WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. Brian Pubrat
Case No. D2006-0354
1. The Parties
The Complainant is F. Hoffmann-La Roche AG, Basel, Switzerland, represented by Jérôme Rhein, Switzerland.
The Respondent is Brian Pubrat, Toronto, Ontario, Canada.
2. The Domain Name and Registrar
The disputed domain name <tamifluvacine.com> is registered with Schlund + Partner.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 22, 2006. On March 22, 2006, the Center transmitted by email to Schlund + Partner a request for registrar verification in connection with the domain name at issue. On March 23, 2006, Schlund + Partner 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”).
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 30, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was April 19, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 21, 2006.
The Center appointed Gerd F. Kunze as the sole panelist in this matter on April 27, 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 extends to over 50 countries. Both registrations 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 Panel has knowledge of these facts that are referred to in the Complaint.
The Respondent registered on November 27, 2005, the domain name <tamifluvacine.com>. As evidenced by copies of the respective websites, it uses the domain name for a website that is composed of sponsored links to other websites. Furthermore, the domain name is offered for sale for an amount of US $ 200.
5. Parties’ Contentions
The Complainant submits that (A) the domain name <tamifluvacine.com> is 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 notorious trademark in its entirety; (B) the Respondent has no rights or legitimate interests in respect of the domain name; and (C) the domain name was registered and is 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 the 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 name <tamifluvacine.com> consists of a combination of the Complainant’s well-known trademark with a slight misspelling of the descriptive term “vaccine” (the gTLD “.com” cannot be taken into consideration when judging confusing similarity between the domain name and the Complainant’s trademark). Many Internet users will overlook the misspelling and believe that on the Respondent’s website a TAMIFLU vaccine will be offered. But whatever the understanding of Internet users of this addition to the Complainant’s well-known trademark may be, they will clearly expect to find at the Respondent’s website some information about the TAMIFLU product of the Complainant. This shows that the addition of the term “vacine” cannot exclude confusing similarity between the domain name and the trademark of the Complainant.
In conclusion the domain name <tamifluvacine.com> is confusingly similar to the trademark TAMIFLU of the Complainant.
B. Rights or Legitimate Interests
TAMIFLU is not a descriptive term, 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 name 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 name leads to a website with sponsored links to other websites. Even if the Respondent does not use its domain name to promote commercial activities of its own, the Panel 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 name <tamifluvacine.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 this domain name, the Respondent has not been able to become known under it.
In the absence of any submission of the Respondent, the Panel therefore concludes that the Respondent has no rights or legitimate interests in the domain name.
C. Registered and Used in Bad Faith
For a Complainant to succeed, the Panel must be satisfied that a domain name has been registered and is being used in bad faith. As an example the Policy mentions in paragraph 4(b)(i) registration of the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant who is the owner of the mark or to a competitor for valuable consideration in excess of his documented out-of pocket costs directly related to the domain name.
A generally applied test is therefore whether a respondent has attempted to sell the domain name for a sum in excess of the respondent’s out of pocket expenses in registering the domain name. The Panel is satisfied that this test is fulfilled.
As evidenced by the Complainant through a copy of the Respondent’s website, as used when the Complaint was submitted, the domain name <tamifluvacine.com> is (at least was at the time when the Complaint was submitted) offered for sale for an amount of US $ 200. This is clearly an amount in excess of the out of pocket expenses of the Respondent for registering the domain name.
Paragraph 4(b)(iv) of the Policy lists as a further typical situation 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 also fulfilled the conditions set out in paragraph 4(b)(iv) of the Policy. 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 a combination of this trademark with an apparent misspelling of the term “vaccine”.
In view of the fame of the TAMIFLU product and the interest that this product has generated in recent months, Internet users, when typing the Respondent’s domain name, 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 name for a website, that provide sponsored links to other websites, the Respondent attempts to attract Internet users for commercial gain to this website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website. Even where Internet users realize when they view the Respondent’s web page 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’Oreal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc., WIPO Case No. D2005-0623 with references).
In conclusion, the Panel finds that the Respondent has registered and used the domain name in bad faith.
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, <tamifluvacine.com> be transferred to the Complainant.
Gerd F. Kunze
Dated: May 9, 2006