WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. Weitere Angebote
Case No. D2007-1422
1. The Parties
The Complainant is F. Hoffmann-La Roche AG, Basel, Switzerland, represented internally.
The Respondent is Weitere Angebote, Karlsruhe, Argentina.
2. The Domain Name and Registrar
The disputed domain name, <tamiflu.name>, (the “Disputed Domain Name”) 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 September 25, 2007. On September 26, 2007, the Center transmitted by email to Direct Information Pvt Ltd d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the Disputed Domain Name. On September 27, 2007, 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. 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 October 2, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was October 22, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 23, 2007.
The Center appointed Michael D. Cover as the sole panelist in this matter on November 2, 2007. 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
In view of the Respondent’s default, the Panel shall proceed to decide the dispute on the Complaint alone, in accordance with Rule 14(a) of the Rules, as there are no exceptional circumstances requiring the Panel to do otherwise.
The Complainant, together with its affiliated companies, is one of the world’s leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics and having global operations in more that 100 countries.
The Complainant’s mark TAMIFLU designates an antiviral pharmaceutical preparation, namely a product against flu. The Complainant’s mark has been referred to in many mass media in the past years and months, as governments have taken the decision to stockpile the product designated by the mark TAMIFLU against birdflu.
The Complainant’s mark TAMIFLU is protected as a trade mark in a multitude of countries worldwide. The registrations of the mark TAMIFLU include International Registrations No.713,623 in Class 5 and No. 727,329 TAMIFLU (and device), also in Class 5. The priority date of the earliest registration goes back to May 4, 1999.
Little is known about the Respondent, as it has not filed a Response. However, the Disputed Domain Name redirects Internet users to another website, which is composed of sponsored links which state “Buy Tamiflu” and the like.
5. Parties’ Contentions
The Complainant states that the Disputed Domain is identical to the mark TAMIFLU of the Complainant. It also states that the Complainant’s use and registration of the mark TAMIFLU predate the registration of the Disputed Domain Name in August 2007.
The Complainant goes on to assert that the Complainant has exclusive rights in TAMIFLU and no license, permission, authorization or consent has been extended to the Respondent to use the Disputed Domain Name. It points to the Disputed Domain Name clearly alluding to the Complainant and the link mentioned above. It then maintains that the Respondent’s only reason for registering and using the Disputed Domain Name is to benefit from the reputation of the mark TAMIFLU and illegitimately to trade on its fame for commercial gain and profit. It cites, in this connection, Sigrid H Scharrer & Koch GmbH & Co. KG, MyBear Marketing-und Vertriebs GmbH, Mr Thomas Dufner v. Bestifino, WIPO Case No. D2004-0990.
The Complainant asserts that the Disputed Domain Name was registered in bad faith, as the Respondent must have had knowledge of the Complainant’s well-known product and mark TAMIFLU. It also contends that the Disputed Domain Name is being used in bad faith and relies on paragraph 4(b)(iv) of the Policy in this regard.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has established rights in its mark TAMIFLU by evidencing its trademark registrations. It is a reasonable inference that it has also substantial common law rights in the business conducted under the mark TAMIFLU.
The Disputed Domain Name is identical to the mark TAMIFLU. The Complainant has accordingly established that the Disputed Domain Name is identical to a trademark in which it has rights.
B. Rights or Legitimate Interests
Here the Complainant is effectively required to prove a negative. However, it first must establish a prima facie case, which the Respondent has the opportunity to rebut.
The Complainant has established a prime facie case; its mark TAMIFLU has been widely registered as a trademark, with an original priority date of May 4, 1999. Its product sold under the mark TAMIFLU is in such demand that it is being stockpiled by national governments. The Complainant has not granted any license or other authorization to the Respondent.
The Respondent has not filed a Response, so has not taken the opportunity to seek to establish one of the non-exhaustive list of criteria in paragraph 4(c) of the Policy. There is thus no evidence of use or demonstrable preparations for use in connection with a bona fide offering of goods or services, that is has been commonly known by the Disputed Domain Name nor that it has been making legitimate or fair use of the Disputed Domain Name. On the contrary with regard to the last criterion as, in fact the Respondent is using the Disputed Domain Name to redirect Internet users to a site which is composed of sponsored links, which mention the Complainant’s mark TAMIFLU.
The case cited by the Complainant lends weight to the conclusion that the use that has taken place of the Disputed Domain Name is not in connection with a bona fide offering of goods or services. The Panel, in any event, finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name.
C. Registered and Used in Bad Faith
The Complainant has to establish that the Disputed Domain Name has been registered and is being used in bad faith. With regard to registration in bad faith, the Disputed Domain Name was registered in August 2007, more than 8 years after the priority date of the earliest registration of the Complainant’s mark. By August 2007, no doubt the Complainant’s mark was well known.
With regard to use in bad faith, the redirection and links referred already in this decision fit within paragraph 4(b)(iv) of the Policy, in that the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark TAMIFLU as to the source, affiliation or endorsement of that web site. L’Oréal Biotherm, Lancôme Partners et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623, is a good example of a case where an Administrative Panel has found that exploitation of “click-throughs” is a common example of bad faith. Internet users, looking for legitimate sources of the Complainant’s “Tamiflu” product are highly likely to search for the product by name and to find the Disputed Domain Name and click through to the links.
The Panel accordingly finds for the Complainant on the issue of use in bad faith, which means that the Complainant has met its burden of establishing the Disputed Domain Name was registered and has been used 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 Disputed Domain Name, <tamiflu.name>, be transferred to the Complainant.
Michael D. Cover
Dated: November 16, 2007