The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 10, 2006. On May 10, 2006, the Center transmitted by email to eNom a request for registrar verification in connection with the domain names at issue. On May 12, 2006, eNom 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 May 18, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was June 7, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 8, 2006.
The Center appointed Knud Wallberg as the sole panelist
in this matter on June 14, 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 vast number of countries worldwide, with a general priority date of May 4, 1999.
The trademark is registered for antiviral pharmaceutical preparations, namely a product against flu.
No factual information has been provided about the
Respondent.
5. Parties’ Contentions
A. Complainant
I. The domain names are confusingly similar to a trademark or service mark in which the Complainant has rights
The Domain Names of the Respondent are confusingly similar to the Complainant’s mark TAMIFLU since they all incorporate this mark in its entirety.
The contested domain name <tami-flu.org> is even orally identical to the Complainant’s trademark.
In particular in the past year, the Complainant’s mark TAMIFLU has been referred to in the media in light of the fact that various governments have decided to stockpile the product TAMIFLU against bird flu. The trademark’s notoriety will increase the likelihood of confusion.
The Complainant’s use and registration of the mark TAMIFLU predates the Respondent’s registration of the Domain Names.
Therefore the domain names are confusingly similar to the trademark of the Complainant.
II. The Respondent has no rights or legitimate interests in respect of the domain names
The Complainant has exclusive rights for TAMIFLU and no license, permission or authorization was granted to use TAMIFLU in the domain names.
Furthermore it is obvious that the Respondent uses the domain names for commercial gain and with the purpose of capitalizing on the fame of the Complainant’s mark TAMIFLU. The Respondent’s domain names thus direct Internet users to websites which provide information about the bird flu and offer to order TAMIFLU “before it’s too late”.
Especially, a link to “Anti-Virals Online Pharmacies” appears with the picture of the TAMIFLU packaging. Upon clicking, it redirects Internet users to another website of the Respondent (“www.buy-flu-vaccine.com”) which offers TAMIFLU as well as a competitive product (“Viral Agent V38”).
By using the Domain Names at issue, the Respondent intends to divert Internet users away from the Complainant’s web sites and toward the Respondent’s own offerings, including bird flu face masks or a book entitled “How to protect yourself & your loved ones from bird flu”. Upon ordering, Internet users are automatically redirected to other websites belonging to the Respondent, including “www.bird--flu--masks.com” or “www.buy-flu-vaccine.com”. The Respondent is also providing links to unrelated websites.
Respondent’s only reason in registering and using the contested Domain Names is to benefit from the reputation of the trademark TAMIFLU and illegitimately trade on its fame for commercial gain and profit.
There is no reason why the Respondent should have any right or interest in such domain names.
III. The domain names were registered and are being used in bad faith.
The domain names were registered in bad faith since at the time of the registrations on April 14, 2006, the Respondent had, no doubt, knowledge of the Complainant’s well-known product/mark TAMIFLU.
The domain names are also being used in bad faith. This is obvious since when viewing the Internet-websites from the Respondent one realizes that Respondent is intentionally attempting (for commercial purpose) to attract Internet users to the Respondent’s websites, by creating a likelihood of confusion with the Complainant’s well-known mark as to the source, affiliation and endorsement of Respondent’s websites or of the products or services posted on or linked to Respondent’s websites.
Respondent, by using the disputed Domain Names, is intentionally misleading the consumers and confusing them so as to attract them to other websites making them believe that the websites behind those links are associated or recommended by Complainant.
Respondent is therefore illegitimately capitalizing on the TAMIFLU trademark fame.
B. Respondent
The Respondent did not reply to the Complainant’s
contentions.
6. Discussion and Findings
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 are 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 three 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
All the contested domain names contain the Complainant’s distinctive and well-known trademark TAMIFLU in its entirety. Neither the addition of the descriptive word “order” as prefix, or of the words “online” and “vaccine” as suffixes, nor the insertion of a hyphen between the TAMI and FLU, alters the fact that the domain names are confusingly similar to the Complainant’s trademark. Likewise, the inclusion of the gTLD denomination “.org” or “.net” 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 has not licensed or otherwise permitted the Respondent to use its trademark or to apply for any domain name incorporating the Complainant’s trademark.
The Complainant alleges that the Respondent has no further rights or legitimate interests in the domain names. 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.
In this context the Panel notes that TAMIFLU is an invented 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 purpose unrelated to the Complainant or its products.
Even if the Respondent was allowed to sell products bearing the Complainants
mark TAMIFLU this would not give the Respondent the right to incorporate this
trademark into its domain names. See inter alia Hoffmann-La Roche Inc. v.
# 1 Viagra Propecia Xenial & more Online Pharmacy,WIPO
Case No. D2003-0793. This is in particular so when the contested domain
name is also used for the sale of competing products, as is the case here.
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 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, a number of circumstances
which may be taken as indicative of bad faith.
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, it is inconceivable to the Panel that the Respondent
registered the domain name without prior knowledge of the Complainant and the
Complainant’s mark. This is so even if the Complainants trademark has
not been shown to be registered in the country of residence of the Respondent,
Panama. See to this effect, inter alia, Advanced Magazine Publishers Inc.
v. Computer Dazhong,WIPO Case No. D2003-0668.
As described above it is clear that the disputed domain
names, the corresponding websites of which all appear to have the same content,
are used to not only promote Complainant’s goods but also to promote competing
products (pharmaceuticals) as well as related products such as flu masks and
books. This is done either on the website itself or through links to other websites.
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. See, inter alia,
Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784 and L´Oréal,
Biotherm, Lancôme et Beauté & Cie v. Unasi, Inc,WIPO
Case No. D2005-0623.
Therefore, the Panel finds that the domain name was registered and is being used in bad faith.
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 names <ordertamiflu.org>, <tamifluonline.net>, <tami-flu.org> and <tamifluvaccine.net> be transferred to Complainant.
Knud Wallberg
Sole Panelist
Dated: June 26, 2006
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