The Complainant is F. Hoffmann-La Roche AG, Basel, Switzerland, represented a legal representative, Switzerland.
The Respondent is Brito Meyer, Rio de Janeiro, Brazil.
2. The Domain Name and Registrar
The disputed domain name <buytamiflu.name> is registered with Wild West
Domains, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 22, 2006. On February 23, 2006, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the domain name at issue. On February 23, 2006, Wild West Domains, Inc. transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on March 8, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was March 28, 2006. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 29, 2006.
The Center appointed Torsten Bettinger as the sole
panelist in this matter on April 3, 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
Complainant is together with its affiliated companies one of the world’s leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics and having global operations in more than 100 countries. Complainant owns a number of trademark registrations protecting the mark TAMIFLU in numerous countries worldwide, inter alia international registrations No. 713623 TAMIFLU, registered on June 3, 1999, in class 5 and international registration No. 727329 TAMIFLU & device, registered on February 7, 2000, in class 5.
The mark TAMIFLU designates an antiviral pharmaceutical preparation, namely a product against flu.
Complainant submitted screen shots of Respondent’s
web page at “www.buytamiflu.name” that show that use of the domain
name redirects Internet users to a website that offer advertisements for a variety
of pharmaceuticals which compete with Complainant’s products.
5. Parties’ Contentions
A. Complainant
Complainant asserts that each of the elements specified in paragraph 4(a) of the Policy have been satisfied.
In reference to the element in paragraph 4(a)(i) of the Policy, Complainant argues that the word “buy” is descriptive and therefore does not eliminate the similarity between Complainant’s trademark TAMIFLU and the disputed domain name.
In reference to the element in paragraph 4(a)(ii) of the Policy, Complainant contends that none of the situations described in paragraph 4(c) of the Policy can be established in this case. Complainant states that Respondent has no authorization or licence to use the TAMIFLU trademark in his domain name and that the use of Complainant’s trademark in order to redirect Internet users interested in Complainant’s goods to sites that offer links to competing websites is not a use in connection with a bona fide offering of goods and services pursuant to Policy, paragraph 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy, paragraph 4(c)(iii).
In reference to the element in paragraph 4(a)(iii) of the Policy, Complainant asserts that there is no reason for Respondent to use Complainant’s mark in the disputed domain name other than to use it to attract the Internet users to Respondent’s website for commercial gain. Respondent alleges that by using TAMIFLU, Respondent is creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website and the products offered on the website.
B. Respondent
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The test of confusing similarity under the Policy
is confined to a comparison of the disputed domain name and the trademark alone,
independent of the products for which the domain name is used or other marketing
and use factors, usually considered in trademark infringement (See Arthur
Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO
Case No. D2000-1698 <guiness.com>, Ansell Healthcare Products Inc.
v. Australian Therapeutics Supplies Pty, Ltd., WIPO
Case No. D2001-0110 <ansellcondoms.com>, Dixons Group Plc v. Mr.
Abu Abdullaah, WIPO Case No. D2001-0843
<dixons-online.net>, AT&T Corp. v. Amjad Kausar, WIPO
Case No. D2003-0327 <attinternet.com>, <attuniversal.com>,
BWT Brands, Inc. and British American Tobacco (Brands), Inc. v. NABR, WIPO
Case No.D2001-1480; Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505).
The disputed domain name wholly incorporates Complainant’s famous trademark TAMIFLU, used in connection with drugs. The fact that the word “buy” is added to Complainant’s trademark does not eliminate the similarity between Complainant’s trademark and the disputed domain name, as “buy” is a descriptive component of the disputed domain name. In numerous cases, it has been held that a domain name that wholly incorporated a complainant’s registered mark may be sufficient to establish confusing similarity for purposes of the Policy despite the addition of descriptive words to such marks.
It is also well established that the specific top
level of a domain name such as “.com”, “.org”, “.net”
or “.name” does not affect the domain name for the purpose of determining
whether it is identical or confusingly similar (See Magnum Piering, Inc.
v.The Mudjackers and Garwood S. Wilson, Sr.,WIPO
Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO
Case No. D2000-0429).
The Panel thus finds that the domain name <buytamiflu.name> is confusingly similar to the trademark in which Complainant has exclusive rights and that Complainant has established the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy requires Complainant to prove that Respondent has no right or legitimate interest in the disputed domain name. However, it is consensus view among Panelists that if Complainant makes a prima facie case that Respondent has no rights or legitimate interests, and Respondent fails to show one of the three circumstances under Paragraph 4(c) of the Policy, then Respondent may lack a legitimate interest in the domain name.
Complainant asserted that Respondent has neither a license nor any other permission to use Complainant’s famous trademark TAMIFLU. Respondent has not denied these assertions. The Panel thus finds that Complainant has made a primafacie showing that Respondent has no rights or legitimate interests in the disputed domain name which wholly incorporates Complainant’s mark.
Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the domain name.
Respondent is not a reseller of Complainant’s TAMIFLU products, but is using Complainant’s trademark to divert Internet users to a parking website with links to competing sites and thus capitalizing on Complainant’s mark. This use is not a bona fide use pursuant to paragraph 4(c)(i) of the Policy.
Further, nothing in the record suggests that Respondent trades under the domain name or the name TAMIFLU, or is commonly known by said domain name or the name TAMIFLU.
Under these circumstances, the Panel takes the view that Respondent has no rights or legitimate interests in the domain name and that the requirement of paragraph 4(a)(ii) is also satisfied.
C. Registered and Used in Bad Faith
The Panel is also convinced that Respondent registered and has been using the domain name in bad faith.
Complainant’s pharmaceutical TAMIFLU is world wide known. It is therefore inconceivable that Respondent registered the domain name unaware of Complainant’s rights in its TAMIFLU marks.
Respondent registered a domain name which is apart from the descriptive term “buy” identical to Complainant’s trademark. That and the nature of the website Respondent maintains makes it clear that its purpose is to divert traffic intended for Complainant’s site to its own, in the hope that Respondent will earn ad revenue from the diverted traffic.
This qualifies as bad faith under paragraph 4(b)(iv) in that Respondent’s use of the domain name attempts to attract for commercial gain Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website.
Moreover, Respondent’s default in this proceeding reinforces an inference of bad faith. If Respondent had arguments that it acquired the domain name in good faith, and had good faith bases for using the domain name, it should have asserted them.
The Panel therefore concludes that Respondent registered
and is using the domain name <buytamiflu.com> in bad faith and that the
requirement of paragraph 4(a)(iii) of the Policy is satisfied.
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 <buytamiflu.name> be transferred to Complainant.
Torsten Bettinger
Sole Panelist
Dated: April 21, 2006
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