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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

F. Hoffmann-La Roche AG v. Andrei Keronski

Case No. D2009-0645

1. The Parties

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

The Respondent is Andrei Keronski of Minsk, Belarus.

2. The Domain Name and Registrar

The disputed domain name <buy--tamiflu.org> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 13, 2009. On May 14, 2009, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain name. On May 15, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com 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" or "UDRP"), 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 20, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was June 9, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent`s default on June 10, 2009.

The Center appointed Nathalie Dreyfus as the sole panelist in this matter on June 15, 2009. 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 is a Swiss global health-care company that operates worldwide in the fields of pharmaceuticals and diagnostics.

One of its products is an antiviral pharmaceutical preparation called Tamiflu.

According to the annexes submitted with the Complaint, the Complainant states that it is the owner of the following trademarks, for which it has provided copies:

- International Trademark TAMIFLU, nВ° 713623, designating in particular Belarus, Germany, Czech Republic and the Russian Federation, registered on June 3, 1999 and covering goods in class 5;

- International Trademark TAMIFLU + logo nВ° 727329, designating in particular Belarus, Germany, Czech Republic and the Russian Federation registered on February 7, 2000 and covering goods in class 5.

The disputed domain name <buy--tamiflu.org> was registered on May 4, 2009 with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com and is currently being held by the Respondent.

The Respondent has used the domain name at issue to redirect Internet users to a website claiming to be the "Official Canadian Pharmacy" and selling all sorts of drugs, from Tamiflu to Viagra.

5. Parties` Contentions

A. Complainant

The Complainant has put forth the following legal and factual contentions.

The domain name reproduces the Complainant`s trademark in its entirety with the mere adjunction of the word "buy" and two hyphens. This word could not sufficiently distinguish the domain name from its trademark`s rights.

The Complainant points out that, in the past few months, its product had important media coverage due to the swine flu pandemic threat and that the trademark`s well-knowness is likely to increase the likelihood of confusion.

The Complainant also highlights that its trademarks registrations precede the registration of the domain name in dispute.

The Complainant asserts that Respondent is not authorized to use the trademark TAMIFLU in a domain name.

The disputed domain name directs to a webpage offering and selling the Complainant`s products as well as other types of drugs manufactured by the Complainant`s competitors. Therefore the Complainant argues that the Respondent registered the domain name in dispute in order to take advantage of the Complainant`s trademark reputation for commercial gain.

As for bad faith registration and use, according to the Complainant there is no doubt that, on the date of registration of the domain name the Respondent was aware of the Complainant`s trademark and product TAMIFLU.

Given the content of the website, the Complainant believes that it is obvious that the purpose for registering the disputed domain name was to attract Internet users by creating a likelihood of confusion due to the similarity to its trademarks, in order to sell Complainant`s product for commercial profit.

B. Respondent

The Respondent did not reply to the Complainant`s contentions and is therefore in default.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove that:

(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

(ii) The domain name has been registered and is used in bad faith.

A. Identical or Confusingly Similar

The Complainant has demonstrated that it owns the international trademark TAMIFLU + logo nВ° 727329. However, Complainant did not provide any proof of renewal for the international trademark TAMIFLU nВ° 713623. According to paragraph 10(a) of the Rules, the Panel took the initiative to independently obtain additional evidence from the Internet to clarify this issue (see Société des Produits Nestlé SA v. Telmex Management Services, WIPO Case No. D2002-0070). Hence, on June 26, 2009 the Panel verified on the Madrid Express database available on WIPO`s website whether the trademark has been renewed. The Panel found that the trademark had indeed been renewed with an expected expiration date of June 3, 2019.

The Panel will first examine whether there is a confusing similarity between the trademark and the domain name in dispute.

The disputed domain name fully incorporates Complainant`s trademark TAMIFLU associated with the generic term "buy" and two hyphens.

In previous UDRP panel decisions it has often been held that the mere incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to the complainant`s registered mark. (Alstom, Bouygues v. Webmaster, WIPO Case No. D2008-0281; AT&T Corp. v. William Gormall, WIPO Case No. D2005-0758; and Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253).

Moreover, in light of previous UDRP decisions, the Panel considers that the mere addition of a generic word such as "buy" does not alleviate the likelihood of confusion (Alstom v. FM Laughna, WIPO Case No. D2007-1736 and Groupe Auchan v. Jakub Kamma, WIPO Case No. D2007-0565). On the contrary, the nature of this word reinforces the likelihood of confusion in the users` minds because users will naturally believe that Complainant is using the website in order to sell its products. (Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti, WIPO Case No. D2005-0037; Viacom International Inc. v. Frank F. Jackson and Nancy Miller, WIPO Case No. D2003-0755; Caterpillar Inc. v. Roam the Planet Ltd, WIPO Case No. D2000-0275; Société Air France v. RBlue, and WIPO Case No. D2005-0290).

Another difference between the trademark TAMIFLU and the disputed domain name is the adjunction of ".com". Such an adjunction is due to the current technical specificities of the domain name system. Therefore, this inclusion should not be taken into account when evaluating the identity or similarity between the disputed domain name and the Complainant`s trademark (New York Insurance Company v. Arunesh C. Puthiyoth, WIPO Case No. D2000-0812; Accor S.A. v. jacoop.org, WIPO Case No. D2007-1257; and Telstra Corp Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

As a result, the Panel finds that the domain name is identical or confusingly similar to the trademarks TAMIFLU owned by the Complainant. Therefore, the Panel considers that the condition set out by paragraph 4(a)(i) of the Policy has been met by the Complainant.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out examples of what a Respondent may demonstrate to show that it has rights or legitimate interests in respect of a domain name.

"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; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."

The Panel believes that there is no relationship between Respondent and Complainant and that Respondent is not a licensee of Complainant nor has Respondent otherwise obtained an authorization to use Complainant`s trademark in a domain name.

Furthermore several UDRP decisions have established that once a complainant has made a prima facie case that a respondent lacks legitimate interest or right, the burden is on the respondent to prove its right and legitimate interest in the name (see Sinbar v. Forsyte Corporation, WIPO Case No. D2008-1667; Southcorp Limited v. Frontier Direct Pty Ltd, WIPO Case No. D2004-0949; and Cassava Enterprises Limited, Cassava Enterprises (Gibraltar) Limited v. Victor Chandler International Limited, WIPO Case No. D2004-0753).

The Complainant provided screenshots of the domain name in dispute, however, for some unknown reason, the domain name is not active anymore and nothing can be found on "www.archive.org". As the Respondent is in default, the evidence provided by the Complainant was not challenged. The Panel considers that it is not generally its place to explore or cross-examine in depth the veracity of the evidence presented, and that it should limit itself to making an evidentiary assessment on balance.

According to the evidence submitted by the Complainant, the website links to an online pharmacy selling all kinds of drugs. On the website, it appears that the Respondent has registered and used the disputed domain name in order to sell original branded pharmaceuticals. However, the website, as well as the online pharmacy website that Respondent`s website links to, promotes and sells other pharmaceuticals many of which are produced or licensed by companies unrelated to the Complainant, and which are Complainant`s direct competitors. These circumstances do not constitute, in this Panel`s judgment, the bone fide offering contemplated by paragraph 4(c)(i) of the Policy.

Concerning online pharmacies, the Panel points out that they are proliferating over the Internet. Usually users do not even know the provenience of the drugs sold on these websites. They are very often counterfeited or even expired. This kind of matter goes beyond trademark laws as it puts public health at stake.

As the Respondent is in default, the Panel is of the opinion that it has no right or legitimate interest in the disputed domain name. Consequently, the Panel considers that the condition set out by paragraph 4(a)(ii) of the Policy has been met by the Complainant.

C. Registered and Used in Bad Faith

For the purpose of paragraph 4(a)(iii) of the Policy, if the following circumstances, in particular but without limitation, are found by the Panel to be present, shall be evidence of the registration and use of the domain name in bad faith:

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

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

(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder`s website or other online location, by creating a likelihood of confusion with the Complainant`s mark as to the source, sponsorship, affiliation, or endorsement of the holder`s website or location or of a product or service on the holder`s website or location.

Many UDRP decisions stated that both conditions are cumulative ( WIPO Case No. D2000-0001, Robert Ellenbogen v. Mike Pearson). Thus, the Complainant must clearly show that: (a) the domain name was registered by the Respondent in bad faith and, (b) the domain name has been used by the Respondent in bad faith.

The Panel points out that both under past UDRP decisions (see for instance Nike, Inc. v. B.B. de Boer, WIPO Case No. D2000-1397; and Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806) and under the Policy (see paragraph 2), it is established that when a party registers a domain name, it has an onus of warranty to the registrar that, to its knowledge, the registration of the domain name will not infringe the rights of any third party.

In this case, the Panel believes that, given the fact that Complainant`s marks are widely known, it is very unlikely that the Respondent, at the time of registration of the domain name and thereafter, was not aware that it was infringing the Complainant`s trademarks.

a. Registered in bad faith

The domain name results from the association of Complainant`s trademark with the generic term "buy" and two hyphens.

The Panel, in line with previous UDRP decisions, considers that Complainant`s trademarks enjoy a worldwide reputation.

It has often been held by UDRP panelists that bad faith can be easily inferred when Complainant`s trademark is deemed as being famous (Nationwide Mutual Insurance Company v. Texas International Property Associates, WIPO Case No. D2008-1411; and AT&T Corp. v. LaPorte Holdings Inc, WIPO Case No. D2004-1088 "Bad faith can be presumed based on the fame of Complainant`s marks, such that the Respondent was aware or should have been aware of Complainant`s well-known marks and claims of rights thereto").

Accordingly, in the past few months Complainant`s trademarks have had important media coverage due to the swine flu pandemic threat. In the Panel`s eye, the fact that Respondent registered the domain name at issue when this virus was starting to spread cannot reasonably be a mere coincidence. All the more so, given the fact that Tamiflu is an invented word and has no meaning, in any language.

Moreover, because the website is redirecting users to an online pharmacy that has nothing to do with the Complainant, it can be inferred that the Respondent has registered the domain name precisely because he wanted to lure Internet users to his website. UDRP panelists have already held that "the deliberate creation of initial interest confusion and the consequent diversion of Internet traffic is sufficient to establish bad faith on the Respondent`s part" (Sony Ericsson Mobile Communications International AB, Telefonaktieb olaget LM Ericsson, Sony Corporation v. Party Night Inc., WIPO Case No. D2002-1128).

Besides, since the Complainant`s company is clearly mentioned on the disputed website, it is reasonable to conclude that the Respondent did not ignore the existence of Complainant`s trademark when it registered the domain name.

These findings lead the Panel to conclude that the domain name in dispute has been registered in bad faith by the Respondent.

b. Used in bad faith

In order to meet the requirements of paragraph 4(b) of the Policy, it is not sufficient to prove that the domain name is registered in bad faith, it is also necessary to prove that the domain name is used in bad faith.

The disputed domain name leads to a website called the "Official Canadian Pharmacy". It offers users the possibility to order a wide range of drugs online. The wording as well as the content of the domain name is very likely to mislead internet users which will believe that Respondent is somehow affiliated to Complainant and that he is legitimately authorized to sell its online products. In fact, there is an extensive description of TAMIFLU and of its use. It is also stated that "we provide only original Tamiflu, the original product of ROCHE PHARMACEUTICALS". The Panel ignores whether said products are actually authentic or not. Nevertheless, in the Panel`s opinion this clearly constitutes use in bad faith. UDRP case law confirms this view (See F. Hoffmann-La Roche AG v. Bulent Sedef, WIPO Case No. D2008-0636 "The obvious inference to be drawn from using the domain name <buy-tamiflu-online.com> as a URL for the Respondent`s online pharmacy site is that the Respondent intended to attract traffic to that site. Internet users are likely to believe that a site identified by a name incorporating the TAMIFLU mark must belong to or at least be approved by the Complainant. Once on the site some of those users can be expected to buy pharmaceuticals from the Respondent from which he will derive commercial gain. Such use falls full square within paragraph 4(b)(iv) and constitutes evidence of registration and use in bad faith").

The Panel therefore considers that the disputed domain name has been registered in order to divert Internet users searching for Complainant`s marks and products to Respondent`s website for commercial gain.

As a result, the Panel finds that the domain name has been registered and used in bad faith. Therefore, the Panel considers that the condition set out by paragraph 4(b)(i) of the Policy has been met by the Complainant.

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 <buy--tamiflu.org> be transferred to the Complainant.

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Nathalie Dreyfus
Sole Panelist

Dated: June 26, 2009