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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Hoffmann-La Roche Inc. v. Dmitri Zoubkov

Case No. D2006-0732

 

1. The Parties

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

The Respondent is Dmitri Zoubkov, Moscow, Russian Federation.

 

2. The Domain Name and Registrar

The disputed domain name <tamiflu-buy-online.com> is registered with Go Daddy Software.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 9, 2006. On June 12, 2006, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On June 14, 2006, Go Daddy Software transmitted by email to the Center its verification response, informed the Center of the right identity of the registrant and provided the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on June 26, 2006. The Center verified that the Complaint together with the amendment to 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 June 28, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was July 18, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 19, 2006.

The Center appointed Jens Schovsbo as the sole panelist in this matter on August 7, 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, together with its affiliated companies, (“Roche”) is a leading manufacturer of pharmaceutical and diagnostic products. The TAMIFLU mark of Roche 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 under Reg. No. 2,439,305, having a priority date of April 26, 1999. Complainant also owns the mark TAMIFLU and Design registered on June 4, 2002 under Reg. No. 2,576,662 and the mark ROCHE in a Hexagon Device registered on October 25, 1977 under Reg. No. 1,075,819.

Roche’s parent company 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.

The mark TAMIFLU designates an antiviral pharmaceutical preparation, namely, a pharmaceutical product indicated for the treatment and prevention of influenza. The mark TAMIFLU has been extensively promoted, without limitation, in print advertisement in medical journals, promotional materials, packaging, medical informational materials, television advertising and direct mailings.

The Respondent was at the time of the filing of the Complaint using the domain name for a web site containing “Tamiflu information”. On the site Internet users could order the Tamiflu drug online. The site also contained links leading to other drugs.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Respondent’s registration and use of the domain name <tamiflu-buy-online.com> is in violation of paragraph 4, of the Policy, i.e. that:

(i) the domain name is identical or confusingly similar to the trademarks registered by the Complainant; 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.

The arguments of the Complainant can be summarized in the following way:

(i) The Respondent’s domain name incorporates the whole of Complainant’s mark and adds the words “buy” and “online.” The addition of the words “buy” and “online” in Respondent’s domain name does nothing to detract from or disassociate the word TAMIFLU and the Complainant. Thus, Respondent’s domain name is identical or confusingly similar to Complainant’s TAMIFLU trademark.

(ii) Respondent has no rights or legitimate interests in the name “tamiflu-buy-online.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. Respondent, by its 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 seeks to capitalize on the reputation associated with Complainant’s TAMIFLU trademark. The 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 the Complainant’s famous trademark TAMIFLU and its mark ROCHE in a Hexagon Device without license or authorization of any kind.

(iii) Respondent’s true purpose in registering the disputed domain name which incorporates Complainant’s TAMIFLU mark in its entirety is to capitalize on the reputation of Complainant’s TAMIFLU mark by diverting Internet users seeking Complainant’s web site to Respondent’s own web site which solicits orders for Complainant’s TAMIFLU prescription drug.

B. Respondent

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

 

6. Discussion and Findings

It follows from Paragraph 5(e) of the Rules that if a Respondent does not submit a response, then in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint. The Panel does not find the present case to involve “exceptional circumstances”. The case will thus be decided based upon the complaint and in accordance with the Policy and Rules and any rules and principles of law that the Panel deems applicable, cf. Paragraph 15(a) of the Rules.

A. Identical or Confusingly Similar

The disputed domain name <tamiflu-buy-online.com> is not identical to the Complainant’s trade mark TAMIFLU.

In order to ascertain whether or not the contested domain name <tamiflu-buy-online.com> is confusingly similar to the TAMIFLU-trademark one must compare the two. The “.com” part of the domain name is to be disregarded in the comparison.

The domain name contains the Complainant’s trade mark TAMIFLU in full and only differs from the trademark by the addition of the two generic words “buy” and “online”. The TAMIFLU-part of the domain name is the dominant part of the domain name and serves to identify the function of the web site for which the name is being used. On this basis the Panel finds the domain name to be confusingly similar to the protected trademark.

The first criterion of paragraph 4 of the Policy is thus satisfied.

B. Rights or Legitimate Interests

The Respondent is using the domain name for commercial purposes. He has not been authorized by the Complainant to use the TAMIFLU-trade mark and is in no way affiliated with the Complainant.

Paragraph 5, litra c, of the Policy contains the following rule concerning the Legitimate Interest criterion:

“When you receive a complaint, you should refer to Paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):

(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 …”

It follows from this that also an unauthorized, commercial use of domain name can fall within the Legitimate Interest defence provided, however, that the use is being made “in connection with a bona fide offering of goods or services”. This position is fully in line with the reasoning of trade mark law. It is a well settled principle in trade mark law that a trade mark holder cannot use his/her trade mark right to prevent the reselling of a product bearing the trade mark which has been put on the market by the trade mark holder or with his/her consent. In order for this principle to have any effect it must be possible for the buyer of a product bearing a trade mark to inform the public that he/she holds such products. To do so it is normally necessary for the buyer to use the trade mark to identify the products. If the trade mark holder could prevent any such use of the trade mark on the Internet the trade mark holder would in effect be given a monopoly in the on-line sale of goods bearing his marks. It is not the purpose neither of the Policy nor of trade mark law to provide the trade mark holders with such unreasonably strong rights. At the same time, however, it clearly follows from the Policy that a trade mark holder need not accept all types of use of its trade mark in relation to the selling of its products via a domain name. The limits are set by the bona fide-requirement.

In the view of the Panel the Respondent’s registration and use of the domain name <tamiflu-buy-online.com> cannot be considered as a bona fide use. The Respondent is not using the web site to sell only the Tamiflu-drug but also competing drugs. Furthermore, the Respondent is not taking steps to prevent confusion. On the contrary the Respondent is using the TAMIFLU and ROCHE brands on a web site which strongly resembles the web site of the Complainant (at “www.tamiflu.com”).

On this basis the Panel finds that the Complainant has satisfied the second point of the Policy.

B. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of a Domain Name in “bad faith”:

(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or

(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

The Respondent was undoubtedly aware of the Complainant’s trade mark TAMIFLU when registering the domain name and is using the domain name for a non-bona fide offering of the Tamiflu drug. The Panel finds that this amounts to bad faith as the Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.

On this basis the Panel finds that the Complainant has satisfied the third and last point 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 <tamiflu-buy-online.com> be transferred to Complainant.

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Jens Schovsbo
Sole Panelist

Date: September 13, 2006