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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

F. Hoffmann-La Roche AG v. Intermediate in Business

Case No. D2006-0620

 

1. The Parties

The Complainant is F. Hoffmann-La Roche AG, Basel, Switzerland.

The Respondent is Intermediate in Business, Panama, of Panama.

 

2. The Domain Names and Registrar

The disputed domain names <buy--tamiflu.net> and <tamiflupharmacy.net> are registered with eNom.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 18, 2006. On May 18, 2006, the Center transmitted by email to eNom a request for registrar verification in connection with the domain names at issue. On May 19, 2006, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. 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 the Respondent of the Complaint, and the proceedings commenced on May 24, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was June 13, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 14, 2006.

The Center appointed Knud Wallberg as the sole panelist in this matter on June 20, 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

The Complainant and its affiliated companies are a healthcare group operating in the field of pharmaceuticals and diagnostics. The Complainant has operations in more than 100 countries worldwide.

The Complainant is the owner of the trademark TAMIFLU which is registered in a number of countries worldwide. The mark is registered via the Madrid Protocol under No. 713 623 with a priority date of June 3, 1999.

The trademark is registered for antiviral pharmaceutical preparations.

 

5. Parties’ Contentions

A. Complainant

I. The domain names are confusingly similar to a trademark or service mark in which the Complainant has rights

The Domain Names of the Respondent are confusingly similar to the Complainant’s mark since they all incorporate this mark in its entirety.

In particular in the past year, the Complainant’s mark TAMIFLU has been referred to in the mass media since various governments have decided to stockpile the product TAMIFLU against bird flu. The trademark’s notoriety will increase the likelihood of confusion.

The Complainant’s use and registration of the mark TAMIFLU predates the Respondent’s registration of the Domain Names.

II. The Respondent has no rights or legitimate interests in respect of the domain names

The Complainant has exclusive rights for TAMIFLU and no license, permission or authorization was granted to use TAMIFLU in the Domain Names.

Furthermore it is obvious that the Respondent uses the Domain Names for commercial gain and with the purpose of capitalizing on the fame of the Complainant’s mark TAMIFLU. The Respondent’s domain names thus direct Internet users to websites which provide information about bird flu and offer to order TAMIFLU “before it’s too late”.

In particular, a link to “Anti-Virals Online Pharmacies” appears with the picture of the TAMIFLU packaging. Upon clicking, it redirects Internet users to another website of the Respondent (“www.buy-flu-vaccine.com”) which offers TAMIFLU as well as a competitive product (“Viral Agent V38”).

By using the Domain Names at issue, the Respondent intends to divert Internet users to websites featuring its own offerings, such as bird flu face masks or a book entitled “How to protect yourself & your loved ones from bird flu”. Upon ordering, Internet users are automatically redirected to other websites belonging to the Respondent, namely “www.bird--flu--masks.com” or “www.buy-flu-vaccine.com”.

The Respondent is also providing links to unrelated websites.

Respondent’s only reason in registering and using the contested Domain Names is to benefit from the reputation of the trademark TAMIFLU and illegitimately trade on its fame for commercial gain and profit.

The Complainant therefore submits that there is no reason why the Respondent should have any right or interest in such domain names.

III. The domain names were registered and are being used in bad faith.

The Domain Names were registered in bad faith since at the time of the registration on April 14, 2006, the Respondent had, no doubt, knowledge of the Complainant’s well-known product/mark TAMIFLU.

The Domain Names are also being used in bad faith. This is obvious since when viewing the websites linked to the Domain Names one realizes that Respondent is intentionally attempting (for commercial purpose) to attract Internet users to the Respondent’s websites, by creating a likelihood of confusion with the Complainant’s well-known mark as to the source, affiliation and endorsement of Respondent’s websites or of the products or services posted on or linked to Respondent’s websites.

Respondent, by using the disputed Domain Names, is intentionally misleading the consumers to other websites by presenting them as being associated with or recommended by Complainant.

Respondent is therefore illegitimately capitalizing on the TAMIFLU trademark fame.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the Complaint where no Response has been submitted.

In accordance with Paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements are satisfied:

(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 used in bad faith.

Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with Paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.

A. Identical or Confusingly Similar

All the contested domain names contain the Complainant’s distinctive and well-known trademark TAMIFLU in its entirety. Neither the addition of the descriptive word “buy” as prefix, or of the word “pharmacy” as suffix, nor the insertion of a hyphen between “buy” and TAMIFLU alters the fact that the Domain Names are confusingly similar to the Complainant’s trademark. Likewise, the inclusion of the gTLD denomination “.net” shall be disregarded for the purpose of these proceedings.

The requirements in the Policy, paragraph 4(a)(i), are therefore fulfilled

B. Rights or Legitimate Interests

The Complainant has not licensed or otherwise permitted the Respondent to use its trademark or to apply for any domain name incorporating the Complainant’s trademark.

The Complainant alleges that the Respondent has no rights or legitimate interests in the Domain Names. The Respondent has not rebutted this allegation and, based on the record of this case, it is unlikely that any such rights or interests may exist.

In this context the Panel notes that TAMIFLU is an invented word that has no specific meaning. It can therefore be ruled out that the Respondent can claim to use the disputed domain name for any generic purpose.

Even if the Respondent was allowed to sell products bearing the Complainants mark TAMIFLU, this would not give the Respondent the right to incorporate the trademark of the resold goods into this domain name. See inter alia Hoffmann-La Roche Inc. v. # 1 Viagra Propecia Xenial & more Online Pharmacy, WIPO Case No. D2003-0793. This is in particular so when the contested domain name is also used for selling competing products, as is the case here.

The requirements of the Policy, paragraph 4(a)(ii), are also considered fulfilled.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy further provides that the Complainant must prove the Respondent’s registration and use of the domain name in bad faith. Paragraph 4(b) sets out, by way of example, the kind of evidence that may be put forward.

Given the notoriety of the Complainant’s trademark, the coined nature of the word TAMIFLU, and the extensive media reference to the product since 2005, which were also present at the time of the Respondent’s registration of the disputed Domain Names, it is inconceivable to the Panel that the Respondent registered the Domain Name without prior knowledge of the Complainant and the Complainant’s mark. This is so even if the Complainants trademark has not been shown to be registered in the country of residence of the Respondent, Panama. See to this effect inter alia WIPO Case No. D2003-0668 Advanced Magazine Publishers Inc. v. Computer Dazhong.

As described above it is clear that the disputed Domain Names, the corresponding websites of which all appear to have the same content, are used to not only promote Complainant’s goods but also to promote competing products (pharmaceuticals) as well as related products such as flu masks and books. This is done either on the website itself or by links to other websites. It is therefore evident to the Panel that the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark. See inter alia Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784 and LґOrйal, Biotherm, Lancфme et Beautй & Cie v. Unasi, Inc., WIPO Case No. D2005-0623.

Therefore, the Panel finds that the Domain Names have been registered and are being used in bad faith.

Considering all the facts and evidence, the Panel therefore finds that the requirements of the Policy, paragraph 4(a)(iii), are also fulfilled in this 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 names <buy--tamiflu.net> and <tamiflupharmacy.net> be transferred to the Complainant.

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Knud Wallberg
Sole Panelist

Dated: June 30, 2006