tamiflu-pharmacy.com

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

F. Hoffmann-La Roche AG v. Cook Consultancy UK Ltd

Case No. D2006-1487

1. The Parties

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

The Respondent is Cook Consultancy UK Ltd, Essex, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <tamiflu-pharmacy.com> (“Domain  Name”) is registered with Tucows Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 20, 2006. On November 22, 2006, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the domain name at issue. On November 29, 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, 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 November 29, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was December 19, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 21, 2006.

The Center appointed Richard Tan as the sole panelist in this matter on January 16, 2007. 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, along with its affiliated companies, is a leading research-focused healthcare group in the field of pharmaceuticals and diagnostics. The Complainant has global operations in more than 100 countries and holds trademark registrations for TAMIFLU (which designates an antiviral pharmaceutical preparation, namely a product against flu) worldwide. The Complainant’s trademark registrations include, but are not limited to International Registration No. 713623 (priority date – May 4, 1999) & International Registration No. 727329 (priority date – September 23, 1999).

The Domain Name registered by the Respondent resolves to a website containing a series of hyperlinks to websites offering products such as gum, books, and pharmaceutical drugs. The Domain Name currently remains active.

5. Parties’ Contentions

A. Complainant

The Complainant contends as follows:

(a) The domain name is confusingly similar to the Complainant’s well-known trademark TAMIFLU

The Complainant contends that its use and registration of the TAMIFLU mark predates the Respondent’s registration of the Domain Name and that the Domain Name registered by the Respondent is confusingly similar to the Complainant’s registered trademark as it incorporates the TAMIFLU mark in its entirety as part of the Domain Name.

The Complainant avers that the addition of the word “pharmacy” forming the second part of the Domain Name does not detract from the likelihood of confusion as consumers are likely to associate the Respondent as being endorsed, sponsored or affiliated with the Respondent by virtue of the TAMIFLU antecedent.

The Complainant draws attention to Merrell Pharmaceuticals Inc. and Aventis Pharma SA. v. Lana Carter,WIPO Case No. D2004-1041, where it was held that “combining the Complainants’ Trademark with a generic term such as ‘pharmacy’ fails to distinguish the disputed domain name from the Trademark and, according to some WIPO Panels, can serve to aggravate the likely confusion”.

The Complainant further avers that its TAMIFLU mark has gained notoriety due to references in the mass media and various governments stockpiling its TAMIFLU product and that the Respondent’s registration and use of the Domain Name will increase the likelihood of confusion.

(b) The Respondent has no rights or interests in respect of the Domain Name

The Complainant contends that it has exclusive rights for TAMIFLU and that no authorisation or consent was given to the Respondent to use TAMIFLU in the Domain Name.

The Complainant asserts that the Domain Name clearly alludes to the Complainant and that the Respondent is using the Domain Name for commercial gain with the purpose of capitalising on the fame of the Complainant’s TAMIFLU mark.

The Complainant refers, inter alia, to Sigikid H. Scharrer & Koch GmbH & Co. KG, MyBear Marketing-und Vertriebs GmbH, Mr. Thomas Dufner v. Bestinfo, WIPO Case No. D2004-0990 where it was held that “the sole diversion of Internet traffic by Respondent to other, unrelated websites, does not represent a use of the Domain Name in connection with a bona fide offering of goods and services. Rather, the conduct of Respondent serves the purpose of generating revenues, e.g. from advertised pay-per-click products”.

The Complainant avers that the Respondent’s sole reason in obtaining registration and use of the Domain Name was to benefit from the reputation of the TAMIFLU trademark and illegitimately trade on its fame for commercial gain and profit. The Complainant contends that there are no reasons for the Respondent to have any right or interest in the Domain Name.

(c) The Respondent’s registration and use of the Domain Name is in bad faith

The Complainant adduces as evidence, print-outs from the Tucows Whois Utility indicating October 20, 2005 as the date of registration of the Domain Name. The Complainant contends that as of this date, the Respondent was without doubt, aware of the Complainant’s well-known TAMIFLU product and mark.

The Complainant refers to Hoffmann-La Roche Inc. v. WhoisGuard,WIPO Case No. D2005-1288 in which the Panel stated “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”.

The Complainant avers that in registering and using the Domain Name, the Respondent is intentionally attempting to attract Internet users to the Respondent’s website by creating a likelihood of confusion with the well-known TAMIFLU mark so as to mislead consumers as to the source, affiliation and endorsement of the Respondent’s websites and of the products and services posted and linked to the Respondent’s site. The Complainant contends that this was done with the intention of commercial gain.

B. Respondent

The Respondent has not filed a Response.

6. Discussion and Findings

The Complainant has the burden of proving each of the following three elements under paragraph 4(a) of the Policy in order to be entitled to a transfer of the Domain Name:

(i) that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) that the Domain Name has been registered and is being used in bad faith.

The Respondent is required under the Rules to submit a Response to the Complaint within twenty days of the date of commencement of the administrative proceedings. In the event of a failure to submit a Response, paragraph 5(e) of the Rules provides that absent any exceptional circumstances, the Panel is to decide the dispute “based upon the complaint”. Paragraph 14(b) of the Rules further provides that if a party, in the absence of exceptional circumstances, fails to comply with any provision of the Rules, the Panel is entitled to “draw such inferences” from the Respondent’s failure to comply with the Rules “as it considers appropriate”.

As the Respondent has not submitted a Response within the prescribed time limits and has in any event, offered to transfer the Domain Name, and there having been no exceptional circumstances brought to the attention of the Panel in accordance with paragraph 5(e) of the Rules, this Panel is entitled to decide the dispute based on the Complaint and to accept as true, the factual averments of the Complaint for the purposes of these proceedings, see Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009.

The Respondent’s default and belated offer of transfer does not lead to an automatic ruling in favor of the Complainant. The burden remains on the Complainant to establish, on a balance of probabilities, that it is entitled, under the Policy, to a transfer of the Domain Name, see World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001.

A. Identical or Confusingly Similar

The Complainant is required under paragraph 4(a)(i) of the Policy to prove that the Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights.

The Complainant contends that it is the owner of numerous trademark registrations for TAMIFLU worldwide and has furnished evidence in the form of copies of the registration certificates for International Registration Nos. 713623 and 727329 which designate, amongst other countries, Great Britain. It contends that it has exclusive rights to the use of the TAMIFLU mark.

Having regard to the evidence adduced by the Complainant, and considering that the evidence is unchallenged as no Response has been filed by the Respondent, this Panel accepts that the Complainant has rights in the TAMIFLU mark and that it is the proprietor of a substantial goodwill and reputation in the mark within the meaning of paragraph 4(a)(i) of the Policy.

It is apparent from a visual and phonetic comparison of the Complainant’s trademark and the Domain Name, that the primary component of the Domain Name <tamiflu-pharmacy.com> is visually and phonetically identical to the Complainant’s TAMIFLU mark and the Panel finds that the Domain Name is visually and phonetically similar to the Complainant’s trademark.

On the issue of confusing similarity, the Panel notes that previous decisions have established that the inclusion of a common or generic term following a trademark does not create a new or different mark in which the Respondent has rights: see Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico, WIPO Case No. D2000-0477 and Parfums Christian Dior v. 1 Netpower, Inc.,WIPO Case No. D2000-0022.

The Respondent’s addition of the generic term “pharmacy” does not reduce the potential for confusion with the Complainant’s famous mark. Further, the presence of punctuation marks such as hyphens has also been established by previous decisions as not reducing substantial similarity or the potential for confusion, see Chernow Communications, Inc. v. Jonathan D. Kimball,WIPO Case No. D2000-0119.

In this case, the Panel considers that the addition of the term “pharmacy” as the secondary component of the Domain Name is likely to add to the confusion, taking into account the fact that the Complainant is in the business of manufacturing pharmaceutical products.

The Panel accordingly finds that the Domain Name is confusingly similar to a trademark or trademarks in which the Complainant has rights within the meaning of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant is also required under paragraph 4(a)(ii) of the Policy to prove that the Respondent has no rights or legitimate interests in the Domain Name. The onus is initially on the Complainant to establish a prima facie case, and once this has been done, the onus shifts to the Respondent to prove the contrary. See Lucasfilm Ltd. and Lucas Licensing Ltd. v. Cupcake City and John Zuccarini, WIPO Case No. D2001-0700.

It has also been recognized by many Panels that it is difficult for the Complainant to prove a negative for the purposes of paragraph 4(a)(ii) of the Policy, since it raises matters within the knowledge of the Respondent. Accordingly, many Panels have held that it is sufficient that the Complainant show a prima facie evidence in order to shift the burden of proof on the Respondent (see, for example, Anti Flirt S.A. and Mr. Jacques Amsellem v. WCVC, WIPO Case No. D2000-1553, Intocast AG v. Lee Daeyoon, WIPO Case No. D2000-1467).

In the present case, the Complainant asserts that there is no reason why the Respondent should have any rights or legitimate interests in respect of the Domain Name. The Complainant submits that the Respondent’s website is a search engine composed of sponsored links which are not legitimately associated in any way with the Complainant and that the Complainant has not given any authorisation or consent to the use of the TAMIFLU mark by the Respondent.

Even in the absence of a Response, this Panel remains obliged to consider whether any of the (non-exhaustive) circumstances provided in paragraph 4(c) of the Policy are present to support a finding of the Respondent having rights or legitimate interests in respect of the Domain Name, namely:

(i) before any notice to the Respondent of the dispute, the Respondent’s use 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 it has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate non-commercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers.

If any of the above circumstances is established, the Respondent may be said to have rights to or legitimate interests in the Domain Name for the purposes of paragraph 4(a)(ii) (see Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827), in which event, the Complaint must be denied.

The evidence filed by the Complainant indicates that the Respondent’s site contains a number of hyperlinks to sponsored sites which are unrelated to the Complainant or the Complainant’s products and are associated with products that are arguably detrimental to the goodwill and corporate image of the Complainant.

The Respondent has not filed any evidence to suggest otherwise.

Further, there appears to be no correlation between the contents of the site and the Respondent (whose company name appears to indicate its status as a consultancy firm) or the Complainant.

Prior decisions have recognised that consideration of good faith is a key issue in determining whether use is bona fide under the Policy. The Panel notes that the Respondent has used the Domain Name in such a way as to facilitate the offering of sale of goods by third parties. Assuming (without deciding) that the offer itself is bona fide, the Panel nevertheless considers that on balance the evidence does not support a determination of bona fide use in the circumstances since the links featured on the Respondent’s site link to websites offering products which are unrelated to the Complainant’s area of specialisation within the pharmaceutical industry and are not related to antiviral preparations in any way.

Rather, given the prominence and fame of the Complainant’s marks, as discussed below, the Panel considers it more probable than not that the Respondent intended to benefit from the widespread reputation of the Complainant’s marks. That being the case, the Respondent cannot in the circumstances be using the domain name in connection with a bona fide offering of goods or services since “use which intentionally trades on the fame of another cannot constitute a ‘bona fide’ offering of goods or service. . . . to conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation which is obviously contrary to the intent of the Policy”. (See Barnes & Noble College Bookstores, Inc. v. Leasure Interactive, WIPO Case No. D2001-1216 and Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”,WIPO Case No. D2000-0847.

Taking into consideration the evidence adduced by the Complainant, the Panel infers that the Respondent has no trademarks or service marks identical to the TAMIFLU mark and concludes that the Respondent has no rights or legitimate interests in the Domain Name.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must, in addition to the matters set out above, demonstrate that the Domain Name has been registered and used in bad faith.

Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances which, “if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith”, namely:

(i) circumstances indicating that the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or

(ii) the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that it has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(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 its website or location or of a product or service on its website or location.

The Complainant avers that the Respondent’s use of the Domain Name is in bad faith since the use is directed to advertising links to websites promoting and offering the products and services of third parties, especially in the pharmaceutical field.

This Panel is satisfied on the evidence presented that the Respondent, in deliberately registering and using to link to websites offering pharmaceutical products and services a domain name which was highly similar to the Complainant’s trademark, clearly had knowledge of the Complainant and its services at the time of registration.

The registration and use for competing advertising links of a domain name that is so similar to the Complainant’s trademark leads to the inference that the Respondent registered and used the Domain Name to intentionally attract, for commercial gain, internet users to its site by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, and endorsement of the Respondent’s website within the meaning of paragraph 4(b)(iv) of the Policy and disrupting the business of the Complainant within the meaning of paragraph 4(b)(iii) of the Policy.

Accordingly, based on the totality of the evidence, the Panel finds that the Domain Name has been registered and is being used in bad faith by the Respondent within the meaning of paragraph 4(a)(iii) of the Policy.

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-pharmacy.com> be transferred to the Complainant.

Richard Tan
Sole Panelist

Dated: January 30, 2007