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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

F. Hoffmann-La Roche AG v. Marketing Total S.A.

Case No. D2008-0085

1. The Parties

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

The Respondent is Marketing Total S.A., Charlestown, West Indies, Saint Kitts and Nevis.

2. The Domain Name and Registrar

The disputed domain name <tamifluo.com> is registered with BelgiumDomains, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 22, 2008. On January 22, 2008, the Center transmitted by email to BelgiumDomains, LLC a request for registrar verification in connection with the domain name at issue. On January 24, 2008, BelgiumDomains, LLC 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”), 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 January 29, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was February 18, 2008. The Respondent did not submit a formal response. Accordingly, the Center notified the Respondent’s default on February 19, 2008.

On March 26, 2008 there was filed with the Center, and copied to the Complainant, an email from the email address of the Respondent. This email did not disclose the name of its sender but stated that the sender “want[s] to give” to the “other party” (i.e. the Complainant) the disputed domain name. The Complainant submitted an email on March 27, 2008 indicating that it expects the Panel to render a decision on the merits.

The Center appointed Christian Gassauer-Fleissner as the sole panelist in this matter on March 11, 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

The Complainant in this administrative proceeding is F. Hoffmann-La Roche AG, a long-established pharmaceutical company, duly organized under the law of Switzerland, with principal place of business at Basel. The Complainant’s mark TAMIFLU is protected as trademark International Registration Nos. 713623 and 727329. Priority date for the mark TAMIFLU is May 4, 1999. The Complainant is the registrant of the domain name <tamiflu.com>.

The domain name was first created on November 10, 2006 (Annex 1, Complaint).

5. Parties’ Contentions

A. Complainant

The Complainant submits the domain name of the Respondent is confusingly similar to the Complainant’s mark seeing that the only difference between the Respondent’s domain name and the Complainant’s trademark is the misspelling of TAMIFLU, i.e. the addition of the letter “o” to the Complainant’s trademark.

In the past years, the Complainant’s mark TAMIFLU has been referred to in many mass media in view that numerous governments have decided to stockpile the product Tamiflu against birdflu.

The Respondent’s website is a search engine with sponsored links.

The Complainant points out that the Respondent is thus 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 mark as to the source, affiliation and endorsement of the Respondent’s website or of the products or services posted on or linked to the Respondent’s website.

The Complainant submits the Respondent had knowledge of the Complainant’s well-known product/mark TAMIFLU and has registered and is using the disputed domain name in bad faith.

B. Respondent

The Respondent did not reply substantively to the Complainant’s contentions. In the Respondent’s email of March 26, 2008, the Respondent is offering to transfer the domain name to the Complainant.

6. Discussion and Findings

The Respondent failed to file any substantiated reply to the Complaint and has not sought to answer the Complainant’s assertions, evidence or contentions in any manner. To the contrary, Respondent offered to transfer the domain name to the Complainant. The Panel finds that the Respondent has been given a fair opportunity to present its case, and noting the Complainant’s inclination for a decision on the merits, the Panel will proceed to a decision on the Complaint.

The Respondent’s default does not automatically result in a decision in favor of the Complainant. The Complainant must still prove each of the three elements required by Policy paragraph 4(a) (See WIPO Case No. D2002-1064). The Complainant has provided clear and exhaustive evidence on all of these elements.

A. Identical or Confusingly Similar

The Domain Name of the Respondent is confusingly similar to the Complainant’s mark seeing that the only difference between the Respondent’s domain name and the Complainant’s trademark is the misspelling of TAMIFLU. The domain name <tamifluo.com> is misspelled by adding the letter “o” to the trademark of Complainant. This does not have any influence on the pronunciation in many languages.

According to the WIPO Case No. D2002-0775, “this conduct, commonly referred to as ‘typo squatting’, creates a virtually identical and/or confusingly similar mark to the Complainant’s trademark under paragraph 4(a)(i) of the Policy” (Annex 4, p. 4, Complaint).

This is a case of “typo-squatting” where the infringing domain name is one letter different from the Complainant’s mark. Such attempts have been disapproved of in various WIPO UDRP decisions (e.g. WIPO Case No. D2000-1293; WIPO Case No. D2001-0094; WIPO Case No. D2001-1035).

The Panel finds the first element of the Policy established.

B. Rights or Legitimate Interests

In the circumstances of this case, the Panel finds the Respondent’s use of the disputed domain name is not “bona fide” within the meaning of Policy paragraph 4(c)(i) because: (a) the disputed domain name is confusingly similar to the Complainant’s widely known trademark and its <tamiflu.com> domain name; (b) there is no apparent connection or relationship between the disputed domain name and the Respondent or its websites or their content; and (c) there is no other apparent legitimate justification for the Respondent’s registration and use of the disputed domain name for its websites. In addition, the Panel draws an adverse inference from the Respondent’s failure to provide any explanation or rationale for its use of the disputed domain name for its websites (see WIPO Case No. D2002-1064).

The Panel finds the second element of the Policy established.

C. Registered and Used in Bad Faith

Policy paragraph 4(a)(iii) requires the Complainant to prove that the Respondent registered and has used the disputed domain name in bad faith.

Policy paragraph 4(b) provides that the following circumstances are deemed to be evidence that a registrant has registered and used a domain name in bad faith inter alia (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website or location or of a product or service on its website or location.

According to the WIPO Case No. D2004-0990, “the sole diversion of Internet traffic by Respondent to other, unrelated websites, does not represent a use of the Domain Name in connection with a bona fide offering of goods and services. Rather, the conduct of Respondent serves the purpose of generating revenues, e.g. from advertised pay-per-click products”. The Panel finds that similar circumstances are present in this matter.

Accordingly, the Panel finds the third element of the Policy established.

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 <tamifluo.com> be transferred to the Complainant.

Christian Gassauer-Fleissner
Sole Panelist

Dated: April 4, 2008