The Complainant is F. Hoffmann-La Roche AG, of Basel, Switzerland.
The Respondent is Globex International, of Delhi, India.
2. The Domain Name and Registrar
The disputed domain name <buyonlinetamiflu.net> is registered with Go
Daddy Software Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 8, 2006, electronically and on August 10, 2006, in hardcopy. On August 8, 2006, the Center transmitted by email to Go Daddy Software, Inc. a request for registrar verification in connection with the domain name at issue. On August 9, 2006, Go Daddy Software, 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, 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, paragraph 2(a) and paragraph 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 15, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was September 4, 2006. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 5, 2006.
The Center appointed Brigitte Joppich as the sole
panelist in this matter on September 18, 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, inter alia by international registration No. 713 623 TAMIFLU, registered on June 3, 1999, in intl. class 05, and international registration No. 727 329 TAMIFLU (& device), registered on February 7, 2000, in intl. class 05 (the “TAMIFLU Marks”).
The Complainant submitted screen shots of the Respondent’s web page available at <buyonlinetamiflu.net> showing that use of the domain name redirects Internet users to a web site offering advertisements for a variety of pharmaceuticals which compete with the Complainant’s products.
The disputed domain name was registered on June 18, 2006.
5. Parties’ Contentions
A. Complainant
The Complainant contends that each of the three elements specified in the Policy, paragraph 4(a), are given in the present case:
(i) The Domain Name is confusingly similar to the TAMIFLU Marks as it fully incorporates the word “tamiflu” and the addition of the descriptive words “buy” and “online” does not sufficiently distinguish the Domain Name from Complainant’s marks.
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name: Complainant has exclusive rights in the mark TAMIFLU and no license, permission, authorization or consent was granted to Respondent for the use of TAMIFLU in the domain name. Respondent’s sole reason for registering and using the disputed domain name is to benefit from the reputation of the trademark TAMIFLU and illegitimately trade on its fame for commercial gain and profit.
(iii) The Domain Name was registered in bad faith since Respondent had knowledge of the TAMIFLU Marks at the time of the registration of the Domain Name. Furthermore, the Domain Name is also being used in bad faith. Respondent is using the Domain Name to redirect Internet users to a parking website where links to third parties’ products and websites are displayed. Thus, Respondent is attempting (for commercial purposes) to attract Internet users to his website by creating a likelihood of confusion with Complainant’s well-known marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website and of the products or services posted on or linked to Respondent’s website.
B. Respondent
The Respondent did not reply to the Complainant’s
contentions.
6. Discussion and Findings
Under the Policy, paragraph 4(a), the Complainant must prove that each of the following three elements are present:
(i) the Domain Name is identical or confusingly similar to the Complainant’s trademarks, 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.
A. Identical or Confusingly Similar
The disputed domain name fully incorporates the highly distinctive TAMIFLU Marks in which the Complainant has exclusive rights.
The mere addition of the two generic words “buy” and “online”
preceding the trademark does not eliminate the similarity between the Complainant’s
marks and the Domain Name, as “buyonline” is a descriptive component
of the disputed domain name without any significance. It is well established
that a domain name that wholly incorporates a trademark may be confusingly similar
to such trademark for purposes of the Policy despite the addition of descriptive
words (cf. Dr.Grandel GmbH v. Drg Randel Inc., WIPO
Case No. D2005-0829; Microsoft Corporation v. J. Holiday Co., WIPO
Case No. D2000-1493; Lilly ICOS LLC v. John Hopking / Neo net Ltd.,WIPO Case No. D2005-0694; Hoffmann-La
Roche Inc. v. US Online Pharmacies, WIPO Case
No. D2006-0646; F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,
WIPO Case No. D2006-0451).
Furthermore, it is also well established that the specific top level domain
is not an element of distinctiveness that can be taken into consideration when
evaluating the identity and similarity of the Complainant’s trademark
and the disputed domain name (cf. 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).
Therefore the Panel finds that the Complainant has satisfied the requirements of the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Policy, paragraph 4(c), sets out three illustrative circumstances as examples which, if established by the Respondent, shall demonstrate his rights to or legitimate interests in the Domain Name for purposes of the Policy, paragraph 4(a)(ii), i.e.
(i) before any notice to the Respondent of the dispute, the use by the Respondent of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business or other organization) has been commonly known by the Domain Name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert customers or to tarnish the service marks at issue.
The Respondent did not give evidence of any of the circumstances specified in the Policy, paragraph 4(c), or any other circumstances in favor of a right or legitimate interest in the Domain Name.
The Domain Name is highly unlikely to be derived from the Respondent’s personal name nor the name or the nature of the business operated by him, nor is the Respondent commonly known by the Domain Name.
Furthermore, there is no evidence of a non-commercial or fair use of the Domain Name and no evidence of the Respondent’s use or preparation to use the Domain Name in connection with a bona fide offering of goods or services.
The Respondent is rather using the Domain Name as a parking web site with sponsored
links which redirect Internet users to online pharmacies from where they may
buy TAMIFLU products and other pharmaceutical products from competitors of the
complainant. This usage is neither a bona fide offering of goods and
services under the Policy, paragraph 4(c)(i), nor a legitimate non-commercial
or fair use under the Policy, paragraph 4(c)(iii), as the Respondent is exploiting
the Complainant’s trademarks within the Domain Name presumably to obtain
click-through-revenues from Internet users searching for the products of the
Complainant (cf. Sigikid H. Scharrer & Koch GmbH & Co. KG, MyBear
Marketing-und Vertriebs GmbH, Mr. Thomas Dufner v. Bestinfo, WIPO
Case No. D2004-0990; Mamar, Inc. v. Order Your Domains, WIPO
Case No. D2005-1163).
Under these circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name and that the requirement of the Policy, paragraph 4(a)(ii), is also satisfied.
C. Registered and Used in Bad Faith
The Policy, paragraph 4(b), sets out four illustrative circumstances, which for purposes of the Policy, paragraph 4(a)(iii), shall be evidence of the registration and use of the Domain Name in bad faith, including
(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on its website or location.
The Complainant’s pharmaceutical TAMIFLU is well-known. It is therefore inconceivable that the Respondent registered the Domain Name without knowledge of the TAMIFLU marks. This assumption is supported by the fact, that the Respondent registered a Domain Name which is identical with the TAMIFLU marks except for the descriptive term “buyonline”. Furthermore, as the Respondent’s website contains the information regardingsponsored search results for “tamiflu”, the website is showing search results expressly related to the TAMIFLU marks. Therefore, the Panel concludes that the Respondent registered the Domain Name <buyonlinetamiflu.net> with full knowledge of the TAMIFLU marks and therefore in bad faith.
Furthermore, by fully incorporating the TAMIFLU marks into the Domain Name the Respondent is in all likelihood trying to divert traffic indented for the Complainant’s web site to its own for the purpose of earning click-through-revenues from Internet users searching for the Complainant’s website.
The use and exploitation of trademarks to obtain click-through revenues from
the diversion of Internet users has in many decisions been found to be use in
bad faith under the Policy, paragraph 4(b)(iv) (cf. L’Oréal, Biotherm,
Lancôme Parfums et Beauté & Cie v. Unasi, Inc., WIPO
Case No. D2005-0623 with further references).
As a result, the Panel finds that the Respondent has registered the Domain
Name with knowledge of the Complainant’s trademarks and has used the Domain
Name in bad faith under the Policy, paragraph 4(b)(iv), as it attempts to attract,
for commercial gain, Internet users to its web site by creating a likelihood
of confusion with the Complainant’s mark as to the source, sponsorship,
affiliation, or endorsement of the Respondent’s website or location or
of a product or service on its website or location. Therefore, the Panel finds
that the Complainant has satisfied the requirements of the Policy, paragraph
4(a)(iii).
7. Decision
For all the foregoing reasons, in accordance with the Policy, paragraph 4(i), and the Rules, paragraph 15, the Panel orders that the domain name <buyonlinetamiflu.net> be transferred to the Complainant.
Brigitte Joppich
Sole Panelist
Dated: October 5, 2006
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