The Complainant is F. Hoffmann-La Roche AG, Basel, Switzerland, represented by in-house counsel.
The Respondent is Roelof Piersma, Wildervank, Netherlands.
2. The Domain Name and Registrar
The disputed domain name <tamiflu-store.com> is registered with Register.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 21, 2006. On February 21, 2006, the Center transmitted by email to Register.com a request for registrar verification in connection with the domain name at issue. At the same day, Register.com 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 24, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was March 16, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 17, 2006.
The Center appointed Gerd F. Kunze as the Sole Panelist
in this matter on March 24, 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 extend amongst others to the Benelux countries, where the Respondent is located, and cover 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 personal knowledge of these facts that are referred to in the Complaint.
B. Respondent
The Respondent registered the domain name <tamiflu-store.com>
on January 12, 2006, and uses it for a website that redirects users to an on-line
pharmacy that offers the TAMIFLU product of the Complainant but also Antiflu,
a drug that directly competes with the Complainant’s product. The products
may be bought without prescription.
5. Parties’ Contentions
A. Complainant
The Complainant submits that (A) the domain name <tamiflu-store.com> is identical 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 “store” does not sufficiently distinguish the domain name from its mark which is notorious; (B) the Respondent has no rights or 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 the 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-store.com> consists of a combination of the Complainant’s well-known trademark with the descriptive term “store” (the gTLD “.com” cannot be taken into consideration when judging confusing similarity between the domain name and the Complainant’s trademark). Users will understand this addition to the Complainant’s trademark in the sense that they will find the TAMIFLU product in an on-line store at the Respondent’s website. Such or similar assumption is linked to the TAMIFLU product, which clearly shows that the addition of the word “store” cannot exclude confusing similarity between the domain name and the trademark of the Complainant.
In conclusion the domain name <tamiflu-store.com> is 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, copy of which has been submitted by the Complainant, it not only offers the TAMIFLU product for sale, but even reproduces the specific TAMIFLU logotype, registered as trademark and used by the Complainant for its TAMIFLU product.
Users of the domain name, who are intending to buy the TAMIFLU product, are
directed to the website of an on-line pharmacy, where, as evidenced by copies
of the respective pages, the TAMIFLU product of the Complainant as well as the
competing product ANTIFLU (generic TAMIFLU) is offered for sale. Such use of
the Complainant’s trademark cannot be considered to be a bona fide
offering of goods or services. Also the Respondent’s offering for sale
of the TAMIFLU product on its own website “www.tamiflu-store.com”
does not justify using the protected trademark, used by the Complainant for
that product, as domain name and even directing users to an on-line pharmacy.
This has been stated in several decisions of WIPO Panelists (see
F. Hoffmann-La Roche AG v. D. B., WIPO Case No. D2006-0170,
with references).
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 registration and use in 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-store.com”, copy of which was submitted by the Complainant, the original TAMIFLU logotype of the Complainant is reproduced and under the logotype the “Roche” TAMIFLU product is offered for sale.
This clearly shows that the Respondent uses the domain name for commercial gain, by attracting users to its website, where the TAMIFLU product is offered for sale. As stated above under section B, the Respondent has no right to use without authorization the trademark TAMIFLU of the Complainant. Furthermore, when the visitor of the website proceeds to order the product, he is redirected to a website of an on-line pharmacy, where indeed the product of the Complainant, but also a competing product is offered for sale.
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-store.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-store.com> be transferred to the Complainant.
Gerd F. Kunze
Sole Panelist
Dated: April 7, 2006
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