WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. Spiral Matrix
Case No. D2006-0326
1. The Parties
The Complainant is F. Hoffmann-La Roche AG, Basel, Switzerland, represented by an internal representative.
The Respondent is Spiral Matrix, Eldoret, Kenya.
2. The Domain Names and Registrar
The disputed domain names <onlineconsultationtamiflu.com> and <whatistamiflu.com> are registered with Intercosmos Media Group d/b/a directNIC.com
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 15, 2006. On March 16, 2006, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain names at issue. On March 17, 2006, Intercosmos Media Group d/b/a directNIC.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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on March 24, 2006. 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 March 28, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was April 17, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 18, 2006.
The Center appointed Gerd F. Kunze as the sole panelist in this matter on April 26, 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.
4. Factual Background
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”. Registration No 713623 is extending to over 50 countries, including several African countries. Both registrations are covering 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 knowledge of these facts that are referred to in the Complaint.
The Respondent registered on February 22, 2006, the domain name <whatistamiflu.com> and on March 13, 2006, the domain name <onlineconsultationtamiflu.com>. As evidenced by copies of the respective websites, it uses the domain name for links to search-engines with sponsored links and pop-up advertisements.
5. Parties’ Contentions
The Complainant submits that (A) the domain names <onlineconsultationtamiflu.com> and <whatistamiflu.com> are identical or confusingly similar to its trademark TAMIFLU in which it has rights; it points out in this connection that the domain name of the Respondent incorporates its trademark in its entirety and that the addition of the descriptive terms “online consultation” and “what is” respectively does not sufficiently distinguish the domain names from its mark which is notorious; (B) the Respondent has no rights or legitimate interests in respect of the domain names; (C) the domain names were registered and are being used in bad faith.
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 Complainant’s submissions, and all inferences that can reasonably be drawn there from (Rules, paragraph 14(b)).
6. Discussion and Findings
A. Identical or Confusingly Similar
The domain names <onlineconsultationtamiflu.com> and <whatistamiflu.com> consist of a combination of the Complainant’s well-known trademark with the descriptive terms “onlineconsultation” and “whatis” respectively (the gtld “.com” cannot be taken into consideration when judging confusing similarity between the domain name and the Complainant’s trademark). Users may understand these additions to the Complainant’s trademark in the sense that on the respective websites they will find information about the TAMIFLU product or that they may consult the Complainant or some person authorized by the Complainant about the product. Such or similar assumptions are always linked to the TAMIFLU product, which clearly shows that the addition of the terms “onlineconsultation” and “whatis” respectively to the trademark TAMIFLU in the domain names <onlineconsultationtamiflu.com> and <whatistamiflu.com> cannot exclude confusing similarity between these domain names and the trademark of the Complainant.
In conclusion the domain names <onlineconsultationtamiflu.com> and <whatistamiflu.com> are clearly confusingly similar to the trademark TAMIFLU of the Complainant.
B. Rights or Legitimate Interests
TAMIFLU is not a descriptive word, in which the Respondent might have a legitimate user-interest. It is known as the trademark of the Complainant’s product. The Respondent has no connection or affiliation with the Complainant, who has not consented to the Respondent's use of the domain names.
Furthermore, none of the circumstances listed under paragraph 4(c) of the Policy, possibly demonstrating rights or legitimate interests, are given. The Respondent does not use the domain names for its own legitimate commercial or non-commercial activities, if any, and it has not demonstrated any preparations for such use. On the contrary, the domain names lead to a search website with sponsored links and pop-ups to other websites. Even if the Respondent does not use its domain names to promote commercial activities of its own, the Panelist is satisfied that providing a link to such websites cannot be considered to be non-commercial. It would make no sense for the Respondent to provide a link to a search site, if it where not to attract a fee, the more as such arrangements are common. Therefore the Respondent’s use of the domain names <onlineconsultationtamiflu.com> and <whatistamiflu.com> is commercial, but cannot be considered to be a bona fide offering of goods or services. Finally, for the same reason that the Respondent apparently does not promote its own commercial activities with the help of these domain names, the Respondent has not been able to become known under these names.
In the absence of any submission of the Respondent, the Panel therefore concludes that the Respondent has no right or legitimate interest 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 names in bad faith.
Paragraph 4(b)(iv) of the Policy lists as one of the typical situations of evidence of registration and use in bad faith that, by using the domain names, 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). There can be no doubt that the Respondent knew the product, sold under the Complainant’s well-known trademark TAMIFLU, when it registered the domain names. Otherwise the Respondent would not have chosen combinations of this trademark with terms that will be understood by Internet users in the sense that on the respective websites one could find out “what is TAMIFLU” and that users are offered an “online consultation” with respect to the TAMIFLU product.
In view of these meanings of the domain names, Internet users, when typing these domain names, will expect, to arrive at a website of the Complainant or at least a website somehow related to the Complainant. Therefore, by using the domain names for search engine websites, that provide sponsored links to other websites, the Respondent attempts to attract Internet users to these websites, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its websites. Even where Internet users, when they view the Respondent’s web page, realize that it is not connected with the Complainant, the Respondent may still profit from their initial confusion, since they may be tempted to click on the sponsored links.
Such exploitation of trademarks to obtain click-through commissions from the diversion of internet users has been considered in many decisions to be a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy (see L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc., WIPO Case No. D2005-0623 with references).
In conclusion the Respondent is pursuing an activity, which must be considered to be bad faith under the Policy.
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 names <onlineconsultationtamiflu.com> and <whatistamiflu.com> be transferred to the Complainant.
Gerd F. Kunze
Dated: May 10, 2006