The Complainant is F. Hoffmann-La Roche AG, Basel, Switzerland, represented by an internal representative.
The Respondent is ORG-174337, A1 Antenn, Torsborg, Sigtuna, Sweden.
2. The Domain Name and Registrar
The disputed domain name <4tamiflu.com> is registered with Active ISP
ASA.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 25, 2006. On April 26, 2006, the Center transmitted by email to Active ISP ASA a request for registrar verification in connection with the domain name at issue. On April 27, 2006, Active ISP ASA transmitted by email to the Center its verification response. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on May 9, 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 May 12, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was June 1, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 2, 2006.
The Center appointed Knud Wallberg as the sole panelist
in this matter on June 7, 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 and its affiliated companies are a healthcare group operating in the field of pharmaceuticals and diagnostics. The Complainant has operations in more than 100 countries worldwide.
The Complainant is the owner of the trademark TAMIFLU which is registered in a number of countries. The mark is registered, inter alia, in the country of residence of the Respondent, Sweden, via the Madrid Protocol under No. 713 623 with a priority date of June 3, 1999.
The trademark is registered for antiviral pharmaceutical
preparations.
5. Parties’ Contentions
A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to its mark TAMIFLU. The mark is incorporated in its entirety in the domain name, and the addition of the prefix “4” does not significantly distinguish the domain name from the mark. Further, it is noted that the Complainant’s registration of its trademark predates the Respondent’s registration of the domain name.
The Respondent uses the domain name to point at a website that contains search facilities and which in addition contains sponsored links.
The Complainant has not authorized or in any other way permitted the Respondent to register and use the disputed domain name and there is no reason to believe that the Respondent should have any legitimate interest in the domain name.
The Complainant’s mark TAMIFLU has been widely referred to in the mass-media during 2005 and 2006 in connection with the efforts to combat bird flu.
Viewing the corresponding website “www.4tamiflu.com,” it is clear that the Respondent is intentionally attempting, for commercial purposes, to attract Internet users to its website by creating a likelihood of confusion with the Complainant’s mark.
B. Respondent
The Respondent did not reply to the Complainant’s
contentions.
6. Discussion and Findings
Procedural issue
The contested domain name was registered through the Registrar Active 24 ASA whose general terms (“Allmänna villkor”) are in Swedish. These general terms make reference to the policies laid down by ICANN. Although the Respondent did not submit a formal Response, the Respondent has been communicating with the Complainant before the commencement of the proceedings in the English language, and has also communicated with the Center in English. It is therefore apparent that the Respondent is skillful in English and that it has thus been aware of the content of the initiated complaint proceedings as well as of its rights and obligations under the Policy.
Pursuant to paragraph 11 of the Rules, the Panel determines the language of the proceedings to be English.
On the substance
According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the Complaint where no Response has been submitted.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.
A. Identical or Confusingly Similar
The domain name <4tamiflu.com> contains the Complainant’s distinctive and well-known trademark in its entirety. The addition of the figure “4” as a prefix to the well-known trademark TAMIFLU does not alter the fact that the domain name is confusingly similar to the Complainant’s trademark. Likewise, the inclusion of the gTLD denomination “.com” shall be disregarded for the purpose of these proceedings.
The requirements in the Policy, paragraph 4(a)(i), are therefore fulfilled.
B. Rights or Legitimate Interests
The Complainant alleges that the Respondent has no rights or legitimate interests in the domain name. The Respondent has not rebutted this allegation and, based on the record of this case, it is unlikely that any such rights or interests may exist.
The Complainant has not licensed or otherwise permitted the Respondent to use its trademark or to apply for any domain name incorporating the Complainant’s trademark.
Further, TAMIFLU is, to the best of the Panel’s knowledge, a coined word that has no specific meaning. It can therefore be ruled out that the Respondent can claim to use the disputed domain name for any generic purpose.
The requirements of the Policy, paragraph 4(a)(ii), are also considered fulfilled.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy further provides that the Complainant must prove the Respondent’s registration anduse of the domain name in bad faith. Paragraph 4(b) sets out, by way of example, the kind of evidence that may be put forward.
Given the notoriety of the Complainant’s trademark, the coined nature of the word TAMIFLU, and the extensive media reference to the product since 2005, which were also present at the time of the Respondent’s registration of the disputed domain name, it is inconceivable to the Panel that the Respondent registered the domain name without prior knowledge of the Complainant and the Complainant’s mark.
The disputed domain name is used for a website that contains search facilities and in addition appears to contain sponsored links, which possibly generates click-through revenues for the holder of the website. It is therefore evident to the Panel that the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark. Therefore, the Panel finds that the domain name is being used in bad faith.
The Panel further notes that the contested domain
name was offered for sale both on the website and in some of the e-mail correspondence
between the parties prior to this proceeding.
Considering all the facts and evidence, the Panel therefore finds that the
requirements of the Policy, paragraph 4(a)(iii), are also fulfilled in this
case.
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 <4tamiflu.com> be transferred to the Complainant.
Knud Wallberg
Sole Panelist
Dated: June 19, 2006
Stay updated! Get new cases and decisions by daily email.
