WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hoffmann-La Roche Inc. v. US Online Pharmacies
Case No. D2006-0646
1. The Parties
The Complainant is Hoffmann-La Roche Inc., Nutley, New Jersey, United States of America, represented by Lathrop & Gage L.C., United States of America.
The Respondent is US Online Pharmacies, Fontana, California, United States of America.
2. The Domain Names and Registrar
The disputed domain names (the “Domain Names”)
are registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 24, 2006. That same day, the Center transmitted by e-mail to Go Daddy Software a request for registrar verification in connection with the Domain Names, and Go Daddy Software transmitted by e-mail to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on June 7, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was June 27, 2006. Respondent did not submit any response. Accordingly, the Center notified Respondent of its default on June 30, 2006.
The Center appointed Robert A. Badgley as the sole panelist in this matter on July 11, 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 following facts are alleged in the Complaint and are undisputed by Respondent. Unless indicated otherwise, the facts set forth in this section are found by the Panel to be plausible and/or supported by evidence annexed to the Complaint.
Complainant, together with its affiliated companies (collectively referred to herein as “Complainant”), is one of the leading manufacturers of pharmaceutical and diagnostic products. Complainant’s TAMIFLU mark is protected as a trademark for a pharmaceutical antiviral preparation in a multitude of countries worldwide. For example, TAMIFLU is registered to Complainant in the United States Patent and Trademark Office, under Registration No. 2,439,305, having a first use date of November 12, 1999.
The mark TAMIFLU designates an antiviral product indicated for the treatment and prevention of influenza. The mark TAMIFLU has been extensively promoted by Complainant in print advertisement in medical journals, promotional materials, packaging, medical informational materials, television advertising, and direct mailings. Complainant has used the mark TAMIFLU for this product since November 1999, in the United States. Sales of the TAMIFLU pharmaceutical preparation have reached millions of dollars in the United States since 2000. Many governments have decided to stockpile the product TAMIFLU against bird flu, and the product has certainly acquired some measure of fame.
Complainant owns the domain name <tamiflu.com>, and uses that domain name, through re-direction to an affiliated site, to promote and inform consumers about its Tamiflu product.
Respondent registered the Domain Names on December 10, 2004. All but one of the ten Domain Names are inactive. The tenth Domain Name, <buytamifluonline.com>, resolves to a website where Tamiflu products were being marketed without Complainant’s license or authorization, and where Complainant’s copyrighted materials concerning that product were displayed.
5. Parties’ Contentions
Complainant’s factual assertions are set forth above, and its legal arguments will be taken up in the discussion below.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy in order to succeed:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that Complainant has rights, through registration and use, of the mark TAMIFLU. The Panel further finds that TAMIFLU, as a fanciful mark, is highly distinctive.
With respect to confusing similarity, each of the Domain Names fully incorporates the distinctive and famous TAMIFLU mark and adds merely descriptive words or characters to that mark. With respect to the fourth and fifth Domain Names, the prefixes “i” and “e” are well-known designators of electronic commerce, as is the term “online,” contained in the first and eighth Domain Names. The terms “buy,” “purchase,” “discount,” and “cheap,” present in the first, second, third, and sixth Domain Names, clearly convey the desire to market the trademarked product in question. The terms “medication” and “prescription,” (whether singular or plural) contained in the seventh, ninth, and tenth Domain Names, merely describe the trademarked product.
In each of the ten instances, the additional words or characters do little or nothing to distinguish the Domain Name in question from Complainant’s distinctive and famous mark. There is no doubt that “tamiflu” is the dominant component of each Domain Name, and Respondent’s add-ons merely underscore the (false) impression that there is an association between the Domain Names and Complainant’s mark.
Numerous panels in prior cases under the Policy have held that the mere addition of a descriptive word to the complainant’s trademark does not overcome confusing similarity. See, e.g, Sanofi-aventis v. Edith Van Der Linden, WIPO Case No. D2006-0372 (involving <buyambien.info>).
The Panel finds that each of the Domain Names is confusingly similar to Complainant’s mark.
Accordingly, the Panel finds that paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant bears the burden of proof on the “rights or legitimate interests” issue (as it does for all three elements of the Policy). Louis de Bernieres v. Old Barn Studios Limited, WIPO Case No. D2001-0122 .
Respondent, who filed no response in this proceeding, has not invoked any of the circumstances of Policy, paragraph 4(c) to suggest any “rights or legitimate interests” in respect of the Domain Names.
Respondent was not licensed or authorized by Complainant to use the latter’s mark in any manner. With respect to the single Domain Name that Respondent has pressed into service, <buytamifluonline.com>, the Panel concludes that Respondent’s commercial activities undertaken through use of the Domain Name are neither fair use nor bona fide under the Policy. There are numerous prior decisions under the Policy holding that the unauthorized appropriation of another’s trademark in one’s domain name and the commercial use of the corresponding website do not confer rights or legitimate interests upon the owner of such a domain name. See, e.g. America Online, Inc. v. Xianfeng Fu, WIPO Case No. D2000-1374 (December 11, 2000) (“it would be unconscionable to find that a bona fide offering of services in a respondent’s operation of website using a domain name which is confusingly similar to the complainant’s mark and for the same business”).
With respect to the nine inactive Domain Names, the Panel holds that stockpiling these Domain Names, which incorporate Complainant’s fanciful mark, cannot confer rights or legitimate interests upon Respondent.
The Panel finds that Complainant has established a bona fide case showing that Respondent has no rights or legitimate interests in the Domain Names. Respondent has not rebutted this.
Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Names in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel finds that Respondent in all likelihood had Complainant’s well-known mark TAMIFLU in mind when registering the Domain Names. TAMIFLU is a fanciful mark; that combination of letters has no known meaning other than as a reference to Complainant’s product.
With respect to the active Domain Name, <buytamifluonline.com>, the Panel finds that Respondent has used that Domain Name in bad faith, within the meaning of paragraph 4(b)(iv) of the Policy. The Domain Name resolves to a website where Complainant’s products are offered for sale without authorization. Based on the undisputed evidence, there is no reasonable conclusion other than that Respondent registered the Domain Name with the intention of seeking to attract, for commercial gain, Internet visitors to its website by creating confusion between the Domain Name and Complainant’s mark.
With respect to the other nine Domain Names, the Panel finds that Respondent has engaged in a pattern of preclusive registrations within the meaning of paragraph 4(b)(ii).
Accordingly, the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied.
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 <buytamifluonline.com>, <cheaptamiflu.com>, <discounttamiflu.com>, <etamiflu.com>, <itamiflu.com>, <purchasetamiflu.com>, <tamiflumedication.com>, <tamifluonline.com>, <tamifluprescription.com>, <tamifluprescriptions.com> be transferred to Complainant.
Robert A. Badgley
Dated: July 14, 2006