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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Hoffmann-La Roche Inc. v. Onlinetamiflu.com

Case No. D2007-1806

1. The Parties

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

Respondent is Onlinetamiflu.com, Scottsdale, Arizona, United States of America.

2. The Domain Name and Registrar

The disputed domain name <onlinetamiflu.com> is registered with eNom, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 5, 2007. On December 6, 2007, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the domain name at issue. On December 7, 2007, eNom, Inc. transmitted by email to the Center its verification response confirming that 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”), 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 December 19, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was January 8, 2008. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 10, 2008.

The Center appointed Jeffrey D. Steinhardt as the sole panelist in this matter on February 5, 2008. 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, together with its affiliated companies, is one of the world’s leading manufacturers of pharmaceutical and diagnostic products.

Complainant’s TAMIFLU trademark is protected for an antiviral pharmaceutical preparation in the United States of America and elsewhere. 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’s parent company, F. Hoffmann-La Roche AG, registered the domain name <tamiflu.com> on June 28, 1999.

The disputed domain name was created on September 29, 2005.

5. Parties’ Contentions

A. Complainant

Complainant avers that Complainant’s TAMIFLU trademark and its antiviral preparation have been extensively promoted in the United States of America and worldwide, resulting in considerable fame and goodwill. Complainant also avers that the pharmaceutical preparation has generated billions of dollars in sales since its introduction into the market in 2000.

Identical or Confusingly Similar to Complainant’s Trademark

Complainant avers that the disputed domain name <onlinetamiflu.com> contains Complainant’s entire TAMIFLU trademark. In light of Complainant’s registered trademark, Complainant contends that Respondent’s registration and use of the disputed domain name creates a strong likelihood of confusion as to source, sponsorship, association or endorsement of Respondent’s website by Complainant.

Complainant continues that the added descriptive term “online” does not prevent the likelihood of confusion created by the disputed domain name, citing the authority of Thomas McCarthy, 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23:50 (4th ed. 1998), and the WIPO Panel decision in General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087.

Therefore, Complainant argues, the disputed domain name is identical or confusingly similar to the trademark of Complainant.

No Rights or Legitimate Interests in Domain Name

Complainant alleges that Respondent has registered and used the domain name without legitimate right, license or authorization. Complainant alleges that neither Respondent nor its website has been commonly known by the domain name <onlinetamiflu.com> pursuant to the Policy, paragraph 4(c)(ii). Complainant further alleges that the use of the disputed domain name is not in connection with a bona fide offering of goods or services because Complainant has not authorized Respondent to use the name.

In support of these conclusions Complainant contends:

1. That “Tamiflu” is not a word and has no valid use other than in connection with Complainant’s trademark and that Complainant did not authorize Respondent to use its TAMIFLU trademark or to incorporate the trademark into any domain names.

2. That Respondent is using the domain name because of its similarity to Complainant’s trademark.

3. That, based upon Respondent’s website, neither Respondent nor its websites have been commonly known by the disputed domain name.

4. That Respondent’s use of the domain name is “purely disreputable”. Complainant avers that Respondent uses Complainant’s trademark for a web site that directs purchasers to multiple sites through which they may purchase the Complainant’s Tamiflu drug. Complainant contends that one such site, “www.canadamedicineshop.com”, lists Complainant’s TAMIFLU trademark and registered logo on its web site without any permission from Complainant.

5. That Respondent’s use and incorporation of Complainant’s famous trademark in the disputed domain name is evidence of Respondent’s bad faith and its intent to trade upon the reputation and goodwill of Complainant’s trademark and that Respondent’s appropriation and use of Complainant’s famous trademark is a clear attempt to create and benefit from consumer confusion.

6. That because Respondent is infringing Complainant’s U.S. trademark, Respondent’s use of the domain name cannot be bona fide.

Citing the Policy, paragraph 4(c)(iii), Complainant also avers 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.

Registration and Use of Domain Name in Bad Faith

Relying on most of the points recited above, Complainant contends that Respondent knew of the TAMIFLU trademark and registered and is using the disputed domain name in bad faith. Complainant argues that Respondent’s “true purpose” in registering the disputed domain name was 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 though [sic] which orders for Complainant’s famous TAMIFLU® prescription drug can be placed.”

Complainant avers that on June 12, 2007, its counsel sent a letter via email and U.S. Certified Mail, Return Receipt Requested to Respondent at Respondent’s addresses listed in eNom’s Whois records. The letter, to which no responses allegedly were received, advised Respondent that Complainant considered Respondent’s use of Complainant’s trademark to be infringing and requested transfer of the domain name to Complainant.

Complainant seeks from the Panel transfer of the disputed domain name.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Notification of Proceedings to Respondent

The Policy is intended to resolve disputes concerning allegations of abusive domain name registration in an efficient manner. Fundamental due process requirements must nonetheless be met. The requirement that a respondent have notice of proceedings that may substantially affect its rights is such a fundamental requirement. The Policy and the Rules establish procedures to assure that respondents receive adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a) of the Rules).

The eNom Whois contact information lists Respondent’s identity under the same names as the disputed domain name itself, with the first name as “online” and the second name as “tamiflu.” Other Whois records on the Internet list the registrant as “onlinetamiflu.com.” All sources available to the Panel list the registrant’s and its administrative and technical contact address as “43 South Rio Ave, Scottsdale AZ 70018.”

Respondent has apparently not responded to any correspondence concerning this dispute. Counsel for Complainant avers that certified mail to the Whois postal address was returned as undeliverable. 70018 is invalid as a zip code within the US Postal System according to the lookup tool provided by the US Postal Service website (http://zip4.usps.com/zip4/citytown_zip.jsp). Moreover, the street address listed for Respondent is also not found in the Postal Service records, according to the lookup tool at “http://zip4.usps.com/zip4/welcome.jsp”.

The Center sent notification of the Complaint to Respondent via courier and email to the addresses listed in the WhoIs record, although the Center corrected the zip code to one that is valid for Scottsdale, Arizona.¹ The courier package sent by the Center to Respondent was returned as undeliverable and the emails also returned failed delivery or fatal error notices.

Based on the methods employed to provide Respondent with notice of the Complaint, Respondent’s obligations under the eNom, Inc. Registration Agreement to maintain accurate and current contact information (http://www.enomcentral.com/terms/agreement.asp) the Panel is satisfied that the Center took all steps reasonably necessary to notify Respondent of the filing of the Complaint and initiation of these proceedings. The Panel finds that the Center has exercised care and has fulfilled its responsibility under paragraph 2 of the Rules to employ all reasonably available means to serve actual notice of the Complaint upon Respondent and that the failure of Respondent to furnish a response to the Complaint is not due to any omission by the Center.

B. Substance of the Complaint and Applicable Standards

The Rules require the Panel to decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, paragraph 15(a). Complainant must establish each element of paragraph 4(a) of the Policy, namely:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

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

(iii) the disputed domain name has been registered and is being used in bad faith.

Complainant must establish these elements even if the respondent does not reply. The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064. In the absence of a response, the Panel may also accept as true the factual allegations in the Complaint. E.g., ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).

C. Identical or Confusingly Similar

The Panel agrees with Complainant that Respondent’s domain name <onlinetamiflu.com> is confusingly similar to Complainant’s trademarks.

Panels disregard the “.com” suffix in evaluating confusing similarity. E.g., VAT Holding AG v. VAT.com, WIPO Case No. D2000-0607; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-13l5.

The Panel concludes that the addition of the descriptive term “online” does not negate the confusing similarity created by Respondent’s complete inclusion of the TAMIFLU trademark in the disputed domain name. E.g., Giata Gesellschaft fьr die Entwicklung und Vermarktung interaktiver Tourismusanwendungen mbH v. Keyword Marketing, Inc., WIPO Case No. D2006-1137; Hoffmann-La Roche Inc. v. Aneko Bohner, WIPO Case No. D2006-0629.

The Panel finds that the disputed domain name is confusingly similar to the registered TAMIFLU trademarks of Complainant and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.²

D. Rights or Legitimate Interests

The Panel also concludes that Respondent has no rights or legitimate interests in the domain name.

The Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes: (1) using the domain name in connection with a bona fide offering of goods and services; (2) being commonly known by the domain name; or (3) making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers. Policy, paragraphs 4(c)(i)-(iii).

A complainant must show a prima facie case proving the negative that a respondent lacks rights or legitimate interests. E.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. The absence of rights or legitimate interests is established if a complainant makes out a prima facie case and the respondent enters no response. Id., (citing De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002 -0005).

Complainant avers that Respondent was not commonly known by the disputed domain name, and that Respondent had no license or authorization from Complainant to use the trademarks or to sell the Complainant’s Tamiflu product. In the absence of a response, the Panel accepts Complainant’s undisputed factual averments as true.

The Panel also accepts as true Complainant’s statement that links on Respondent’s website direct traffic to online pharmacies that provide Complainant’s Tamiflu product.

The Panel infers that Respondent receives revenues when it diverts traffic through link advertisements on Respondent’s website. E.g., The Bear Stearns Companies Inc. v. Darryl Pope, WIPO Case No. D2007-0593 (“[t]he Panel is free to infer that Respondent is likely receiving some pecuniary benefit . . . in consideration of directing traffic to that site” (citing COMSAT Corporation v. Ronald Isaacs, WIPO Case No. D2004-1082)). See Fat Face Holdings Ltd v. Belize Domain WHOIS Service Lt, WIPO Case No. D2007-0626; Sanofi-aventis v. Montanya Ltd, WIPO Case No. D2006-1079.

Screens from Respondent’s website presently accessible to the Panel online show that the disputed domain name is being used to promote products of Complainant’s competitors, and links to online pharmacies. The Panel therefore finds that Respondent’s use of the disputed domain name demonstrates Respondent’s lack of a legitimate non-commercial interest in, or fair use of, the domain name. E.g., Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784. ³

The Panel also finds there is no bona fide offering of goods or services by Respondent.

Respondent’s commercial activities undertaken through use of the disputed domain name are neither fair use nor bona fide under the Policy. See, e.g. America Online, Inc. v. Xianfeng Fu, WIPO Case No. D2000-1374, cited in Hoffmann-La Roche Inc. v. Aneko Bohner, supra.

Since Respondent’s website promotes products of Complainant’s competitors, this case is distinguishable from instances in which a respondent uses the disputed domain name to make bona fide offers solely respecting products that a complainant itself placed on the market.⁴

Filing no response, Respondent has not invoked any of the circumstances of paragraph 4(c) of the Policy to support the existence of its “rights or legitimate interests” in use of the domain name.

Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied.

E. Registered and Used in Bad Faith

The Panel finds that the third element of paragraph 4(a) of the Policy, bad faith registration and bad faith use, is also established.

Using a domain name to intentionally attract Internet users, for commercial gain, by creating a likelihood of confusion, may be evidence of bad faith registration and use. Policy, paragraph 4(b)(iv). See, e.g., LґOrйal, Biotherm, Lancфme Parfums et Beautй & Cie v. Unasi, Inc, WIPO Case No.D2005-0623. Panels may draw inferences about bad faith registration or use in light of the circumstances, such as whether there is no response to the complaint, concealment of identity, and a lack of conceivable good faith uses for the domain name. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

Questions exist in the present case about Respondent’s intention when initially registering the disputed domain name. Archives of Respondent’s website shortly after it was first established, in November 2005, appeared to offer only information and sales links respecting Complainant’s Tamiflu product. Significantly, the website displayed a disclaimer of affiliation or endorsement by Complainant and displayed links to the official website established by Complainant’s parent company at “www.tamiflu.com”. ⁵ By February 2006, however, the disclaimer was removed and the website was displayed in various formulations as a parking page with links that included both a reference to Tamiflu and also to many websites unrelated to pharmaceuticals. Still later in 2006, the website appears simply to have provided health-related information, but also displayed references to buying Tamiflu on line. ⁶

The Panel finds that Respondent initially registered the disputed domain name in bad faith, supported by the fact that Respondent provided false identity and address information to eNom, Inc. Telstra Corporation v. Nuclear Marshmallows, supra, cited in Oxygen Media, LLC v. Primary Source, WIPO Case No. D2000-0362 (false identity information was additional factor supporting finding of bad faith registration).

The Panel infers that Respondent registered the disputed domain name intending to trade on the fame of Complainant’s trademark, which was registered and used in the late 1990s, and widely promoted before Respondent registered the domain name. The Panel further infers that Respondent was aware of Complainant’s trademark and product name, which is a coined term without ordinary meaning. The Panel concludes that Respondent deliberately attempted to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with the Complainant’s mark.

Presently available online screens from Respondent’s website show that the disputed domain name is used not only to promote sales of Complainant’s preparation, but also to promote the products of other pharmaceutical companies. The Panel concludes,that this activity demonstrates bad faith use by Respondent. Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784 (citing Google, Inc v. wwwgoogle.com and Jimmy Siavesh Behain, WIPO Case No. D2000-1240; Casio Keisanki Kabushiki (Casio Computer Co., Ltd.) v. Jongchan Kim, WIPO Case No. D2003-0400; Downstream Technologies, LLC v. Bartels System GmbH, WIPO Case No. D2003-0088).

The Panel therefore concludes that the disputed domain name was registered and is being used by Respondent in bad faith under paragraph 4(b)(iv) 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 <onlinetamiflu.com> be transferred to Complainant.

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Jeffrey D. Steinhardt
Sole Panelist

Dated: February 19, 2008

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¹ Complainant’s U.S. counsel used for Respondent’s address the zip code provided by Respondent.

² Reliance on the Panel decision in General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087, is misplaced, however, since the discussion of descriptive terms added to the complainant’s trademark in that case was dictum.

³ The Panel finds it unnecessary to consider Complainant’s argument that because, in a single instance, Respondent links to www.canadamedicineshop.com, an online pharmacy the website of which allegedly violates Complainant’s trademark rights, Respondent cannot have rights or legitimate interests in the disputed domain name.

⁴ The Panel also concludes that Respondent’s use of the domain name is not bona fide use, without considering the argument that Respondent’s use cannot be bona fide because Respondent itself allegedly infringed Complainant’s trademark.

⁵ The notice stated: “All trademarks and registered trademarks are of their respective companies. This site is not endorsed or affiliated with tamiflu.com or roscheusa.com[sic]. For more information about this medication you can go to www.tamiflu.com” (italics in original).

⁶ The Panel has undertaken limited factual research by visiting archives for Respondent’s website at “http://www.archive.org/index.php”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions. It would have been helpful for Complainant to address the impact of these historical website archives on the question of bad faith registration.