Complainant is Hoffmann-La Roche Inc., Nutley, New Jersey, United States of America, represented by Lathrop & Gage L.C.
Respondent is WhoisGuard, Westchester, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <buy-tamiflu.net> (the “Disputed Domain Name”) is registered with eNom, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 23, 2007. March 27, 2007, the Center transmitted by e-mail to eNom, Inc. a request for registrar verification in connection with the Disputed Domain Name. On April 11, 2007, 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 Respondent of the Complaint, and the proceedings commenced on April 11, 2007. In accordance with the Rules, Paragraph 5(a), the due date for the Response was set for May 1, 2007. Respondent did not submit a response. Accordingly, the Center notified the Respondent of its default on May 4, 2007.
The Center appointed Steven Auvil as the sole panelist in this matter on May 24, 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
Complainant is the owner of the TAMIFLU mark, which was used for the first time in connection with a pharmaceutical product for the treatment and prevention of influenza in 1999. In the United States of America, Complainant owns two registrations for TAMIFLU-related marks: Reg. No. 2,439,305 for the word mark TAMIFLU for a pharmaceutical antiviral preparation (Registered March 27, 2001, reciting a first use in commerce date of November 12, 1999); and Reg. No. 2,576,662 for a TAMIFLU logo for a pharmaceutical antiviral preparation (Registered June 4, 2002, reciting a first use in commerce date of October 13, 2000).
Complainant also submitted documentation evidencing that Complainant’s parent company, F. Hoffmann-La Roche AG (“Roche”), has continuously owned and used an Internet domain name incorporating the TAMIFLU mark (<tamiflu.com>) for an active website through which Complainant’s customers obtain information about the TAMIFLU antiviral product manufactured and sold by Roche.
The Disputed Domain Name was first registered with eNom, Inc. on June 21, 2005. Complainant submitted evidence that, on May 3, 2006, Complainant, through its counsel, sent a letter by facsimile, e-mail, and certified mail to Respondent (to the addresses and facsimile number listed in the WHOIS record for the Disputed Domain Name) advising Respondent that the registration of the Disputed Domain Name infringed Complainant’s trademark rights and requesting that Respondent transfer the Disputed Domain Name to Complainant. Complainant contends that Respondent never responded to this letter; approximately ten months later, Complainant filed the Complaint with the Center.
5. Parties’ Contentions
A. Complainant
In its Complaint, Complainant contends that the Disputed Domain Name is confusingly similar to its TAMIFLU-related marks.
In addition, Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Name, that Respondent was not authorized by Complainant to use the TAMIFLU marks, and that Respondent is using the TAMIFLU marks for commercial gain. Complainant further contends that Respondent was not using the Disputed Domain Name in connection with a bona fide offering of goods or services.
Finally, Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith because Respondent registered and is using it in order to attract Internet users to a website to sell a non-FDA approved form of a drug in the United States of America or to promote other “objectionable content.” Complainant contends that when Internet users now type in the Disputed Domain Name in a web browser’s URL window, users are directed to a website operated by Complainant, namely, “www.rocheusa.com/products/tamiflu”, which neither Complainant nor its parent company has authorized. However, when the Panel typed in the Disputed Domain Name into a web browser’s URL window, the Panel was directed to a website offering prescriptions for a variety of pharmaceutical products, including the “Tamiflu” product.
Complainant is seeking transfer of the Disputed Domain Name to Complainant.
B. Respondent
Respondent did not respond to Complainant’s contentions.
6. Discussion and Findings
The Panel’s jurisdiction is limited to a determination whether Complainant has proved the necessary elements of a claim for transfer or cancellation of a domain name under the Policy and the Rules. Policy, paragraph 4(a). The discussion and decision will be governed by the terms of the Policy.
To obtain relief, Paragraph 4(a) of the Policy requires Complainant to prove each of the following:
(1) that the Disputed Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) that Respondent has no rights or legitimate interest in the Disputed Domain Name registered by Respondent; and
(3) that the Disputed Domain Name registered by Respondent has been registered and used in bad faith.
In view of Respondent’s failure to submit a Response, the Panel will decide this administrative proceeding on the basis of Complainant’s undisputed allegations for which there is support, pursuant to Paragraphs 5(e), 14(a) and 15(a) of the Rules, and draw such inferences it considers appropriate, pursuant to Paragraph 14(b) of the Rules.
A. Identical or Confusingly Similar
Respondent does not dispute, and the Panel finds, that the Disputed Domain Name registered by Respondent is confusingly similar to Complainant’s distinctive and federally-registered TAMIFLU marks. Even though more relevant under the second and third elements, the Panel notes that both TAMIFLU marks were registered on the principal register prior to June 21, 2005, the date of Respondent’s registration of the Disputed Domain Name. However, Complainant’s rights in the TAMIFLU marks date back to as early as November 12, 1999, when the TAMIFLU word mark was first used for a pharmaceutical antiviral preparation. The TAMIFLU word mark is therefore almost eight years old, giving Complainant priority over those with competing claims to the TAMIFLU mark based upon later use. 15 U.S.C. § 1057(c).
This Panel finds that the Disputed Domain Name is nearly identical or confusingly similar to Complainant’s TAMIFLU word mark because it fully incorporates that mark. See PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS),
WIPO Case No. D2003-0696 (October 28, 2003) (“incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark”). Moreover, this Panel finds, as several WIPO panels adjudicating previous decisions involving well-known marks have already found, that the addition of a descriptive word (here, “buy”) as a prefix to the mark does not obviate the confusing similarity between the Disputed Domain Name and Complainant’s TAMIFLU marks. See, e.g., Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Kil Inja WIPO Case No. D2000-1409 (December 9, 2000) (addition of ordinary descriptive word as prefix or suffix to a world-famous mark such as SONY does not detract from overall impression of the dominant part of the name, the famous mark); America Online, Inc. v. Chris Hoffman,
WIPO Case No. D2001-1184 (November 19, 2001) (use of short phrases with well-known mark still found confusingly similar to that mark).
For these reasons, the Panel concludes that the Disputed Domain Name is confusingly similar to the TAMIFLU marks, federally-registered trademarks in which Complainant has rights.
B. Rights or Legitimate Interests
Under the Policy, legitimate interests in a domain name may be demonstrated by showing that: (i) before any notice of this dispute, Respondent used, or demonstrably prepared to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; (ii) Respondent has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or (iii) 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 trademark at issue. Policy 4(c).
Complainant contends that Respondent has no rights or legitimate interest in the Disputed Domain Name. Respondent has not submitted any arguments or evidence in rebuttal. Nothing in the record suggests that Respondent is commonly known by the Disputed Domain Name or that, before any notice of this dispute, Respondent used, or demonstrably prepared to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services. Finally, there is no evidence that Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert customers or to tarnish the TAMIFLU mark. Indeed, Respondent registered the Disputed Domain Name several years after Complainant established rights in its TAMIFLU marks through extensive use. In short, there is no evidence from which the Panel could conclude that Respondent has rights in or a legitimate interest in the Disputed Domain Name. Compare Justerini & Brooks Limited v. Juan Colmenar Rueda as Registrant “Colmenar”, aka “jokolm” / “JCRco.”,
WIPO Case No. D2000-1397 (December 11, 2000) (finding that, given the notoriety and distinctiveness of the JUSTERINI & BROOKS trademark, it was not one which another trader would legitimately choose unless the trader sought to create an impression of association with that complainant, create an impression of association with JUSTERINI & BROOKS products, attract business from that complainant, misleadingly divert members of the public, and/or damage the reputation and business of that complainant).
For these reasons, in accordance with Paragraph 4(a)(ii) of the Rules, the Panel finds that Respondent has no rights or legitimate interests in the Disputed Domain Name.
C. Registered and Used in Bad Faith
Complainant also argues that Respondent registered and used the Disputed Domain Name in bad faith. Specifically, Complainant argues that Respondent’s bad faith is reflected in the fact that: (1) Complainant’s TAMIFLU mark is an invented and coined mark that has a strong worldwide reputation; (2) there exists no relationship between Respondent and Complainant and Complainant has not given Respondent permission to use its TAMIFLU mark for Respondent’s commercial gain; and (3) Respondent has in the past used the Disputed Domain Name to sell a non-FDA approved form of the drug in the United States of America or to direct users to a website containing “objectionable” content.
Here, Complainant has not submitted hard evidence that would support its contention that Respondent used the Disputed Domain Name to sell a non-FDA approved form of the drug in the United States. Complainant has also not specifically alleged exactly what kind of “objectionable” content appeared on Respondent’s website in the past other than its unsupported assertion that Respondent has used the Disputed Domain Name to sell a non-FDA approved form of the drug in the United States of America.
However, the unrebutted evidence in this case does demonstrate that Respondent has used and/or is using Complainant’s federally-registered and well-known TAMIFLU mark in the Disputed Domain Name to attract Internet customers to a web page offering users an opportunity to obtain prescriptions for a variety of health-related products, including Complainant’s “Tamiflu” product. According to Paragraph 4(b)(iv) of the Policy, evidence of bad faith registration and use is shown when registration of a domain name occurs in order to utilize another’s known trademark by attracting Internet users to a website for commercial gain. See, e.g., COMSAT Corporation v. Ronald Isaacs,
WIPO Case No. D2004-1082 (February 18, 2005) (finding bad faith where the respondent linked the disputed domain name to another website respecting which the respondent presumably received a portion of the advertising revenue in consideration of directing traffic to that website); see also Online, Inc. v. Tencent Commc. Corp., FA 93668 (National Arbitration Forum, March 21, 2000) (finding bad faith where the respondent registered and used the disputed domain name to attract users to a website sponsored by the respondent). It is apparent to the Panel, and the Panel finds, that Respondent registered and used the Disputed Domain Name containing the TAMIFLU mark in bad faith in order to attract traffic to its website for commercial gain. Compare Pepsico, Inc. v. Zhavoronkov,
WIPO Case No. D2002-0562 (July 30, 2002) (“blatant appropriation of a universally recognized trademark is of itself sufficient to constitute bad faith”). See also Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co.,
WIPO Case No. D2000-0163 (May 1, 2000) (bad faith is found where a domain name “is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith”).
For these reasons, the Panel concludes that the bad faith element of the Policy is satisfied.
7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and Paragraph 15 of the Rules, the Panel orders that the domain name <buy-tamiflu.net > be transferred to Complainant.
Steven Auvil Sole Panelist
Dated: June 10, 2007
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