WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

F. Hoffmann-La Roche AG v. Protected Domain Services/MediaTec Co.Ltd., Sandro Zeller

Case No. D2009-0635

1. The Parties

The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, internally represented.

The Respondents are MediaTec Co.Ltd., Sandro Zeller of Bangkok, Thailand;

Protected Domain Services of Colorado, United States of America.

2. The Domain Name and Registrar

The Disputed Domain Name <tamiflu75.com> is registered with Name.com LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 12, 2009. On May 12, 2009, the Center transmitted by email to Name.com LLC a request for registrar verification in connection with the Disputed Domain Name. On May 13, 2009, Name.com LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 15, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on May 15, 2009. 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” or “UDRP”), 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 May 18, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was June 7, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 8, 2009.

The Center appointed Eva Fiammenghi as the sole panelist in this matter on June 18, 2009. 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.

The Complainant confirms that there are no other legal proceedings that have been commenced or terminated in connection with the Disputed Domain Name <tamiflu75.com>.

The language of the Complaint is English language.

4. Factual Background

The Complainant is a Swiss global health-care company that operates worldwide under two divisions: Pharmaceuticals and Diagnostics.

The Complainant's mark TAMIFLU is protected as a trademark in a lot of countries worldwide. The following international registrations are only given as an example:

- TAMIFLU registration no. 713623 filed on June 3, 1999, in class 5.

- registration no. 727329 filed on February 7, 2000, in class 5.

The mark TAMIFLU designates an antiviral pharmaceutical preparation, namely a product against flu. The Complainant's mark has been referred to in many mass media in the past years and months, as governments have taken the decision to stockpile the product designated by the mark TAMIFLU against viral flu-type infections.

The Disputed Domain Name <tamiflu75.com> was registered on April 27, 2009.

5. Parties' Contentions

A. Complainant

The Complainant claims that it has rights to the above-mentioned trademark and no license, permission, authorization or consent has been extended to the Respondent to use the Disputed Domain Name which is confusingly similar to Complainant's trademark.

The Complainant contends that the Respondent's interest in respect of the Disputed Domain Name is only to benefit from the reputation of the trademark TAMIFLU and illegitimately trade on its fame for commercial gain and profit. The Complainant cites, in this connection, Hoffmann-La Roche Inc. v. #1 Viagra Propecia Xenical & More Online Pharmacy, WIPO Case No. D2003-0793.

The Complainant asserts that the Disputed Domain Name was registered in bad faith, as the Respondent must have had knowledge of the Complainant's well-known product/mark TAMIFLU.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complaint and draw such interferences from the non-compliance as it considers appropriate, paragraph 14(b).

A. Identical or Confusingly Similar

The Complainant is the exclusive owner of the trademarks TAMIFLU:

- TAMIFLU International registration no. 713623 filed on June 3, 1999, in class 5.

- International registration no. 727329 filed on February 7, 2000, in class 5.

The Complainant also has owned the domain name <tamiflu.com> since June 28, 1999.

Although the Disputed Domain Name <tamiflu75.com> is not identical to the Complainant's trademark TAMIFLU, the Disputed Domain Name contains the Complainant's trade mark TAMIFLU in full and only differs from the trademark by the addition of the number “75”.

It is clear that the number “75” is related to standard prophylactic dosage of the product that according to the Complainant is in fact 75 mg.

On the above basis the Panel finds the Disputed Domain Name to be confusingly similar to the Complainant's trademark.

B. Rights or Legitimate Interests

The Respondent is using the Disputed Domain Name for commercial purposes. He has not been authorized by the Complainant to use the TAMIFLU trademark.

Paragraph 4(c) of the Policy reads as follows:

“Any of the following circumstances, in particular, but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The Complainant has demonstrated that the website located at the Disputed Domain Name used to display information and links to services competing with those of the Complainant. The Panel does not find such use of the Disputed Domain Name to be bona fide in the context of paragraph 4(a)(i) of the Policy in this case.

Further, there is no other circumstance indicating that the Respondent would have rights or legitimate interests to the Disputed Domain Name in accordance with paragraph 4(c) of the Policy.

On this basis the Panel finds that the Complainant has satisfied the second point of the Policy 4(a)(ii).

C. Registered and Used in Bad Faith

The Respondent, by using the Disputed Domain Name, is intentionally attempting to mislead Internet users and confuse them so as to attract them to other links posted at the Disputed Domain Name making them believe that the websites behind those links are associated or recommended by Complainant.

The Respondent is advertising the very same product of the Complainant: (including a picture of the packaging) on his website.

The Disputed Domain Name at issue was further being used to divert Internet users to other sites offering services that compete with those of the Complainant.

On the basis of the above, the Panel finds that Respondent registered the Disputed Domain Name <tamiflu75.com> to attract Internet users, for commercial gain, by creating a likelihood of confusion with the Complainant's trademark (Policy, paragraph 4(b)(iv)).

Accordingly, pursuant to paragraph 4(b) of the Policy, this Panel finds that Disputed Domain Name was registered and has been used in bad faith by the Respondent.

On this basis the Panel finds that the Complainant has satisfied the third and last point of the Policy 4(a)(iii).

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 Disputed Domain Name, <tamiflu75.com>, be transferred to the Complainant.

Eva Fiammenghi
Sole Panelist

Dated: July 1, 2009