The Complainant is F. Hoffmann-La Roche AG, Basel, Switzerland, represented by an internal representative.
The Respondent is P-TCK41, Tim Kirschner, Palma de Mallorca, Spain.
2. The Domain Name and Registrar
The disputed domain name <tamiflu.cc> is registered with Key-Systems
GmbH dba domaindiscount24.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 30, 2006. On January 31, 2006, the Center transmitted by email to Key-Systems GmbH dba domaindiscount24.com a request for registrar verification in connection with the domain name at issue. On February 7, 2006, Key-Systems GmbH dba domaindiscount24.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. 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”).
Whilst the Complaint had been submitted in English the Registrar informed the Center that the language of the registration agreement for the disputed domain name is German. The Center requested the Complainant to either submit a remedied Complaint or to submit reasons for retaining English as the language of the proceeding. The Complainant argued that English should be the language of the proceeding for a number of reasons (the domain dispute policy that applies to the domain name is in the English language; the website of the Respondent, to which the domain name leads, is written in the English language; the Respondent is located in Spain, where German is not customary). The Center decided to accept the Complaint in English, to accept a Response either in English or in German, and to allow the Panel, once appointed, to make the decision as to the correct language of the proceeding.
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, informing it that its Response would be accepted either in English or in German, and the proceedings commenced on February 16, 2006. In accordance with the Rules, paragraph 5(a), the due date for the Response was March 8, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 9, 2006.
The Center appointed Gerd F. Kunze as the sole panelist in this matter on March 15, 2006. 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 Panel accepts English as the language of the proceeding
for the reasons put forward by the Complainant.
4. Factual Background
A. Complainant
The Complainant is, together with its affiliated companies, one of the world’s leading pharmaceutical companies with operations in more than 100 countries.
The Complainant is the registered owner of the trademark TAMIFLU in many countries worldwide. Amongst others the trademark is protected by two international registrations: Registration No. 713623, with priority of June 3, 1999, for the word mark TAMIFLU and Registration No. 727329, with priority of February 7, 2000, for a combined mark consisting of the word “Tamiflu” in a special script and a figurative element on the top of the letter “i”. Both registrations extend amongst others to Spain, where the Respondent is located, and cover an antiviral pharmaceutical preparation, namely a product against flu. The Complainant has evidenced this fact by copies of the registration certificates.
In the past, and particularly in the past months, the Complainant’s mark TAMIFLU has been referred to in many mass media world wide in the context of the increasing significance of the bird flu disease and in view of the fact that many governments have decided to stockpile the TAMIFLU product. Therefore the trademark TAMIFLU has become an internationally well-known mark. The Panelist has personal knowledge of these facts that are referred to in the Complaint.
B. Respondent
The Respondent registered the domain name <tamiflu.cc>
in October, 2005, and uses it for a website that offers the TAMIFLU product
of the Complainant but also other drugs which directly compete with the Complainant’s
product. Upon ordering, the Respondent’s website directs Internet users
to an on-line pharmacy, where the products may be bought without prescription.
5. Parties’ Contentions
A. Complainant
The Complainant submits that (A) the domain name <tamiflu.cc> is identical to its trademark TAMIFLU in which it has rights; (B) the Respondent has no rights or legitimate interests in respect of the domain name; (C) the domain name was registered and is being used in bad faith.
B. Respondent
The Respondent has failed to submit a Response. It
has therefore not contested the allegations of the Complaint and the Panel shall
decide on the basis of the Complainant’s submissions, and all inferences
that can reasonably be drawn therefrom (Rules, paragraph 14(b)).
6. Discussion and Findings
A. Identical or Confusingly Similar
The domain name <tamiflu.cc> is identical to the trademark TAMIFLU, in which the Complainant has rights (the cctld “.cc” cannot be taken into consideration when judging confusing similarity between the domain name and the Complainant’s trademark). In a communication to the Center before the proceedings had commenced the Respondent referred to the fact that the Complainant has no rights in its trademark in the Cocos Islands, where the domain name is registered. This fact does not matter, since the Complainant has rights in its mark in many countries, including Spain, where the Respondent is located, and the Policy does not require that the rights in the mark of the Complainant exist in the precise country to which the cctld relates (in this case, the Cocos Islands). This is particularly true in the present case where the trademark TAMIFLU of the Complainant is a well-known mark worldwide, since a well-known mark can be protectable without registration.
B. Rights or Legitimate Interests
The Complainant has not licensed or otherwise consented to the use of its trademark TAMIFLU to the Respondent. The word TAMIFLU is not a descriptive word. It is known as the trademark of the Complainant’s product. Furthermore, there cannot be any doubt that the Respondent is aware of the Complainant’s trademark, since on its website it refers to the Complainant’s TAMIFLU product and offers it for sale. Users of the domain name are directed to this website, where, as evidenced by copies of the respective pages, the TAMIFLU product of the Complainant as well as competitive products, such as RELENZA and RIMANTADINE, are offered for sale. When ordering one of these products, the user is directed to an on-line pharmacy. Such use of the Complainant’s trademark cannot be considered to be a bona fide offering of goods or services. Failing any submission of the Respondent to the contrary, the Panel is satisfied that the Respondent is not commonly known by the domain name. Since the Respondent offers products for sale on its website, it does not make a non-commercial use of the domain name.
Failing any submission of the Respondent the Panel therefore is satisfied that the Respondent has no rights or legitimate interests in the domain name.
C. Registered and Used in Bad Faith
Even if the Respondent has not responded to the Complaint, the Complainant has to prove under the Policy that the Respondent has registered and is using the domain name in bad faith.
Paragraph 4(b)(iv) of the Policy lists as one of the typical situations as evidence of bad faith that, by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website.
The Complainant has submitted facts and evidence that the Respondent has fulfilled the conditions set out in paragraph 4(b)(iv). As pointed out before, there can be no doubt that the Respondent knew the product, sold under the Complainant’s trademark TAMIFLU, when it registered the domain name. It uses the domain name for a website, in which it offers that product in a context that creates the impression that there exists at least some kind of sponsorship or endorsement of the Complainant. In the upper part of the website “www.tamiflu.cc”, a copy of which was submitted by the Complainant, users are in large headings advised to buy TAMIFLU in order to combat the bird flu virus; also a packaging of the TAMIFLU product is reproduced. In smaller print competitive products are, or at least were at the time when the Complainant downloaded copies of the website, listed and also offered for sale.
This clearly shows that the Respondent uses the domain name for commercial gain, by attracting users to its website, where the TAMIFLU product is offered for sale, but also competing products are offered for sale.
Another element of registration and use in bad faith can be seen in the fact that the Respondent registered the domain name in the cctld of the Cocos Islands where it could assume that no trademark registration of the Complainant for its trademark TAMILFU existed, and it may even have hoped that this domain name registration would escape the attention of the Complainant.
In the absence of any submission of the Respondent to the contrary, the Panel
is therefore convinced that the Respondent registered and is using the domain
name <tamiflu.cc> 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 <tamiflu.cc> be transferred to the Complainant.
Gerd F. Kunze
Sole Panelist
Date: March 21, 2006
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