The Complainant is F. Hoffmann-La Roche AG, Basel, Switzerland, represented by an internal representative.
The Respondent is Tamiflu-Antibiotic.com, Douglas, Arkansas, United States
of America.
2. The Domain Name and Registrar
The disputed domain name <tamiflu-antibiotic.com> is registered with
Tucows, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 10, 2006. On April 13, 2006, the Center transmitted by email to Tucows, Inc., a request for registrar verification in connection with the domain name at issue. On April 13, 2006, Tucows, Inc. 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 and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on April 19, 2006. The Center verified that the Complaint together with the amendment to 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 April 20, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was May 10, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 11, 2006.
The Center appointed Hariram Jayaram as the sole panelist
in this matter on May 23, 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
Together with its affiliated companies, the Complainant is one of the world’s leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics, having global operations in more than 100 countries. The Complainant’s mark TAMIFLU designates an antiviral pharmaceutical preparation, namely a product against flu and is protected as a trademark in a multitude of countries worldwide by registration and use.
The Respondent is the registrant of the disputed domain name <tamiflu-antibiotic.com>.
5. Parties’ Contentions
A. Complainant
The Complainant contends as follows:
(A) The disputed domain name of the Respondent, <tamiflu-antibiotic.com> is confusingly similar to the Complainant’s mark TAMIFLU, since it incorporates the TAMIFLU mark in its entirety. In recent years, particularly in the past months, the Complainant’s mark TAMIFLU has been referred to in the mass media because various governments have decided to stockpile the TAMIFLU product against bird flu. The trademark’s notoriety will increase the likelihood of confusion. The use and registration of the TAMIFLU mark by the Complainant predates the Respondent’s registration of the disputed domain name.
(B) The Respondent has no rights or legitimate interests in respect of the disputed domain name <tamiflu-antibiotic.com>. The Complainant has the exclusive rights for TAMIFLU. No licence, permission, authorization or consent was granted to the Respondent to use TAMIFLU in the disputed domain name. The disputed domain name alludes to the Complainant. The Respondent’s website contains information about TAMIFLU as well as sponsored links. There is no reason for the Respondent to have any right or interest in the disputed domain name. The only reason for registration and use of the disputed domain name is to benefit from the reputation of the trademark TAMIFLU and to illegitimately trade on its fame for commercial gain and profit.
(C) The disputed domain name was registered in bad faith. The Respondent had no doubt knowledge of the Complainant’s well-known product/mark TAMIFLU at the time of registration. The use of the disputed domain name is in bad faith. When viewing the Respondent’s website, one will realize that the Respondent is attempting for commercial purpose to attract Internet users to its website, by creating a likelihood of confusion with the Complainant’s well-known mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of the products or services posted on or linked to the Respondent’s website. By using the disputed domain name <tamiflu-antibiotic.com>, the Respondent is intentionally misleading the consumers to other websites making them believe that the websites behind those links are associated or recommended by the Complainant. By doing so, the Respondent may generate unjustified revenues for each click-through by online consumers of the sponsored links on the Respondent’s website.
B. Respondent
The Respondent did not reply to the Complainant’s
contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The trademark of the Complainant is a distinctive and well known mark known
as TAMIFLU. The disputed domain name is <tamiflu-antibiotic.com>. It incorporates
the Complainant’s trademark TAMIFLU as an essential feature but has another
word “antibiotic” as well. The word “antibiotic” is
a descriptive word. The mere addition of a descriptive word to an identical
trademark, has been repeatedly held by previous Panels as not sufficient to
avoid confusion between the domain name and the trademark. This point was stressed
in Red Bull GmbH v. Chai Larbthanasub, WIPO
Case No. D2003-0709 and this Panel takes cognizance of the same.
The Panel finds that the domain name <tamiflu-antibiotic.com> registered by the Respondent, is confusingly similar to the Complainant’s trademark TAMIFLU.
B. Rights or Legitimate Interests
The Complainant has not consented to the use of the trademark TAMIFLU as part of the domain name of the Respondent. The Respondent’s website contains information about TAMIFLU as well as sponsored links. In Aventis Pharmaceuticals Products Inc. v. PBS Publishing LLC, WIPO Case No. D2003-0122, it was held that
“…a legitimate interest may be found where Respondent can show that it is making legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.”
Here, by leading consumers to a website with information about TAMIFLU, it is reasonable to infer that the Respondent has one aim in mind, i.e. to benefit from the reputation of the trademark TAMIFLU and illegitimately trade on its fame for commercial gain and profit.
The Panel concludes that the Respondent has no rights or legitimate interests in the domain name <tamiflu-antibiotic.com>.
C. Registered and Used in Bad Faith
As the Complainant’s TAMIFLU trademark is well known, with extensive
coverage in the mass media as a medicine for bird flu, the Respondent must have
had knowledge of the Complainant’s trademark when it registered the disputed
domain name. In Hoffmann-LaRoche Inc .v. WhoisGuard, WIPO
Case No. D2005-1288, the conclusion of the Panel was that
“…with the widespread fame of the TAMIFLU mark it is simply not credible to believe that Respondent registered the disputed domain name without knowledge of Complainant’s mark. Only someone with knowledge of the mark – considering the fact that the mark is an invented term – could have registered the disputed domain name. Thus, Respondent registered the disputed domain name in bad faith”.
This Panel agrees with the above.
By incorporating the Complainant’s mark TAMIFLU in the disputed domain name, it is also reasonable to infer that the Respondent is attempting to attract consumers of the Tamiflu product to the Respondent’s website, by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or of the products or services posted on or linked to the Respondent’s website.
The Panel concludes that the Respondent has registered and used the domain
name <tamiflu-antibiotic.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-antibiotic.com>, be transferred to the Complainant.
Hariram Jayaram
Sole Panelist
Dated: June 6, 2006
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