WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

F. Hoffmann-La Roche AG v. Alexandr Ulyanov, Private Person

Case No. D2009-1590

1. The Parties

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

The Respondent is Alexandr Ulyanov, Private Person of Zarechnij, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <tamiflu-market.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 25, 2009. On November 26, 2009, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain name. On November 27, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com 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” 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 December 3, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was December 23, 2009. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on December 28, 2009.

The Center appointed Keiji Kondo as the sole panelist in this matter on January 13, 2010. 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

A. Trademark Registrations

The Complainant's mark TAMIFLU is protected as trademark in a multitude of countries worldwide. As an example reference is made to the International Registration Nos. 713623 and 727329. Priority date for the former mark TAMIFLU is May 4, 1999.

B. Other Factual Background

(a) The Complainant is together with its affiliated companies one of the world's leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics and has global operations in more than 100 countries.

(b) The mark TAMIFLU designates an antiviral pharmaceutical preparation, namely a product against flu.

5. Parties' Contentions

A. Complainant

The disputed domain name of the Respondent, <tamiflu-market.com>, is confusingly similar to the Complainant's mark, TAMIFLU, seeing that it incorporates this mark in its entirety. The addition of a hyphen “-” followed by the generic term “market” does not sufficiently distinguish the disputed domain name from the Complainant's mark.

In the past years and in particular in the past months, the Complainant's mark TAMIFLU has been referred to in many mass media in view of so called “swine flu”. The trademark's notoriety will increase the likelihood of confusion.

Furthermore, the Complainant's use and registration of the mark TAMIFLU do predate the Respondent's registration of the disputed domain name.

Therefore the disputed domain name is confusingly similar to the trademark of the Complainant.

The Complainant has exclusive rights for TAMIFLU, and no license, permission, or authorization respectively consent, was granted to use TAMIFLU in the disputed domain name. Furthermore it is obvious that the Respondent uses the disputed domain name for commercial gain and with the purpose of capitalizing on the fame of the Complainant's mark TAMIFLU.

Therefore the disputed domain name in question clearly alludes to the Complainant.

The disputed domain name directs to a webpage offering and selling the Complainant's products.

The Respondent's only reason in registering and using the disputed domain name is to benefit from the reputation of the trademark TAMIFLU and illegitimately trade on its fame for commercial gain and profit.

There is no reason why the Respondent should have any right or interest in such domain name.

The disputed domain name was registered in bad faith since at the time of the registration, i.e., on October 28, 2009, the Respondent had, no doubt, knowledge of the Complainant's well-known product and mark TAMIFLU.

The disputed domain name is also being used in bad faith. This is obvious since when viewing the Respondent's website one realizes that the Respondent is intentionally attempting (for commercial purpose) to attract Internet users to the Respondent's website, by creating a likelihood of confusion with the Complainant's well-known mark (including a picture of the packaging) as to the source, affiliation and endorsement of the Respondent's website or of the products or services posted on or linked to the Respondent's website.

The Respondent, by using the disputed domain name, is intentionally misleading consumers and confusing them so as to attract them to other websites making them believe that the websites behind those links are associated with or recommended by the Complainant.

As a result, the Respondent may generate unjustified revenues and therefore is illegitimately capitalizing on the TAMIFLU trademark fame.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel has found that the Complainant has a trademark right to use TAMIFLU under the International Registration numbers 713623 and 727329. The trademark is not only registered but also widely recognized by consumers of the Complainant's antiviral pharmaceutical preparation.

The disputed domain name includes the Complainant's trademark in its entirety, together with the generic word “market”. The addition of the word “market” does not dispel the confusing similarity between the domain name and the trademark. Rather, it simply strengthens the association by having people think that it relates to the website on which the pharmaceutical products including TAMIFLU are being offered or sold. The disputed domain name is therefore confusingly similar to the Complainant's trademark. It is well-established that domain name suffixes are disregarded for the purpose of this comparison.

The Panel concludes that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides examples of circumstances that can demonstrate the existence of rights or legitimate interests in a domain name:

(i) use of, or preparations to use, a domain name in connection with a bona fide offering of goods or services;

(ii) the fact that a respondent has commonly been known by a domain name; and

(iii) legitimate noncommercial or fair use of a domain name, without intent for commercial gain to mislead consumers or tarnish the trademark.

The Complainant must establish at least a prima facie case under this heading and, if that is made out, the evidential onus shifts to the Respondent to rebut the presumption of absence of rights or legitimate interests.

The Complainant has not licensed or otherwise authorized the Respondent to use its trademarks.

As to paragraph 4(c)(i) of the Policy, the pharmaceutical products including TAMIFLU appear to be offered or sold on the website “www.tamiflu-market.com”, but the website does not relate nor is affiliated with the Complainant. Considering the fact that TAMIFLU is well-known among consumers as the trademark of an antiviral pharmaceutical preparation, such use may easily confuse customers.

The Respondent has not submitted a Response to deny the Complainant's assertions concerning the inappropriate nature of such use of the Complainant's trademark or to explain why the disputed domain name was used for leading potential customers of pharmaceutical products to the “www.tamiflu-market.com” website when there is no obvious connection between them. Under the circumstances, the Panel has found that the Respondent is not in any way engaged in, or preparing for, a bona fide offering of goods or services using the disputed domain name.

As will be discussed below, the Panel has found that the Respondent used the disputed domain name to profit by creating a likelihood of confusion with the Complainant's trademark. This finding leads the Panel to conclude that paragraphs 4(c)(ii) or (iii) of the Policy do not apply to the disputed domain name.

The Complainant has established a prima facie case of lack of rights and legitimate interests and there is no rebuttal by the Respondent.

The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The disputed domain name suggests some connection with the antiviral pharmaceutical preparation, known as Tamiflu. The suffix “market” simply strengthens the connection because the product in question is sold on the website. Nevertheless, the Respondent has failed to submit any Response to establish its connection to Tamiflu or any antiviral pharmaceutical preparation.

On the other hand, the trademark TAMIFLU is well-known among customers. The disputed domain name consists of the Complainant's trademark plus the word “market”, which suggests the offering or selling of a pharmaceutical product for medical reasons including an antiviral pharmaceutical preparation. The Panel infers from this that the Respondent registered the disputed domain name with the Complainant's famous mark TAMIFLU in mind. Indeed the Respondent has not come forward to suggest otherwise.

The Panel is of the view that the Respondent intentionally attracted for commercial gain Internet users to its website that offer products or services relating to medical or psychotherapeutic problems, intending to create a likelihood of confusion, or benefiting from the goodwill associated, with the trademark. In the absence of any other credible explanation from the Respondent, the Panel considers that the use of the disputed domain name was designed to generate profit for the Respondent by attracting customers seeking the Complainant or its Tamiflu product.

The likelihood of confusion is not diminished by the fact that users arriving at that page will realize that they have reached the wrong destination. Paragraph 4(b)(iv) of the Policy is concerned with the intentional attracting of Internet users. Here, the Respondent used the disputed domain name to create “initial interest confusion” on the part of Internet users seeking the Complainant or its Tamiflu product in order to profit from at least some of that traffic.

Therefore, the Panel concludes that the disputed domain name was registered and has been 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 disputed domain name, <tamiflu-market.com> be transferred to the Complainant.

Keiji Kondo
Sole Panelist

Dated: January 22, 2010