WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. Martha Sypkens
Case No. D2006-0467
1. The Parties
The Complainant is F. Hoffmann-La Roche AG, Basel, Switzerland, represented by an internal representative.
The Respondent is Martha Sypkens, Amsterdam, Noord-Holland, The Netherlands.
2. The Domain Name and Registrar
The disputed domain name, <order-tamiflu-h5n1.com>, is registered with EstDomains, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 12, 2006. On April 13, 2006, the Center transmitted by e-mail to EstDomains, Inc. a request for registrar verification in connection with the domain name at issue. On April 19, 2006, EstDomains, Inc. transmitted by e-mail 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 April 26, 2006. 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 27, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was May 17, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 18, 2006.
The Center appointed Christos A. Theodoulou as the sole panelist in this matter on May 23, 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 a large healthcare group in the fields of pharmaceuticals and diagnostics, having global operations in more than 100 countries. Its medicine Tamiflu is an antiviral pharmaceutical preparation, well-known recently to consumers due to its importance vis-à-vis bird flu.
According to the non-contested allegations of the Complainant, TAMIFLU is protected as a trademark in a multitude of countries worldwide. The examples provided by the Complainant are International Registrations Nos. 713623 and 727329, with protection going back to May 4, 1999.
The Panel is unaware of any of no information with regard to the Respondent, Martha Sypkens, apart maybe from the fact that she resides in The Netherlands.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to its trademarks, that the Respondent has no legitimate interests or rights in the disputed domain name and that the Respondent registered and is using the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Before engaging itself into the usual threefold discussion of paragraph 4(a) of the Policy, the Panel will briefly address the procedural issue related to the default of the Respondent. The implications of a default in this case are obvious: since the Complainant has the burden of proof, according to paragraph 4(a) of the Policy (“In the administrative proceeding, the Complainant must prove that each of these three elements are present”), the Panel may not just grant the Complainant’s request automatically, but it has to examine instead the evidence presented to determine whether or not the Complainant has proved its case, as required by the Policy. See FNAC v. Gauthier Raymond, WIPO Case No. D2004-0881; Crédit Industriel et Commercial S.A., Banque Scalbert Dupont S.A. v. LaPorte Holdings, Inc., WIPO Case No. D2004-1110; Alliance & Leicester Plc v. Henao Berenice, WIPO Case No. D2005-0736.
The Panel shall now proceed to the analysis of the evidence in this case, based on the three elements of Paragraph 4(a) of the Policy.
A. The contested domain name is identical or confusingly similar to trademarks, in which the Complainant has rights.
The Complainant has presented sufficient evidence that it owns the rights to the trademark TAMIFLU. The mere fact that the Respondent has added to this mark the common word “order”, and also the word “h5n1”, which designates the causative agent of the bird flu, does not affect the essence of the matter: the contested domain name wholly incorporates the registered trademark TAMIFLU owned by the Complainant and this is by itself sufficient to establish the criterion of similarity for purposes of the Policy. See e.g. Eauto, L.L.C. v. Eauto Parts, WIPO Case No. D2000-0096; Speedo Holdings B.V. v. LAKS Cartegena Handels GmbH, WIPO Case No. D2005-1325.
In view of the above, the Panel finds that the Complainant has discharged its burden of proof on this point and holds that the disputed domain name is confusingly similar to the Complainant’s trademarks.
B. The Respondent has no rights or legitimate interests in the contested domain names.
Under paragraph 4(c) of the Policy any of the following circumstances, if found by the Panel to be proved based on its evaluation of the evidence presented, shall demonstrate a registrant’s rights to and legitimate interest in a domain name:
I. Demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services prior to the dispute: in this case, the Respondent seems to be using the trademark of the Complainant as a domain name for diverting people to other websites, which are actually pharmacies on-line, offering for sale Tamiflu, but also other drugs manufactured by competitors of the Complainant. All the above stand in the absence of any sort of agreement or relation between the Complainant and the Respondent; this behavior of the Respondent may not be viewed as a bona fide offering of services, as it has already been decided in Crédit Suisse Group v. Kingdomdatanet Networks, Inc., WIPO Case No. D2004-0846 and in Crédit Industriel et Commercial S.A., Banque Scalbert Dupont S.A. v. LaPorte Holdings, Inc., WIPO Case No. D2004-1110.
II. An indication that the registrant has been commonly known by the disputed domain name, even if it has acquired no trademark rights: there is no such indication from the record.
III. Legitimate non-commercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue: as alleged by the Complainant in its submissions, the Respondent, by acting in the way described in point I above, uses the disputed domain name for commercial gain. The misleading diversion to other websites might also tarnish the trademarks and brand image of the Complainant.
As a conclusion on this point, the Panel holds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. The Respondent registered and used the contested domain name in bad faith.
The Complainant’s argumentation aims to establish mainly paragraph 4(b)(iv) of the Policy, which would be enough to prove the Respondent’s bad faith, since the four circumstances mentioned in that Paragraph will separately evidence bad faith registration and use.
The Complainant first asserts that the Respondent had good knowledge of Tamiflu’s reputation at the time of the disputed domain name’s registration (March 29, 2006). Indeed, Tamiflu, as mentioned above, has recently known worldwide media projection, because of its importance vis-à-vis the bird flu. This has previously been accepted by another Panel, who stated the following: “…with the widespread fame of the TAMIFLU mark it is simply not credible to believe that Respondent registered the disputed domain name without knowledge of Complainant’s mark. Only someone with knowledge of the mark – considering the fact that the mark is an invented term – could have registered the disputed domain name. Thus, Respondent registered the disputed domain name in bad faith”. See Hoffmann-La Roche Inv. v. WhoisGuard, WIPO Case No. D2005-1288.
Then, the Complainant goes on to prove that the disputed domain name is not only registered, but also used in bad faith. The mere fact that the Respondent uses the disputed domain name in order to re-direct consumers to pharmacies on-line shows that she is intentionally attempting to attract them for commercial gain, by creating a likelihood of confusion with the Complainant’s trademark TAMIFLU as to the source, affiliation and endorsement of the disputed website.
As a consequence, the Panel holds that the Respondent registered and used the disputed domain name in bad faith.
The Complainant has successfully proved that the contested domain name is identical or confusingly similar to several trademarks in which it has rights, that the Respondent has no rights or legitimate interests in the contested domain name and that the Respondent registered and used the contested 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 at issue, <order-tamiflu-h5n1.com>, be transferred to the Complainant.
Christos A. Theodoulou
Dated: June 6, 2006