The Complainant is F. Hoffmann-La Roche AG, Basel, Switzerland, represented internally.
The Respondent is Bulent Sedef, Izmir, Turkey.
2. The Domain Name and Registrar
The disputed domain name <buy-tamiflu-online.com> is registered with Melbourne IT trading as Internet Names Worldwide.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 23, 2008. On April 24, 2008, the Center transmitted by email to Melbourne IT trading as Internet Names Worldwide a request for registrar verification in connection with the domain name at issue. On April 28, 2008, Melbourne IT trading as Internet Names Worldwide transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 April 28, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was May 18, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 20, 2008.
The Center appointed Jane Lambert as the sole panelist in this matter on May 26, 2008. 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 subsidiary companies form one of the largest pharmaceutical groups in the world with interests in over 100 countries. Its products include the anti-virus drug TAMIFLU which is registered as a trademark with the WIPO pursuant to the Madrid Protocol under registration numbers 713623 and 727329. TAMIFLU is frequently in the news as a remedy against bird flu. Governments around the world have begun to stockpile the drug as a precaution against a bird flu pandemic.
The Respondent appears to run an online pharmacy called Order Pharma UK from “www.orderfpharma.co.uk” which offers Tamiflu as well as Xenical, Cialis, Viagra and a number of other well known pharmaceuticals. Despite the name of the site and the use of the .uk country domain name, the connection with the United Kingdom seems pretty tenuous. No contact address is supplied. Prices are in US dollars rather than sterling and the continental comma rather than an Anglo-Saxon full stop is used to denote the decimal point in prices (e.g. “Brand Tamiflu of Roche in 75 mg is sold as 10 tablets pack from $74,90 and 60 capsules is sold as $ 399,90”).
5. Parties’ Contentions
A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to the above-mentioned trademark in that it incorporates the word TAMIFLU in its entirety. It quotes Mr. Thomas Webster’s observation in Lilly Icos LLC v. John Hopking/Neo net Ltd.,
WIPO Case No. D2005-0694 that “generally, a user of mark may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it”.
It says that the Respondent has no rights or legitimate interest in the name. The Complainant has never licensed, permitted, authorized or consented to the registration of the disputed domain name. Relying on the decisions in Hoffmann La Roche Inc. v. #1 Viagra Prospecta Xenical & More Online Pharmacy, WIPO Case No. D2003-0793 and in Pfizer Inc. v. jg a/k/a Josh Green,WIPO Case No. D2004-0784 it submits that the sale by an online distributor of a trademarked product does not give the distributor any right or interest in the mark and in particular does not entitle it to register a domain name that uses or incorporates the mark.
The Complainant submits that the domain name was registered and is being used in bad faith. It argues that it is inconceivable that the Respondent was unaware of the Complainant’s trademarks at the time he registered the domain name. He uses the domain name to attract traffic to his site thereby taking advantage of the Complainant’s reputation and goodwill.
For all the above reasons, the Complainant seeks the transfer of the disputed domain name.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove that:
(i) the disputed 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.
The Complainant must prove that each of these three elements is present.
A. Identical or Confusingly Similar
The Complainant has annexed copies of the certificates of the registrations mentioned in paragraph 4 above to the Complaint and has thereby proved that it has rights in the word mark TAMIFLU.
The disputed domain name differs from the registered trademark TAMIFLU only in the addition of the words “buy” and “online” and the suffix “com”. That is not enough to dispel confusion. If authority is needed for such a seemingly self-evident proposition, the Panel relies on the decision in Lilly Icos LLC v. John Hopking/Neo net Ltd., WIPO Case No. D2005-0694 and the cases cited therein.
Accordingly, the Complainant has proved that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The evidence on this element is that the Complainant has never licensed, permitted, authorized or consented to the registration of the disputed domain name and that the Respondent uses the domain name as the URL for its online pharmacy.
Paragraph 4(c) of the Policy lists some other circumstances in which a respondent can show that he or she has rights or legitimate interests in a domain name. The only one that could possibly apply here is paragraph 4(c)(i) which permits the use of a domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services. The cases referred to by the Complainant mentioned in the second paragraph of 5A above are abundant authority for the proposition that the offer for sale of a trademarked product together with products competing with a complainant’s products does not entitle a respondent to register a domain name that uses or incorporates a complainant’s trademark. Accordingly, the Panel concludes that the Respondent’s use of the domain name falls outside the scope of paragraph 4(c)(i).
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a number of circumstances in which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. One of these circumstances is using the domain name intentionally to attract, for commercial gain, Internet users to a web site by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the site (paragraph 4(b)(iv) of the Policy).
The obvious inference to be drawn from using the domain name <buy-tamiflu-online.com> as a URL for the Respondent’s online pharmacy site is that the Respondent intended to attract traffic to that site. Internet users are likely to believe that a site identified by a name incorporating the TAMIFLU mark must belong to or at least be approved by the Complainant. Once on the site some of those users can be expected to buy pharmaceuticals from the Respondent from which he will derive commercial gain. Such use falls full square within paragraph 4(b)(iv) and constitutes evidence of registration and use in bad faith.
The Complainant has therefore proved that the domain name has been registered and is being used in bad faith.
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.com> be transferred to the Complainant.
Jane Lambert Sole Panelist
Dated: June 9, 2008
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