WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Hoffmann-La Roche Inc. v. Kathryn Jones Case No. D2010-0783 1. The Parties
The Complainant is Hoffmann-La Roche Inc. of California, United States of America, represented by Lathrop & Gage LLP, United States of America.
The Respondent is Kathryn Jones of California, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Melbourne IT Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 17, 2010. On May 18, 2010, the Center transmitted by email to Melbourne IT Ltd. a request for registrar verification in connection with the disputed domain name. On May 20, 2010, Melbourne IT Ltd. 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 May 20, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 9, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 10, 2010.
The Center appointed Adam Taylor as the sole panelist in this matter on July 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 is part of a well-known international pharmaceutical group. The Complainant's products include Tamiflu, an antiviral preparation.
The Complainant has used the mark TAMIFLU in the United States since November 1992.
For many years, the Complainant has extensively promoted the mark TAMIFLU including in print advertisements, medical journals, promotional materials, packaging, medical informational materials, television advertising and direct mailings. Sales of the Complainant's product in the United States have exceeded hundreds of millions of dollars.
The Complainant's product garnered extensive worldwide publicity when many governments decided to stockpile it against bird flu in 2006/2007.
The Complainant owns a number of trade marks for TAMIFLU including United States registered trade mark no. 2,439,305 filed April 26, 1999, in international class 5.
The disputed domain name was registered on December 13, 2009.
As of April 15, 2010, there was a pornography website at the disputed domain name. 5. Parties' Contentions A. Complainant Identical or Confusingly Similar
The Complainant's product has acquired fame and celebrity, symbolizing the goodwill that the Complainant has created in its mark TAMIFLU in the United States.
The Complainant's parent company owns the domain name , which is used for a website to provide information about the Complainant's product.
Numerous UDRP panel decisions have established that the addition of words, letters or numbers to a mark used in a domain name does not alter the fact that the domain name is confusingly similar to the mark. The words added here, namely, “lasix” and “propecia” do not prevent the likelihood of confusion in this case. Panels have consistently found that the inclusion of the trade marks of other parties in the domain name does not detract from this concept of confusing similarity.
Thus the disputed domain name is identical or confusingly similar to the Complainant's TAMIFLU trade mark. Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in the disputed domain name. “Tamiflu” is not a word and has no valid use other than in connection with the Complainant's trade mark.
The Complainant has not authorized the Respondent to use its trade mark TAMIFLU or to incorporate the trade mark into any domain name or trade name or as a part of a copyright notice. The Complainant has never granted Respondent a license to use the TAMIFLU mark.
The disputed domain name was selected and is being used because of the goodwill created by the Complainant in the TAMIFLU trade mark. 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.
The Respondent's appropriation and use of the Complainant's famous trade mark is a clear attempt to create and benefit from consumer confusion regarding the Respondent's activities and the Complainant's bona fide business. As such, it is clear that the Respondent has no rights or legitimate interests in the disputed domain name.
The hard-core pornographic content on the site is the epitome of a lack of legitimate business interest on the part of the Respondent.
The Respondent's acts amount to trade mark infringement, dilution and clearly mislead and confuse customers as to the source or origin of the information found on or through its website. This would lead a consumer to believe that Respondent is the source of the Complainant's product and related information or that the connected pornographic web site is affiliated with or sponsored by the Complainant.
The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. The Respondent is using the disputed domain name to divert Internet users seeking the Complainant or its product to an unrelated pornographic website which uses the Complainant's famous trade mark TAMIFLU without license or authorization of any kind.
There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain. Clearly, the Respondent is trading on the Complainant's goodwill, and is using the disputed domain name to offer adult services to customers seeking the Complainant's product, without a license or authorization from the Complainant. Registered and Used in Bad Faith
The Respondent's true purpose in registering the disputed domain name which incorporates the Complainant's mark TAMIFLU in its entirety is to capitalize on the reputation of the Complainant's TAMIFLU mark by diverting Internet users seeking the Complainant or its product to the Respondent's hardcore pornographic website.
The Complainant's mark TAMIFLU is an invented and coined mark that has an extremely strong reputation in the United States.
There exists no relationship between the Respondent and the Complainant, and the Complainant has not given the Respondent permission to use its famous mark TAMIFLU in a domain name or to use it in any manner on the Respondent's website.
The only reasonable conclusion is that the Respondent was aware of the TAMIFLU trade mark and used it to divert users to a hardcore pornographic website, all to the confusion of the public and the detriment of the Complainant.
The Respondent has intentionally attempted to attract for financial gain Internet users to 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 website or the goods sold on or through the Respondent's website.
Whatever the motivation of Respondent, the diversion of consumers to a website containing pornographic content is in the Complainant's view certainly consistent with the finding that the disputed domain name was registered and is being used in bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has established rights in the marks TAMIFLU by virtue of its registered trade mark as well as its extensive trading activities under that name.
The disputed domain name differs from the trade mark by adding the names of two other pharmaceutical products, which are in fact trade marks of third parties: LASIX and PROPECIA.
UDRP panels have consistently found that the respondent's inclusion of the third party's trade mark in its domain name does not eliminate the visual impression that the disputed domain name is associated with the complainant's trade mark. See to this effect, inter alia, Pfizer, Inc. v. Martin Marketing,WIPO Case No. D2002-0793, Hoffmann-La Roche Inc. v. #1 Viagra Propecia Xenical & More Online Pharmacy,WIPO Case No. D2003-0793, F. Hoffmann-La Roche AG v. Softech Ltd., DNS Administrator (gold),WIPO Case No. D2007-1699 and. F. Hoffmann-La Roche AG v. P Martin,WIPO Case No. D2009-0323.
The Complainant has therefore established the first element of the Policy. B. Rights or Legitimate Interests
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 thereby created. See, e.g., Atlas Copco Aktiebolag v. Accurate Air Engineering, Inc.,WIPO Case No. D2003-0070.
The Complainant has not licensed or otherwise authorized the Respondent to use its trade mark.
As to paragraph 4(c)(i) of the Policy, a number of panels have held that use of a domain name for pornographic content unrelated to the domain name itself does not constitute a bona fide offering of goods or services. See, eg, InnoTown AS v. Mr. Jason Forest, WIPO Case No. D2003-0718 and the cases cited therein.
There is no evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply.
The Panel finds that the Complainant has established a prima facie case of lack of rights and legitimate interests and there is no rebuttal by the Respondent.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of the Policy. C. Registered and Used in Bad Faith
Given that the disputed domain name includes the Complainant's trade mark, which is a distinctive and coined term, it is obvious that that the Respondent registered the disputed domain name with the Complainant's trade mark in mind (as well as the two third party trade marks).
The Respondent has not come forward to deny the Complainant's assertions of bad faith. It is difficult to conceive of any good faith reason why the Respondent would wish to register the disputed domain name and the Respondent has offered no explanation.
On the contrary, the disputed domain name has been used for a hard-core pornographic website.
The Panel considers it reasonable to infer that the Respondent's purpose, inter alia, was to achieve commercial gain by creating a likelihood of confusion with the Complainant's trade mark or to damage the Complainant's reputation or disrupt its business.
The Panel concludes from all of the foregoing circumstances that the Respondent has registered and used the disputed domain name in bad faith.
The Panel therefore finds that the Complainant has established the third element of the Policy. 7. Decision
The Complainant seeks transfer of the disputed domain name but has not produced evidence of consent from the owners of the two third party trade marks included in the disputed domain name. A number of UDRP Panels have stated that in such cases it would be preferable for complainants to provide third party consent but nonetheless ordered transfer to the complainant, observing that neither the Policy nor Rules expressly require such consent. See, eg, Hoffmann-La Roche Inc. v. #1 Viagra Propecia Xenical & More Online Pharmacy,WIPO Case No. D2003-0793 and F. Hoffmann-La Roche AG v. P Martin,WIPO Case No. D2009-0323.
The Panel agrees with this approach. While it would have been better if the Complainant had produced the third party consent, nonetheless the Panel proposes to order transfer on the basis that it will be for the Complainant to rectify the position vis a vis the other trade mark owners to the extent necessary.
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.
Adam Taylor
Sole Panelist
Dated: August 5, 2010
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