WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. Titan Net
Case No. D2006-0424
1. The Parties
The Complainant is F. Hoffmann-La Roche AG, Basel, Switzerland, represented by an internal representative.
The Respondent is Titan Net, Eldoret, Kenya.
2. The Domain Name and Registrar
The disputed domain name <tamifluonline.org> is 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 April 4, 2006. On April 5, 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 name at issue. On April 5, 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. 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 12, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was May 2, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 4, 2006.
The Center appointed Hariram Jayaram as the sole panelist in this matter on May 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.
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 trademark in a multitude of countries worldwide by registration and use.
The Respondent is the registrant of the disputed domain name <tamifluonline.org>.
The Respondent’s website is a search engine with sponsored links. Upon clicking on the links which include the word “TAMIFLU”, sponsored links to pharmacies on-line (e.g. “www.onlinecanadameds.com” or “www.supercheaprx.com”) appear.
5. Parties’ Contentions
The Complainant contends that:
(a) The domain name of the Respondent is confusingly similar to the Complainant’s mark. This is because the domain name incorporates the mark in its entirety. The addition of the descriptive word “online” does not sufficiently distinguish the 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 mass media in view of various governments’ decisions to stockpile the product TAMIFLU against bird flu. The trademark’s notoriety will increase the likelihood of confusion. The Complainant’s use and registration of the mark TAMIFLU predate the Respondent’s registration of the domain name.
(b) The Respondent has no rights or legitimate interests in respect of the domain name. The Complainant has exclusive rights for the mark TAMIFLU and no licence, permission, authorization or consent was granted to the Respondent for the use of TAMIFLU in the domain name. The Respondent’s sole 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.
(c) The domain name was registered and used in bad faith since at the time of the registration, the Respondent must have had knowledge of the Complainant’s well-known product and mark TAMIFLU. When viewing the Respondent’s website, it is clear that, by using the domain name to address Internet users to a search engine website where links to third parties are displayed, the Respondent is attempting to attract for commercial purposes, Internet users to their website by creating a likelihood of confusion with the Complainant’s well-known mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of the products or services posted on or linked to the Respondent’s website. The disputed domain name appears to be used to advertise links to websites promoting or offering products and services of third parties. The Respondent is intentionally misleading the consumers and confusing them so as to attract them to other websites, making them believe that the websites behind those links are associated or recommended by the Complainant. As a result, the Respondent may generate unjustified revenues for each click-through by online consumers of the sponsored links.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The trademark of the Complainant is TAMIFLU. The domain name in dispute is <tamifluonline.org>. It incorporates the Complainant’s trademark as an essential feature and another word, “online”. The latter is a descriptive word. 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 <tamifluonline.org> 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 trademark 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 is a search-engine with sponsored links which redirect Internet users to pharmacies on-line from where they may buy TAMIFLU products. As has been held in Sigikid H. Scharrer & Koch GmbH & Co. KG, MyBear Marketing-und Vertriebs GmbH, Mr. Thomas Dufner v. Bestinfo, WIPO Case No. D2004-0990, such use does not represent a use of the domain name in connection with a bona fide offering of goods and services.
The Panel concludes that the Respondent has no rights or legitimate interests in the domain name <tamifluonline.org>.
C. Registered and Used in Bad Faith
The Complainant’s trademark is well known – there is extensive coverage in mass media about TAMIFLU because of the outbreak of the bird flu. The Respondent could not have registered the disputed domain name <tamifluonline.org> without knowledge of the Complainant’s trademark. The Respondent’s website is intended to attract Internet users and serve as a forwarding address to pharmacies online selling the Complainant’s product. On account of the domain name <tamifluonline.org>, incorporating the Complainant’s trademark, 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 <tamifluonline.org> 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 <tamifluonline.org> be transferred to the Complainant.
Dated: May 29, 2006