tamiflu-tamiflu.com

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

F. Hoffmann-La Roche AG v. Eugenia Moskovchuk

Case No. D2006-0466

1. The Parties

The Complainant is F. Hoffmann-La Roche AG, Basel, Switzerland, represented by an internal representative.

The Respondent is Eugenia Moskovschuk,, Seychelles.

2. The Domain Name and Registrar

The disputed domain name <tamiflu-tamiflu.com> is registered with Go Daddy Software, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 12, 2006. On April 13, 2006, the Center transmitted by e-mail to Go Daddy Software, Inc. a request for registrar verification in connection with the domain name at issue. On April 14, 2006, Go Daddy Software, Inc. transmitted by e-mail to the Center its verification response, informing that the Respondent is not the registrant of the disputed domain name. As a result, the Center notified the Complainant accordingly. In response to this notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on April 27, 2006. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), of 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 administrative proceedings commenced on April 28, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was May 18, 2006. The Response was filed with the Center on May 17, 2006.

The Center appointed Christos A. Theodoulou 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

The Complainant is together with its affiliated companies a large healthcare group in the fields of pharmaceuticals and diagnostics, having global operations in more than 100 countries. Its medicine Tamiflu is an antiviral pharmaceutical preparation, well-known recently to consumers due to its importance vis-à-vis bird flu.

According to the non-contested allegations of the Complainant, TAMIFLU is protected as a trademark in a multitude of countries worldwide. The examples provided by the Complainant are International Registrations Nos. 713623 and 727329, with protection going back to May 4, 1999.

The Panel in unaware of any information with regard to the Respondent, Eugenia Moskovschuk, apart maybe from the fact that she is related to Uniline Ltd. with links in Seychelles and Moldova.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to its trademarks, that the Respondent has no legitimate interests or rights in the disputed domain name, and that the Respondent has registered and is using the disputed domain name in bad faith, in the sense of paragraph 4 of the Policy.

B. Respondent

The Respondent alleges that their company sells genuine Tamiflu medications, produced by Roche Laboratories, Inc. and that this is the sole income that derives from the disputed website. Moreover, the Respondent emphasizes the fact that they acknowledge that the trademark TAMIFLU belongs to the Complainant and that they have never claimed the contrary on the disputed website.

6. Discussion and Findings

The Panel shall now proceed to the evaluation of the evidence in this case, based on the three elements of paragraph 4(a) of the Policy, the satisfaction of which the Complainant must demonstrate.

A. The contested domain nameis identical or confusingly similar to trademarks, in which the Complainant has rights.

As mentioned before, the Complainant has presented sufficient evidence of valid trademark registrations for TAMIFLU around the world, with the example of two International Trademarks. The Complainant’s ownership of the mark is acknowledged by the Respondent. The double repetition of the word-mark should not affect the essence of the matter: the contested domain name wholly incorporates the registered trademark TAMIFLU owned by the Complainant and this is by itself sufficient to establish the criterion of similarity for purposes of the Policy [see e.g. EAuto, L.L.C. v. EAuto Parts, WIPO Case No. D2000-0096; Speedo Holdings B.V. v. LAKS Cartegena Handels GmbH, WIPO Case No. D2005-1325].

This Panel therefore finds that the Complainant has satisfied its burden of proof on this point and holds that the disputed domain name is confusingly similar to the Complainant’s trademarks.

B. The Respondent has no rights or legitimate interests in the contested domain name.

Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel to be proved based on its evaluation of the evidence presented, shall demonstrate a registrant’s rights to and legitimate interest in a domain name:

I. Demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services prior to the dispute.

As already mentioned, the Respondent asserts that their company sells genuine Tamiflu medications, produced by Roche Laboratories, Inc. and that this is the sole income that derives from the disputed website. In other words, the Respondent claims that there has been on their part a bona fide offering of goods prior to the dispute. On the other hand, the Complainant insists that no permission whatsoever was ever given to the Respondent to use Tamiflu in their domain name and this allegation has not been contested by the Respondent.

The Panel, also on the basis of previous UDPR decisions, agrees with the Complainant, in the sense that in any case a reseller does not have the right to incorporate the trademark of the resold goods into the domain name of the reseller, See Nikon, Inc. v. Technilab, WIPO Case No. D2000-1774. This idea has been explained in a more analytical way in AVENTIS Pharma S.A. and Merrell Pharmaceuticals Inc. v. Rx USA, WIPO Case No. D2002-0290: “While the selling of goods which originate from the Complainant might entitle the Respondent to use a mark associated with the goods in connection with their sale, this does not give it the right to register and use the mark as a domain name without the consent of the holders of the trademarks. Thus, it is prevented from having prior rights to or legitimate interest in the domain name as against the Complainant”. The Panel also notes that even if the Oki Data test, See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, were to be applied, the Respondent would not have a legitimate interest as the Respondent provides links to websites selling goods for others than the Complainant.

II. An indication that the registrant has been commonly known by the disputed domain name, even if it has acquired no trademark rights.

There is no such indication or claim from the record.

III. Legitimate non-commercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue.

The Complainant claims that directing Internet users to an on-line pharmacy and to unrelated websites through links, which are provided by the Respondent on the disputed website, does not constitute a legitimate interest in the domain name, as it was decided in Liseberg AB v. Administration Local Manage Technical, WIPO Case No. D2003-0864. The Respondent alleges that placing links of different sites is not in violation of any rules and emphasizes that it is not related to any of the sites, in the sense that it makes no commercial gain whatsoever from the links provided on its website.

The Panel does not deem it necessary to decide on this issue, since the Complainant’s point has already been proved through paragraph I above.

Consequently, the Panel holds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. The Respondent registered and used the contested domain name in bad faith.

Paragraph 4(b) of the Policy provides for some circumstances that, if found by the Panel to be present, constitute evidence of the registration and use of a domain name in bad faith. The Complainant’s argumentation aims to establish mainly paragraph 4(b)(iv) of the Policy.

The Complainant first asserts that the Respondent had good knowledge of Tamiflu’s reputation at the time of the disputed domain name’s registration (October 28, 2005). Indeed, Tamiflu, as mentioned above, has recently known worldwide media projection, because of its importance vis-à-vis the bird flu. This has previously been accepted by another Panel, who stated the following: “…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”. See Hoffmann-La Roche Inv. v. WhoisGuard, WIPO Case No. D2005-1288.

Then, the Complainant goes on to prove that the disputed domain name is not only registered, but also used in bad faith. It starts by a general allegation that “the Respondent is intentionally attempting (for commercial purpose) to attract Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s well-known mark as to the source, affiliation and endorsement of Respondent’s website or of the products or services posted on or linked to respondent’s website”. In that respect, emphasis is given by the Complainant to the fact that the Respondent provides links on the disputed website to websites promoting and/or offering products and services of third parties. As it has been well explained in Deutsche Telekom AG v. Spiral Matrix, WIPO Case No. D2005-1145, this action could by itself be considered as evidence of bad faith, since it is usual practice that “every link activated by an Internet user enables the host of the search engine to collect financial remuneration proportional to the number of connections”. By adding to this the fact that the Respondent is using the Complainant’s trademark in order to attract Internet users, the Panel is inclined to decide that the Complainant has proved the Respondent’s bad faith also as to the use of the disputed domain name, the Respondent’s remarks not touching here upon the substance of things.

As a result, the Panel holds that the Respondent registered and usedthe disputed domain names in bad faith.

7. Decision

The Complainant has successfully proved that the contested domain name is identical or confusingly similar to several trademarks in which it has rights, that the Respondent has no rights or legitimate interests in the contested domain name and that the Respondent registered and used the contested domain name in bad faith.

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 at issue, <tamiflu-tamiflu.com>, be transferred to the Complainant.

Christos A. Theodoulou
Sole Panelist

Dated: June 6, 2006