The Complainant is F. Hoffmann-La Roche AG, Basel, Switzerland, represented by an internal representative.
The Respondent is D. B., United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <tamiflu-tomorrow.com> is registered with Schlund
+ Partner.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 8, 2006. On February 8, 2006, the Center transmitted by email to Schlund + Partner a request for registrar verification in connection with the domain name(s) at issue. On February 10, 2006, Schlund + Partner 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 February 15, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was March 7, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 8, 2006.
The Center appointed Gerd F. Kunze as the sole panelist
in this matter on March 15, 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
A. Complainant
The Complainant is, together with its affiliated companies, one of the world’s leading pharmaceutical companies with operations in more than 100 countries.
The Complainant is the registered owner of the trademark TAMIFLU in many countries worldwide. Amongst others the trademark is protected by two international registrations: registration No. 713623, with priority of June 3, 1999, for the word mark TAMIFLU and registration No. 727329, with priority of February 7, 2000, for a combined mark consisting of the word “Tamiflu” in a special script and a figurative element on the top of the letter “i” (which will be referred to as TAMIFLU logotype). Both registrations are extending amongst others to the United Kingdom, where the Respondent is located, and are covering an antiviral pharmaceutical preparation, namely a product against flu. The Complainant has evidenced this fact by copies of the registration certificates.
In the past, and particularly in the past months, the Complainant’s mark TAMIFLU has been referred to in many mass media world wide in the context of the increasing significance of the bird flu disease and in view of the fact that many governments have decided to stockpile the TAMIFLU product. Therefore the trademark TAMIFLU has become an internationally well-known mark. The Panelist has knowledge of these facts that are referred to in the Complaint.
B. Respondent
The Respondent registered on November 27, 2005, the
domain name <tamiflu-tomorrow.com> and, as evidenced by copies of the
respective websites, it used the domain name for an on-line pharmacy which offered
TAMIFLU for sale. At present the domain name is linked to a website of the Respondent’s
company “sit in style” which is offering furniture for sale.
5. Parties’ Contentions
A. Complainant
The Complainant submits that (A) the domain name <tamiflu-tomorrow.com> is identical or confusingly similar to its trademark TAMIFLU in which it has rights; it points out in this connection that the domain name of the Respondent incorporates its trademark in its entirety and that the addition of the word “tomorrow” does not sufficiently distinguish the domain name from its mark which is notorious; (B) the Respondent has no rights ore legitimate interests in respect of the domain name; (C) the domain name was registered and is being used in bad faith.
B. Respondent
The Respondent has failed to submit a Response. It
has therefore not contested the allegations of the Complaint and the Panel shall
decide on the basis of Complainant’s submissions, and all inferences that
can reasonably be drawn therefrom (Rules, paragraph 14(b)).
6. Discussion and Findings
A. Identical or Confusingly Similar
The domain name <tamiflu-tomorrow.com> consists of a combination of the Complainant’s well-known trademark with the descriptive term “tomorrow” (the gtld “.com” cannot be taken into consideration when judging confusing similarity between the domain name and the Complainant’s trademark). Users may understand this addition to the Complainant’s trademark in the sense that they may need TAMIFLU very soon or that the on-line pharmacy, to which the domain name is linked, will provide them with TAMIFLU the next day. Such or similar assumptions are always linked to the TAMIFLU product, which clearly shows that the addition of the word “tomorrow” cannot exclude confusing similarity between the domain name and the trademark of the Complainant.
In conclusion the domain name <tamiflu-tomorrow.com> is clearly confusingly similar to the trademark TAMIFLU of the Complainant.
B. Rights or Legitimate Interests
The Complainant has not licensed or otherwise consented to the use of its trademark TAMIFLU to the Respondent. The word TAMIFLU is not a descriptive word. It is known as the trademark of the Complainant’s product. Furthermore, there cannot be any doubt that the Respondent is aware of the Complainant’s trademark, since on its website it even reproduced the specific logotype, registered as trademark and used by the Complainant for its TAMIFLU product.
As evidenced by copies of the respective pages, users of the domain name are
directed to this website, which offers the TAMIFLU product of the Complainant
for sale. Such use of the Complainant’s trademark cannot be considered
to be a bona fide offering of goods or services. The intention to offer
a product for sale on-line does not justify the use of a protected trademark,
used by its manufacturer for that product, as part of a domain name, or even
to direct under this domain name users to an online pharmacy. This has been
stated in several decisions of WIPO Panelists. WIPO
Case No. D2003-0793, Hoffmann –La Roche Inc. v. #1 Viagra Propecia
Xenical & More Online Pharmacy, and WIPO
Case No. D2004-0784, Pfizer Inc. v. jg a/k/a Josh Green, are referred
to. Failing any submission of the Respondent to the contrary, the Panel is satisfied
that the Respondent is not commonly known by the domain name. Since the Respondent
offers products for sale on its website, it does not make a non-commercial use
of the domain name.
Failing any submission of the Respondent the Panel therefore is satisfied that the Respondent has no rights or legitimate interests in the domain name.
C. Registered and Used in Bad Faith
Even if the Respondent has not responded to the Complaint, the Complainant has to prove under the Policy that the Respondent has registered and is using the domain name in bad faith.
Paragraph 4(b)(iv) of the Policy lists as one of the typical situations as evidence of bad faith that, by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website.
The Complainant has submitted facts and evidence that the Respondent has fulfilled the conditions set out in paragraph 4(b)(iv). As pointed out before, there can be no doubt that the Respondent knew the product, sold under the Complainant’s trademark TAMIFLU, when it registered the domain name. It uses the domain name for a website, in which it offers that product in a context that creates the impression that there exists at least some kind of sponsorship or endorsement of the Complainant. In the upper left side of the website “www.tamiflu-tomorrow.com”, copy of which was submitted by the Complainant, the original TAMIFLU logotype of the Complainant is reproduced and on the right side an original packaging of the Complainant’s TAMIFLU product is reproduced. The fact that the Respondent offers no competitive product does not exclude bad faith since, as stated above B, the Respondent has no right to use without authorization the trademark TAMIFLU of the Complainant as part of its domain name.
These facts clearly show that the Respondent uses the domain name for commercial
gain, by attracting users to its website, where the TAMIFLU product is offered
for sale. The Panel is therefore satisfied that the Respondent registered and
is using the domain name <tamiflu-tomorrow.com> in bad faith.
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-tomorrow.com> be transferred to the Complainant.
Gerd F. Kunze
Sole Panelist
Dated: March 21, 2006
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