The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally.
The Respondent is Mavaron LLC of Surprise, Arizona, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 30, 2013. On January 30, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 6, 2013, the Registrar 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 February 7, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 27, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 28, 2013.
The Center appointed Yong Li as the sole panelist in this matter on March 6, 2013. 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 together with its affiliated companies is one of the world’s leading research-focused healthcare groups in the field of pharmaceuticals and diagnostics and having global operations in more than 100 countries. The Complainant’s trademark TAMIFLU is protected as trademark in a multitude of countries worldwide. The International Registration No. 713623 and No. 727329 are examples of the trademark registrations obtained by the Complainant. The priority date for the trademark TAMIFLU is May 4, 1999.
The disputed domain name was registered by the Respondent on January 10, 2013. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademarks. The disputed domain name is a purposeful misspelling of the Complainant’s trademark TAMIFLU: the domain name is purposefully misspelled by substituting the letter “m” with the letter “n”.
The Complainant further contends that the Complainant has exclusive rights for TAMIFLU and no license/permission/authorization consent was granted to the Respondent to use TAMIFLU in the disputed domain name. The complainant also contends that the Respondent uses the disputed domain name for commercial gain and with the purpose of capitalizing on the fame of the Complainant’s trademark TAMIFLU.
The Complainant further contends that the disputed domain name was registered in bad faith since at the time of the registration the Respondent had no doubt knowledge of the Complainant’s well-known product/trademark TAMIFLU. The Complainant further contends that the disputed domain name is being used in bad faith as 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’s well-known trademark as to the source, affiliation and endorsement of Respondent’s website or of the products or services posted on or linked to Respondent’s website.
The Complainant requests the panel to issue a decision that the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In accordance with the Policy, the Complainant asking for transfer of the disputed domain name must prove the following three elements, according to paragraph 4(a) of the Policy: 1) Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; 2) Respondent has no rights or legitimate interests in the domain name; and 3) Respondent has registered the domain name and is using it in bad faith. A. Identical or Confusingly Similar
The Complainant is the owner of the International Registration No. 713623 and No. 727329 for the word TAMIFLU, with the priority date of May 4, 1999. The Panel considers that the disputed domain name is a purposeful misspelling of the Complainant’s trademark TAMIFLU. This Panel considers that, from the point of view of the general users of Internet, “taniflu” is very similar with “tamiflu” in its appearance and pronunciation. The only difference between the Respondent’s disputed domain name and the Complainant’s trademark is that the disputed domain name is purposefully misspelled by substituting the letter “m” with the letter “n”. This conduct, commonly referred to as "typosquatting", creates a virtually identical and/or confusingly similarity to the Complainant’s trademark under paragraph 4(a)(i) of the Policy (See Wachovia Corporation v. Peter Carrington,WIPO Case No. D2002-0775).
Also it is well-established that the addition of the gTLD suffix “.com” to a disputed domain name does not avoid confusing similarity (See F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451; and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
Consequently, the Panel finds that the disputed domain name is confusingly similar to the trademarks in which the Complainant has rights. B. Rights or Legitimate Interests
According to Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production of evidence shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name.
In the present case, the Complainant has demonstrated that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. The Panel finds that the Complainant has established a prima facie case in this regard, inter alia due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the TAMIFLU trademark or any misspellings thereof.
The Respondent has not provided evidence of circumstances of the type specified in the paragraph 4(c) of the Policy to prove that the Respondent has rights or legitimate interests in respect of the disputed domain name. Furthermore, the Respondent has not provided evidence of any other circumstances giving rise to a right or legitimate interest in the disputed domain name. The Complainant’s evidence shows that the Respondent’s website is a search engine with advertising links to websites promoting products and services of third parties, especially in the pharmaceutical field which is Complainant’s business. The diversion of internet traffic by Respondent to other unrelated websites does not represent a use of the disputed domain name in connection with a bona fide offering of goods and services (See Sigikid H. Scharrer & Koch GmbH & Co. KG, MyBear Marketing-und Vertriebs GmbH, Mr. Thomas Dufner v. Bestinfo,WIPO Case No. D2004-0990).
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
The Panel notes that the Complainant’s trademark is an invented term and the priority date of the trademark is May 4, 1999, while the disputed domain name was registered on January 10, 2013, long after the registration of the Complainant’s trademark. In addition, the Complainant is a famous company in the field of pharmaceuticals and diagnostics and has global operations worldwide. It is very unlikely that the Respondent would have registered a domain name misspelling the Complainant’s trademark without knowledge of the Complainant’s widely-known trademark/product, especially considering the fact that the Respondent’s website contains links to websites promoting products of third parties in the pharmaceutical field which is Complainant’s business. Based on the foregoing circumstances, the Panel finds that the Respondent registered the disputed domain name in bad faith (See Hoffmann-La Roche Inc. v. WhoisGuard,WIPO Case No. D2005-1288, “with the widespread fame of the TAMIFLU mark it is simply not credible to believe that Respondent registered the disputed domain name without knowledge of Complainant’s mark. Only someone with knowledge of the mark – considering the fact that the mark is an invented term – could have registered the disputed domain name. Thus Respondent registered the disputed domain name in bad faith”).
The Complainant has also provided evidence to prove that the Respondent is using the disputed domain name to direct Internet users to a website containing advertising links that direct users to websites that offers various goods and services from third parties, especially in the pharmaceutical field which is Complainant’s business. Based on the evidence in the record of this case, the Panel believes that the Respondent is using the disputed domain name to advertising links to websites which offer products and services of third parties for earning click-through commissions. This is a common example of use in bad faith (See L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc,WIPO Case No. D2005-0623, “such exploitation of the reputation of trademarks to obtain click-through commissions from the diversion of internet user is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous decisions”).
In addition, “misspelling alone is sufficient to prove bad faith under paragraph 4(b)(iv) of the Policy because Respondent has used these names intentionally to attract, for commercial gain, Internet users to his website by making a likelihood of confusion with the Complainant’s mark." (See AltaVista Co. v. Yomtobian,WIPO Case No. D2000-0937).
Accordingly, having regard to the circumstances of this case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Yong Li
Sole Panelist
Date: March 20, 2013
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