Complainant is Hoffmann-La Roche Inc., Nutley, New Jersey, United States of America, represented by Lathrop & Gage L.C., U United States of America.
Respondent is Uniline Ltd., Mahe, Seychelles.
2. The Domain Name and Registrar
The disputed domain name <buy-tamiflu-online.net> registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 23, 2007. On March 28, 2007, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On March 28, 2007, Go Daddy Software transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. In response to a notification from the Center of a change in registrant information, Complainant filed an amendment to the Complaint on April 23, 2007. 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 April 25, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was May 15, 2007. The Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 18, 2007.
The Center appointed Ross Carson as the sole panelist in this matter on June 5, 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, together with its affiliated companies, (“Roche”) is one of the leading manufacturers of pharmaceutical and diagnostic products. The TAMIFLU mark of Roche is protected as a trademark for a pharmaceutical antiviral preparation in a multitude of countries worldwide. TAMIFLU is registered to Complainant in the United States Patent and Trademark Office under Reg. No. 2,439,305 for the goods pharmaceutical antiviral preparation in International Class 5, having a priority date of April 26, 1999. Complainant also owns the mark TAMIFLU and Design registered on June 4, 2002 under Reg. No. 2,576,662 for the goods pharmaceutical antiviral preparation in International Class 5.
Many governments throughout the world have decided to stockpile the product TAMIFLU against bird flu. The assembling of stockpiles of Tamiflu antiviral preparations has been widely covered in the media in the past year and the product has become well known in the United States of America and throughout the world.
Complainant’s parent company F. Hoffman- La Roche AG (collectively, “Roche”) registered the domain name <tamiflu.com> on June 28, 1999. Complainant’s customers obtain information online as to the TAMIFLU antiviral product manufactured and sold by Complainant at the website associated with the domain name <tamiflu.com>.
The domain name in dispute was registered on October 28, 2005.
5. Parties’ Contentions
A. Complainant
A.1 Identical or Confusingly Similar
Complainant submits that “Numerous [UDRP] Panel decisions have established that the addition of words, letters or numbers to a mark used in a domain name does not alter the fact that the domain name is confusingly similar to the mark. ...Generally, a user of a mark ‘may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it.’ J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23:50 (4th ed. 1998). See General Electric Company v. CPIC NET and Hussain Syed,
WIPO Case No. D2001-0087.
Complainant further submits that Respondent’s domain name incorporates the whole of Complainant’s mark and adds the words “buy” and “online”. The addition of the words “buy” and “online” in Respondent’s domain name does nothing to detract from or disassociate the word TAMIFLU and the Complainant. See America Online, Inc. v. Anson Chan,WIPO Case No. D2001-0004.
A.2 No Rights or Legitimate Interests in respect of the Domain Name
Complainant submits that Respondent has no rights or legitimate interests in the domain name in dispute. “Tamiflu” is not a word and has no independent meaning other than in connection with Complainant’s trademark. Complainant has not authorized Respondent to use its trademark TAMIFLU or to incorporate the trademark into any domain name or trade name. Furthermore, Complainant has never granted Respondent a license to use the TAMIFLU mark. In fact, Respondent’s use of the disputed domain name indicates that the name is being used because of the goodwill created by Complainant in the TAMIFLU trademark. Based upon Respondent’s website, it is clear that neither Respondent nor its website has been commonly known by the domain name in dispute.
Complainant further submits that Respondent’s use of Complainant’s TAMIFLU trademark is without authorization or permission from Complainant. Respondent’s acts described herein amount to trademark infringement, and clearly mislead and confuse customers as to the source or origin of the information found on its website. These actions undertaken by Respondent would lead a consumer to believe that Respondent is the source of the TAMIFLU product and related information, or that Respondent’s use of TAMIFLU through the subject domain name, on its website is affiliated with or sponsored by Roche. Complainant states that the use of another’s registered trademark in a confusingly similar domain name does not establish rights or legitimate interests of Respondent in the domain name.
Complainant further submits that Respondent’s unauthorized use of the disputed domain name to solicit sales of Complainant’s TAMIFLU pharmaceutical product through a website containing the TAMIFLU mark is not a bona fide offering of goods and services under the Policy, paragraph 4(c)(i). See G.D. Searle & Co. v. Entertainment Hosting Services, Inc., FA110783 (Nat. Arb. Forum, June 3, 2002).
A.3 Registered and Used in Bad Faith
Complainant submits that its mark TAMIFLU is an invented and coined mark that has an extremely strong worldwide reputation. There exists no relationship between Respondent and Complainant. Complainant has not given Respondent permission to use its famous mark TAMIFLU in a domain name or to use it on Respondent’s website.
Complainant further submits that the only reasonable conclusion is that Respondent was aware of the TAMIFLU trademark when it purchased the domain name in issue. Respondent is, for its own commercial gain, diverting Internet users to a website which sells the TAMIFLU drug under a domain name incorporating TAMIFLU, Complainant’s famous registered trademark, all to the confusion of the public and the detriment of Complainant. See America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004.
Complainant states that by operating the website located through <buy-tamiflu-online.net> Respondent has intentionally attempted to attract for financial gain Internet users to Respondent’s website 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 the goods on the Respondent’s website. See State Fair of Texas v. Granbury.com, FA95288 (Nat. Arb. Forum, September 12, 2000).
Complainant further states that Respondent’s website has no legitimate business connection with Complainant or its TAMIFLU antiviral pharmaceutical preparation. Complainant has not granted Respondent permission or a license of any kind to use the trademark TAMIFLU in a domain name. Such unauthorized use of Complainant’s registered trademarks by Respondent, suggests opportunistic bad faith. See Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,
WIPO Case No. D2000-0163.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The fact that Respondent did not submit a Response does not automatically result in a decision in favor of the Complainant. The failure of Respondent to file a Response results in the Panel drawing certain inferences from the Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences following therefrom in the Complaint as true. Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403.
A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy the Complainant must establish rights in a trademark and secondly that the domain name in dispute is confusingly similar to the trademark in which the Complainant has rights.
The Complainant has established that it is registered as the owner of a United States trademark registrations on the principal register for the trademarks TAMIFLU, U.S. Registration No. 2,439,305, registered for a pharmaceutical antiviral preparation and TAMIFLU and Design, U.S. Registration No. 2,576,662, registered for a pharmaceutical antiviral preparation.
The domain name < buy-tamiflu-online.net> incorporates Complainant’s registered trademark TAMIFLU in combination with descriptive terms “buy”, “online” and “.net”. The slight difference between the domain name in dispute and Complainant’s registered trademarks has no significance under the Policy for purposes of determining whether the domain name is identical or confusingly similar to Complainant’s registered trademark. A finding of confusing similarity is further supported when the descriptive word “online” used by Respondent in association with Complainant’s registered trademark describes the online informational and promotional services provided by Complainant in association with the domain name <tamiflu.com>. See Yahoo! Inc. v. HangzhouHi2000 Info Teck Co, Ltd. a/k/a Hangzhou Shixin Info Tech Co. Ltd., “it is well- established under the Policy that a domain name composed of a trademark coupled with a generic term still is confusingly similar to the trademark”. The addition of “.com” is irrelevant. Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429 (addition of “.com” to mark is irrelevant).
The domain name in dispute incorporating Complainant’s registered trademark TAMIFLU in combination with descriptive words is confusingly similar with Complainant’s registered trademark.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that the Respondent has no rights or legitimate interests in respect of the domain name.
Based on the evidence before the Panel, Respondent is not affiliated with Complainant and has never been authorized by the Complainant to use Complainant’s registered trademark or any trademark confusingly similar thereto.
Respondent’s unauthorized use of the disputed domain name to solicit sales of Complainant’s TAMIFLU pharmaceutical product through a website containing the TAMIFLU mark is not a bona fide offering of goods and services under the Policy, paragraph 4(c)(i). See G.D. Searle & Co. v. Entertainment Hosting Services, Inc., FA110783 (Nat. Arb. Forum, June 3, 2002).
The domain name in dispute is also used by Respondent for a website that includes sponsored links promoting products offered by competitors of Complainant. The use of the domain name in dispute to promote competitors products is not a legitimate use of the domain name.
Respondent did not file any evidence to demonstrate Respondent’s rights or legitimate interests in the domain name in dispute as it was entitled to do pursuant to paragraph 4(c) of the Policy.
The Panel finds that the Complainant has proven that the Respondent does not have any rights or legitimate interests in the domain name in dispute.
C. Registered and Used in Bad Faith
“Tamiflu” is not a word and has no significance except as Complainant’s trademark. The trademark TAMIFLU was widely advertised and promoted by Complainant and its affiliated companies before the registration of the domain name in dispute by Respondent. The trademark TAMIFLU was also the subject of extensive press coverage relating to a pharmaceutical preparation for use in a possible flu pandemic which could be sparked by the bird flu virus HNSI. The TAMIFLU antiviral pharmaceutical preparation was and is widely promoted online at “tamiflu.com” a website of F Hoffman-La Roche AG, Complainant’s parent company. The Panel finds that Respondent registered the domain name in dispute with full knowledge of Complainant’s trademark rights.
Respondent appears to have no legitimate business connection with Complainant or its TAMIFLU antiviral pharmaceutical preparation. Complainant has not granted Respondent permission or a license of any kind to use the trademark TAMIFLU as a trademark or in a domain name.
By operating the website associated with the domain name in dispute <buy-tamiflu-online.net> the Panel finds that Respondent is intentionally attempting to attract for financial gain Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website or the goods on Respondent’s website. See Lily ICOS LLC v. Brian Focker,
WIPO Case No. D2005-0729; State Fair of Texas v. Granbury.com, FA95288 (Nat. Arb. Forum, September 12, 2000).
Accordingly, the Panel finds that Respondent is using the domain name in dispute in bad faith for the purposes of Paragraphs 4(b)(iv) and 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 <buy-tamiflu-online.net> be transferred to Complainant.
Ross Carson
Sole Panelist
Dated: June 18, 2007
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