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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Hoffmann-La Roche Inc. v. US Online Pharmacies

Case No. D2006-0348

 

1. The Parties

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

Respondent is US Online Pharmacies, Fontana, California, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <buycheaptamiflu.com> is registered with Go Daddy Software, Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 20, 2006. On March 22, 2006, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On March 22, 2006, Go Daddy Software transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the administrative and technical contacts. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 Respondent of the Complaint, and the proceedings commenced on March 28, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was April 17, 2006. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 18, 2006.

The Center appointed John R. Keys, Jr. as the sole panelist in this matter on May 1, 2006. 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

Complainant Hoffmann-La Roche, Inc. (“Roche”), together with its affiliated companies, is a leading manufacturer of pharmaceutical and diagnostic products. One of Roche’s products is an antiviral pharmaceutical preparation indicated for the treatment and prevention of influenza which the company markets under the name TAMIFLU. Complainant has used the mark TAMIFLU for an antiviral pharmaceutical preparation since November, 1999 in the United States of America. Sales of Tamiflu have exceeded millions of dollars in the United States of America since 2000.

Roche’s TAMIFLU mark is protected as a trademark for a pharmaceutical antiviral preparation in a multitude of countries worldwide. For example, TAMIFLU is registered to 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. Complainant also owns the mark TAMIFLU and Design registered with the U.S.P.T.O. on June 4, 2002 under Reg. No. 2,576,662.

Recently, Complainant’s mark TAMIFLU has been extensively promoted in print advertisement in medical journals, promotional materials, packaging, medical informational materials, television advertising and direct mailings. Advertising and promotion for Roche’s product using the mark TAMIFLU continues to be extensively used and widely circulated by Complainant in the United States.

Many governments have decided to stockpile TAMIFLU against bird flu, and the product has acquired fame and celebrity, symbolizing the goodwill that Roche has created in the United States and throughout the world.

Roche’s parent company, F. Hoffmann-La Roche AG, owns and has registered the domain name <tamiflu.com>, through which Complainant’s customers obtain information as to the TAMIFLU antiviral product manufactured and sold by Roche.

Respondent created and registered the domain name <buycheaptamiflu.com> on December 10, 2004. The domain name directs to a web site on which Respondent offers Tamiflu for sale, uses the TAMIFLU trademark and logo, and features information describing Tamiflu and its use.

 

5. Parties’ Contentions

A. Complainant

Complainant contends that Respondent’s domain name, <buycheaptamiflu.com>, is identical or confusingly similar to Complainant’s TAMIFLU trademark within the meaning of the Policy, paragraph 4(a)(i).

The domain name <buycheaptamiflu.com> contains the entire TAMIFLU trademark of Complainant. In light of Complainant’s registered mark TAMIFLU and the domain name <tamiflu.com>, controlled by Complainant, Respondent’s registration and use of the domain name at issue creates a strong likelihood of confusion as to source, sponsorship, association or endorsement of the Respondent’s web site by Complainant. The addition of the words “buy” and “cheap” in Respondent’s domain name do nothing to detract from or disassociate the word TAMIFLU and Complainant.

Complainant further contends that Respondent has no rights or legitimate interests in the name <buycheaptamiflu.com>. Respondent is not using the domain name in dispute in connection with a bona fide offering of goods or services. Respondent is using the disputed domain name to divert Internet users seeking Complainant’s web site located at “www.tamiflu.com” or the TAMIFLU pharmaceutical product to an unrelated web site which uses Complainant’s famous trademark TAMIFLU without license or authorization of any kind.

Complainant further contends that Respondent’s use of the disputed domain name is purely disreputable. Respondent’s use of Complainant’s trademark is infringing and cannot be considered bona fide. On its web site located at “www.buycheaptamiflu.com”, Respondent uses Complainant’s federally registered trademark TAMIFLU and logo Design. Respondent has placed a copy of Complainant’s copyrighted “Complete Product Information” and “Desktop Flu Tracker” on its web site, both of which bear Complainant’s copyright notice, thus placing Respondent on notice of Complainant’s copyright in the TAMIFLU “Complete Product Information.” Respondent’s use of Complainant’s TAMIFLU trademark and copyrighted materials is without authorization or permission from Complainant.

Respondent, in its trade name, “Buycheaptamiflu.com Online Pharmacy,” uses Complainant’s TAMIFLU trademark and said trade name as part of Respondent’s copyright notice found on the bottom of its web site located at “www.buycheaptamiflu.com”. Respondent’s acts amount to actionable trademark and copyright infringement and clearly mislead and confuse customers as to the source or origin of the information found on its web site. Respondent’s actions would lead a consumer to believe that Respondent is the source of TAMIFLU products and related information, or that Respondent’s use of TAMIFLU in the subject domain name and web site is affiliated with or sponsored by Roche. Alternatively, such uses by Respondent leads consumers to believe that the web site located at “www.buycheaptamiflu.com” is a web site owned and/or operated by Complainant.

Respondent, by use and registration of the disputed domain name, which contains Complainant’s TAMIFLU trademark in its entirety, and by use of the same trademark as part of its trade name and copyright notice, seeks to capitalize on the reputation associated with Complainant’s TAMIFLU trademark. Furthermore, Respondent attempts to use that recognition to divert Internet users seeking Complainant’s web site located at www.tamiflu.com to a web site wholly unrelated to Roche, namely, www.buycheaptamiflu.com. The latter identified web site has no affiliation or connection whatsoever with Complainant and such uses of Complainant’s TAMIFLU mark are clear indications of bad faith on the part of Respondent.

Respondent’s appropriation and use of Complainant’s famous trademark is a clear attempt to create and benefit from consumer confusion regarding the association between Respondent’s activities and Complainant’s bona fide business. As such, it is clear that Respondent has no right or legitimate interest in the domain name.

Respondent’s unauthorized use of the disputed domain name to solicit sales of Complainant’s TAMIFLU pharmaceutical product through a web site containing the TAMIFLU mark, and use of the TAMIFLU trademark as part of its trade name and in its copyright notice is not a bona fide offering of goods and services under the Policy, paragraph 4(c)(i).

Based upon Respondent’s web site, it is clear that neither Respondent nor its web site has been commonly known by the domain name <buycheaptamiflu.com>. “Tamiflu” is not a word and has no valid use other than in connection with Complainant’s trademark. Complainant has not authorized the Respondent to use its trademark TAMIFLU or to incorporate the trademark into any domain name or trade name. Furthermore, Complainant has never granted Respondent a license to use the TAMIFLU mark. In fact, Respondent’s use of the disputed domain name indicates that the name is being used because of the goodwill created by Complainant in the TAMIFLU trademark.

Complainant contends that there is no evidence that Respondent is making a legitimate non-commercial or fair use of the disputed domain name without intent for commercial gain. Clearly, Respondent is trading on Complainant’s goodwill and is using the disputed domain name <buycheaptamiflu.com> to offer and sell Complainant’s TAMIFLU prescription drug without a license or authorization from the Complainant. Such activity does not represent a bona fide offering of goods or services or a legitimate non commercial or fair use under the Policy.

Finally, Complainant contends that Respondent registered and is using the domain name in bad faith, as evidenced by the following facts:

(a) “buycheaptamiflu.com” is not a word.

(b) Complainant’s mark TAMIFLU is an invented and coined mark that has an extremely strong worldwide reputation.

(c) There exists no relationship between Respondent and Complainant, and Complainant has not given Respondent permission to use its famous mark TAMIFLU, or to reproduce Complainant’s TAMIFLU “Complete Product Information” and “Desktop Flu Tracker” in their entirety on its web site.

(d) Respondent was aware of the TAMIFLU trademark, but refuses to relinquish ownership of the disputed domain name or cease diverting Internet users to a web site which sells the TAMIFLU drug under a trade name incorporating TAMIFLU, Complainant’s registered trademark, all to the confusion of the public and the detriment of Complainant.

(e) By operating the web site located at “www.buycheaptamiflu.com”, Respondent has intentionally attempted to attract for financial gain Internet users to Respondent’s web site by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s web site or the goods on Respondent’s web site.

(f) Respondent’s web site has no legitimate business in connection with Complainant or its TAMIFLU antiviral pharmaceutical preparation. Complainant has not granted Respondent permission or a license of any kind to use the trademark TAMIFLU. Such unauthorized use of Complainant’s TAMIFLU mark by Respondent suggests opportunistic bad faith.

B. Respondent

Respondent did not reply to Complainant’s contentions.

 

6. Discussion and Findings

Respondent did not respond to the Complaint by the appointed date of April 17, 2006, or at any time thereafter. The Panel therefore first addresses the question of whether Respondent has been given adequate notice of the proceeding. The evidence of record supports that the Center sent the Complaint by courier service to the address shown in the registration data, as required, and that it was delivered. The evidence also shows that the Center sent the Complaint in electronic form to the e-mail addresses required under paragraph 2(a)(ii) of the Rules. The Panel thus concludes that the Center discharged its responsibility under the Rules to notify Respondent of the Complaint and the administrative proceeding.

Where the respondent does not respond to the complaint, the panel must decide the dispute based upon the complaint. Rules, paragraphs 5(e) and 14(a). The panel is to decide the complaint on the basis of the statements and documents submitted, in accordance with the Policy, the Rules and any principles of law the panel deems applicable. Rules, paragraph 15(a). Under paragraph 14(b) of the Rules, Respondent’s failure to answer entitles the panel to “draw such inferences therefrom as it considers appropriate.”

Under paragraph 4(a) of the Policy, Complainant must prove each of the following three elements of its case in order to obtain the requested relief:

(i) Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) Respondent’s domain name has been registered and is being used in bad faith.

The Panel considers each element in order.

A. Identical or Confusingly Similar

The evidence submitted demonstrates that Complainant possesses well-established legal rights in the registered trademark TAMIFLU with respect to an antiviral medication for the treatment and prevention of influenza. The disputed domain name <buycheaptamiflu.com> is not identical to Complainant’s trademark, because it adds the words “buy” and “cheap” before the mark. However, the domain name is, in the judgment of the Panel, confusingly similar to Complainant’s mark.

Respondent’s domain name incorporates Complainant’s trademark entirely and with correct spelling. “The intentional registration of a domain name knowing that the second level domain is another company’s valuable trademark weighs in favor of likelihood of confusion.” Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 1059 (9^th Cir. 1999).

The addition of the words “buy” and “cheap” to the word “tamiflu” do not negate the confusing similarity between the domain name and Complainant’s trademark. “Generally, a user of a mark may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it.” 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23:50 (4th ed. 1998). See General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087. The principle that likelihood of confusion cannot be avoided by the addition of descriptive content has been found to include the addition of entire words to a famous trademark. In The Coca-Cola Company v. Gamlebyen Invest AS, WIPO Case No. D2000-1677, the Panel held that

“[i]t is common knowledge that Coca-Cola is one of the world’s most famous trademarks. Such fame and recognition applies whether the trademark is rendered with or without a dash. On the same token, it would be reasonable to assume that Coca-Cola and ‘cocacoladrinks’ are somehow connected or associated and there is an association with the Coca-Cola organisation based in the USA. The Respondent’s argument that Coca-Cola and “cocacoladrinks” are different and not confusingly similar is a difficult one to accept.”

See America Online. Inc. v. Anson Chan, WIPO Case No. D2001-0004, citing Sporty’s Farm LLC. v. Sportsman’s Market. Inc., 202 F. 3d 489, 497-98 (2d. Cir. 2000); Yahoo, Inc. v. CPIC NET and Syed Hussain, WIPO Case No. D2001-0195; America Online, Inc. v. Yeteck Communication, Inc., WIPO Case No. D2001-0055 (“aolcasino” found confusingly similar to AOL mark). Here, the word “cheap” is descriptive and the word “buy” is nondistinctive. The addition of such inconsequential material does not detract from the association between the word TAMIFLU and Complainant.

Although more relevant under the third element of the Policy, the likelihood of confusion between Respondent’s domain name and Complainant’s trademark is enhanced by the fact that Respondent is clearly using the website associated with its domain name to offer Complainant’s Tamiflu product for sale using the registered TAMIFLU mark.

For many, if not most, Internet users who are familiar with the Tamiflu name and who might be searching for information concerning that product, Respondent’s domain name suggests sponsorship by, or a strong association with, Complainant, which suggestion is false and misleading. It is also reasonable to infer that the potential confusion is intentional on the part of Respondent. Respondent is attempting to divert potential customers from Complainant’s web site to its own, in order to sell Complainant’s product. The plain intent behind the domain name is further evidence of confusing similarity.

The Panel concludes that Respondent’s domain name is confusingly similar to Complainant’s TAMIFLU trademark within the meaning of paragraph 4(a) (i) of the Policy. Complainant has established the first element of its case.

B. Rights or Legitimate Interests

Respondent has not answered the Complaint and thus has done nothing to establish that it has legitimate rights or interests in the name “tamiflu” or the disputed domain name. See Policy, paragraph 4(a)(ii). While the Panel might infer a lack of rights or legitimate interests from Respondent’s failure to come forward with a justification, there is also sufficient record evidence to establish that Respondent has none. Wal-Mart Stores, Inc. v. Henry Chan, WIPO Case No. D2004-0056.

There is, first of all, no evidence that Respondent is using the domain names in connection with a bona fide offering of goods. See Policy, paragraph 4(c)(i). In fact, there is substantial evidence that Respondent’s offering of Tamiflu for sale is not bona fide.

The unlawful use of another’s trademark cannot be considered bona fide with respect to an offering of goods. See AltaVista Company v. James A. Maggs, NAF Case No. FA0095545 (2000) (“The American Heritage Dictionary of the English Language (Third Edition, 1992) defines ‘bona fide’ as ‘made or carried out in good faith,’ ‘authentic’ or ‘genuine.’ This Arbitrator cannot find that the use by Respondent of marks identical and/or confusingly similar to valid, Federally-registered marks of another to constitute offering of services ‘in good faith’ and certainly not ‘authentic’ or ‘genuine’, especially since Respondent has no authorization from Complainant.). In the present case, Respondent is using Complainant’s registered trademark to divert customers to Respondent’s own web site, exploiting the confusion Respondent has created to attempt to sell Complainant’s product for Respondent’s gain. This is not a lawful use of Roche’s trademark and thus not a bona fide offering of goods that would establish a legitimate interest in the domain name on the part of Respondent. Lowen Corporation d/b/a Lowen Sign Co. v. Henry Chan, WIPO Case No. D2004-0430.

This conclusion is further supported by the fact that Respondent’s use of Roche’s trademark on its web site is infringing. Respondent uses Complainant’s federally registered trademark TAMIFLU and logo Design on Respondent’s web site. Respondent uses Complainant’s TAMIFLU trademark in its trade name, “Buycheaptamiflu.com Online Pharmacy”, and this trade name is then used as part of Respondent’s copyright notice found on the web site. Respondent also has placed copies of Complainant’s copyrighted “Complete Product Information” and “Desktop Flu Tracker” on its web site without Complainant’s authorization.

Respondent’s conduct arguably amounts to trademark and copyright infringement, and clearly creates the potential to mislead and confuse customers as to the source or origin of the information found on its web site. Respondent’s actions are likely to lead a consumer to believe that Respondent is the source of TAMIFLU product and related information, or that Respondent’s use of TAMIFLU in the subject domain name and web site is affiliated with or sponsored by Roche. Alternatively, Respondent’s use of Complainant’s mark and copyrighted materials would likely lead consumers to believe that Respondent’s web site is owned and/or operated by Complainant. None of this is true.

Respondent’s unauthorized use of the disputed domain name to solicit sales of Complainant’s Tamiflu pharmaceutical product through a web site containing the TAMIFLU mark, and improperly using the TAMIFLU trademark as part of its trade name and in its copyright notice cannot be regarded as a bona fide offering of goods under the Policy, paragraph 4(c)(i). See G.D. Searle & Co. v. Entertainment Hosting Services, Inc., NAF Case No. FA110783 (finding Respondent’s use of the disputed domain name to solicit pharmaceutical orders without a license or authorization from Complainant does not constitute bona fide offering of goods or services under the Policy, paragraph 4(c)(i))); Chanel, Inc. v. Cologne Zone, WIPO Case No. D2000-1809; National Collegiate Athletic Association and March Madness Athletic Association, L.L.C. v. Mark Halpern and Front & Center Entertainment, WIPO Case No. D2000-0700. As such, it is clear that Respondent is not making a bona fide offering of goods so as to create rights or legitimate interests in the domain name at issue. See the Policy, paragraph 4 (a)(ii).

There is also no evidence that Respondent was commonly known by the name “tamiflu” or by the domain name or has any authority from Complainant to use the name. Policy, paragraph 4(a)(ii). Complainant has not authorized Respondent to use its trademark TAMIFLU or to incorporate the trademark into any domain name or trade name.

Finally, the record does not suggest that Respondent is making a legitimate noncommercial or fair use of the domain name. See Policy, paragraph 4(c)(iii). On the contrary, the evidence establishes clearly that the domain name is being used to sell Complainant’s Tamiflu product for commercial gain. Respondent is trading on Complainant’s goodwill and using the disputed domain name to offer and sell Complainant’s Tamiflu prescription drug without a license or authorization from Complainant. Such activity does not represent a legitimate noncommercial or fair use under the Policy, paragraph 4(c)(iii).

The Panel concludes that Respondent has no legitimate interest in the disputed domain name and that Complainant has established the second element of its case.

C. Registered and Used in Bad Faith

Under paragraph 4(b)(iv) of the Policy, there is evidence of registration and use of a domain name in bad faith where the Respondent has “intentionally attempted to attract, for commercial gain, Internet users to [its] web site by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] web site or location or of a product or service offered on [Respondent’s] web site or location.” The evidence supports a conclusion of bad faith here.

As discussed and found above, there is confusing similarity between Complainant’s registered trademark and Respondent’s domain name, and it is clear that Respondent intentionally created that confusion. Complainant used and registered its TAMIFLU trademark some five years before Respondent registered the domain name at issue. Respondent is at least on constructive notice of Complainant’s registered mark, Microsoft Corporation v. Cupcake City, WIPO Case No. D2000-0818, but the evidence is more compelling than that. Complainant’s mark TAMIFLU is an invented mark that has a very strong worldwide recognition and reputation. There exists no relationship between Respondent and Complainant. Complainant has not given Respondent permission to use its TAMIFLU mark or to reproduce Complainant’s TAMIFLU “Complete Product Information” and “Desktop Flu Tracker” in their entirety on its web site.

Under the circumstances, the only reasonable inference is that Respondent was fully aware of Roche’s TAMIFLU trademark and intended to make use of it to attract Internet users to its own web site for commercial gain by creating a likelihood of confusion with Complainant’s mark as to the source of the Tamiflu product. See America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004. This is sufficient to establish bad faith registration of the domain name. See Sporty’s Farm, 202 F.3d at 498.

The domain name also continues to be used in bad faith. As discussed above, Respondent’s use of the “tamiflu” name in its domain name creates a strong likelihood of confusion with Roche’s TAMIFLU mark as to the source, sponsorship, affiliation, or endorsement of its web site. Registration of a domain name that is confusingly similar to a famous trademark by any entity that has no relationship to that mark is itself sufficient evidence of bad faith registration and use. Sporty’s Farm, 202 F.3d at 498; AT&T Corp. v. John Zuccarini d/b/a Music Wave and RaveClub Berlin, WIPO Case No. D2002-0440 (August 28, 2002); Veuve Clicquot Ponsardin. Maison Fondйe en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (use of a name connected with such a well-known product by someone with no connection with the product suggests opportunistic bad faith).

As for the element of commercial gain, there is a clear offer at Respondent’s site to sell Tamiflu in specified quantities at specified prices. And, finally, the record clearly supports the inference that Respondent has created and exploited the likelihood of confusion intentionally for its own commercial purposes.

Based on the evidence, Respondent has intentionally used Complainant’s TAMIFLU trademark in its domain name to divert Internet users to a web site in which it offers to sell Tamiflu for its own commercial gain. See State Fair of Texas v. Granbury.com, NAF Case No. FA0095288. Veuve Clicquot Ponsardin, Maison Fondйe en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163. The Panel thus concludes that Respondent registered and is using the disputed domain name in bad faith within the meaning of paragraphs 4(a)(iii) and 4(b)(iv) of the Policy and that Complainant, therefore, has established the third and final necessary element of its case.

 

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, <buycheaptamiflu.com>, be transferred to the Complainant.

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John R. Keys, Jr.
Sole Panelist

Dated: May 15, 2006