WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F.Hoffmann-La Roche AG v. Dron&K
Case No. D2006-0404
1. The Parties
The Complainant is F. Hoffmann-La Roche AG, Basel, Switzerland, represented by an internal representative.
The Respondent is Dron&K, Sankt-Peterburg, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <buytamifluonline.net> is registered with Direct Information Pvt Ltd d/b/a PublicDomainRegistry.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 31, 2006. On March 31, 2006, the Center transmitted by email to Direct Information Pvt Ltd d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the domain name at issue. On April 3, 2006, Direct Information 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 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 April 6, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was April 26, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 27, 2006.
The Center appointed Hariram Jayaram as the sole panelist in this matter on May 5, 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
Together with its affiliated companies, the Complainant is one of the world’s leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics, having global operations in more than 100 countries. The Complainant’s mark TAMIFLU designates an antiviral pharmaceutical preparation, namely a product against flu and is protected as a trade mark in a multitude of countries worldwide by registration and use.
The Respondent is the registrant of the disputed domain name <buytamifluonline.net>.
The Respondent’s website is composed of the link “enter” which redirects to another website i.e. “www.topsearch10.com/search.php?aid=48682&q=Buy+Tamiflu+Online”. This latter website is a search engine composed of sponsored links directing users to pharmacies on-line such as “www.consumersdicountrx.com” and “www.ameripills.com” which offer TAMIFLU as well as other drugs manufactured by competitors of the Complainant.
5. Parties’ Contentions
The Complainant contends that:
(A) The domain name of the Respondent is confusingly similar to the Complainant’s mark which has been registered as well as used in many countries by the Complainant prior to the registration of the domain name <buytamifluonline.net>. It incorporates the mark in its entirety. The addition of the descriptive words “buy” and “online” does not sufficiently distinguish the domain name from the Complainant’s mark. The domain name may suggest that the Respondent’s website is a location from where a consumer may buy the TAMIFLU product. In recent years the Complainant’s mark has been referred to in mass media. Various Governments have decided to stockpile the product TAMIFLU to protect against bird flu. The trade mark’s notoriety will increase the likelihood of confusion.
(B) There is no reason why the Respondent should have any right or interest in such a domain name. The Complainant has exclusive rights in the mark TAMIFLU. No licence, permission, authorization or consent has been granted to the Respondent to use TAMIFLU as part of the domain name. The Respondent has registered and used the domain name for commercial gain and with the purpose of capitalizing and illegitimately trading on the fame of the Complainant’s mark TAMIFLU.
(C) The domain name <buytamifluonline.net>, was registered in bad faith. At the date of the registration, the Respondent had, no doubt, knowledge of the Complainant’s well-known product and mark TAMIFLU. The domain name <buytamifluonline.net>, is also being used in bad faith. This is obvious when viewing the website of the Respondent. By using the domain name <buytamifluonline.net>, as a forwarding address to redirect Internet users to a search engine website where links to third parties are displayed, the Respondent is intentionally attempting for commercial purpose to attract Internet users to the Respondent’s website, and creating a likelihood of confusion with the Complainant’s well-known mark as to the source, affiliation and endorsement of the Respondent’s website or of the products or services posted on or linked to the website. The use of the domain name <buytamifluonline.net>, by directing Internet users to a search engine which leads to pharmacies on-line selling pharmaceuticals without requiring proof of a physical examination by a physician, is potentially harmful to the health of Internet users who purchase TAMIFLU products under the mistaken impression that they are dealing with the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The trade mark of the Complainant is TAMIFLU. The domain name in dispute is <buytamifluonline.net>. It incorporates the Complainant’s trade mark as an essential feature but has two other words as well i.e. “buy” and “online”. Both these words are descriptive words. As has been decided in Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-1493 and in Lilly ICOS LLC v. John Hopking / Neo net Ltd., WIPO Case No. D2005-0694, in appropriating another’s mark, a user of a mark may not avoid likely confusion by adding descriptive matter to it.
The Panel finds that the domain name <buytamifluonline.net>, registered by the Respondent, is confusingly similar to the Complainant’s trade mark TAMIFLU.
B. Rights or Legitimate Interests
The Complainant has not consented to the use of the trade mark TAMIFLU as part of the domain name of the Respondent. The Respondent is not commonly known by the domain name. There is no use or preparation to use the domain name in connection with a bona fide offering of goods or services. The Respondent’s website redirects the user to a search engine composed of sponsored links directing Internet users to pharmacies on-line from where they may buy TAMIFLU. As has been held in Fox News Network, LLC v. Warren Reid, WIPO Case No. D2002-1085, such use may not be use in connection with a bona fide offering of goods or services.
The Panel concludes that the Respondent has no rights or legitimate interests in the domain name <buytamifluonline.net>.
C. Registered and Used in Bad Faith
The Complainant’s trade mark is well known. There is extensive coverage in mass media about TAMIFLU because of the outbreak of the bird flu. It is not conceivable that the Respondent would have registered the disputed domain name without knowledge of the Complainant’s trade mark. The Respondent’s website is intended to attract Internet users and serve as a forwarding address to a search engine website having links to pharmacies online selling the Complainant’s product. On account of the domain name <buytamifluonline.net>, incorporating the Complainant’s trade mark, such use is capable of creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.
The Panel concludes that the Respondent has registered and used the domain name <buytamifluonline.net> 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 <buytamifluonline.net> be transferred to the Complainant.
Dated: May 17, 2006