to the Complaint, the Complainant argues that the Respondent's true purpose in registering and using the disputed Domain Name which incorporates the Complainant's TAMIFLU mark in its entirety is to obtain a commercial benefit and capitalize on the reputation of the Complainant's TAMIFLU mark by diverting Internet users seeking the Complainant's web site to the Respondents own web site where there is promoting and selling to consumers of TAMIFLU drug, as well as an illegal generic version of TAMIFLU and other competitive products goodwill.

The Panel finds that under the present circumstances, it is likely that the Respondent was aware of the importance and reputation of the TAMIFLU trademark at the time of the registration of the disputed Domain Name, because by operating the website located at the disputed Domain Name , the Respondent has intentionally attempted to attract for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the Respondent's web site or the goods sold on or through the Respondent's website. In the present case, the use of the disputed Domain Name by the Respondent, containing the TAMIFLU mark to promote sales of the Complainant's TAMIFLU “generic” drug as well as other competitors, demonstrates bad faith use. The Panel shares the opinion of the prior cases: Roche Products Inc. v. Kristofer Hogg, WIPO Case No. D2008-1120 “the use of the domain name to promote sales of Complainant's preparation and also to promote competing and unrelated products demonstrates bad faith use”.

As such, the Panel finds that the registration and use of the disputed Domain Name, is in bad faith and Paragraph 4(a)(iii) of the Policy has been fulfilled in this case.

The Panel finds that the Complainant has established the third element 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 the Complainant.

Ada L. Redondo Aguilera
Sole Panelist

Dated: April 1, 2010

Full & Egal Universal Law Academy