WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hoffmann-La Roche Inc. v. Wei-Chun Hsia
Case No. D2008-0923
1. The Parties
The Complainant is Hoffmann-La Roche Inc., New Jersey, United States of America, represented by Lathrop & Gage L.C., United States of America.
The Respondent is Wei-Chun Hsia, Seattle, Washington, United States of America.
2. The Domain Name and Registrar
The disputed domain name <yourtamiflushop.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 18, 2008. On June 18, 2008, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On June 18, 2008, eNom 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 June 25, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was July 15, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 17, 2008.
The Center appointed William F. Hamilton as the sole panelist in this matter on July 23, 2008. 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, together with its affiliated companies, is one of the leading manufacturers of pharmaceutical and diagnostic products in the world. The TAMIFLU mark of Roche is protected as a trademark for a pharmaceutical antiviral preparation in a multitude of countries worldwide. For example, TAMIFLU is registered to the Complainant in the United States Patent and Trademark Office under Reg. No. 2,439,305, having a priority date of April 26, 1999. The Complainant also owns the mark TAMIFLU and Design registered on June 4, 2002 under Reg. No. 2,576,662.
The mark TAMIFLU designates an antiviral pharmaceutical preparation, namely, a pharmaceutical product indicated for the treatment and prevention of influenza. In the past years and, in particular, in the past year, the Complainant's mark TAMIFLU has been extensively promoted, without limitation, in print advertisements, in medical journals, promotional materials, packaging, medical informational materials, television advertising and direct mailings. The Complainant has used the mark TAMIFLU for an antiviral pharmaceutical preparation since November, 1999 in the United States of America. Sales of the TAMIFLU pharmaceutical preparation have far exceeded hundreds of millions of dollars in the United States of America since 2000, and have been in the billions worldwide.
The Respondent registered the contested domain name <yourtamiflusshop.com> on January 25, 2006. The website resolves to a menu of various commercial products. A search on the website search engine for the term “tamiflu” produces links advertising the sale of various pharmaceutical products.
5. Parties' Contentions
The Complaint asserts that the contested domain name <yourtamifulshop.com> was registered and is being used by the Respondent for commercial purposes to trade on the name and reputation of the Complainant's mark TAMIFLU.
The Respondent did not file a response or otherwise reply to the Complainant's contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the 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.
The Complainant must carry its burden of proof by a preponderance of evidence. Bootie Brewing Company v. Deanna D. Ward and Grabebootie Inc., WIPO Case No. D2003-0185.
A. Identical or Confusingly Similar
The domain name at issue, <yourtamiflushop.com> contains the entire TAMIFLU trademark of the Complainant. The contested domain name makes little effort to conceal or mask the use of the TAMIFLU mark. The mere addition of words “your”and “shop” before and after the Complainant's mark does little to avoid the conclusion that the contested domain name is confusingly similar to the Complainant's TAMIFLU mark. See e.g., F. Hoffmann-La Roche AG v. Bulent Sedef, WIPO Case No. D2008-0636 (transferring <buy-tamiflu-online.com>); F. Hoffman-La Roche Inc. v. Onlinetamiflu.com, WIPO Case No. D2007-1859 (transferring <onlinetamiflu.com>); Hoffmann-La Roche Inc. v. US Online Pharmacies, WIPO Case No. D2006-0646 (transferring numerous domain names incorporating the TAMIFLU mark). The use of the word “your” as a prefix does little to dispel confusion. See e.g. F. Hoffman-La Roche v. Dmitry Gerasymenko, WIPO Case. No. D2007-0736 (transferring <yourvalium.com>; F. Hoffman-La Roche AG v. Huan Home, WIPO Case No. D2007-0199 (transferring <yourvaliuonline.info>). Nor does the addition of the word “shop” as a suffix ameliorate the confusing similarity. See e.g. Lilly ICOS LLC v. Julian Besprozvanny, WIPO Case No. D2006-0380 (transferring <cialisonlineshop.com>); Deutsche Telekom AG v. Gems N Pearls International Holding, WIPO Case No. D2005-0820 (transferring <tmobileshops.com>). In the circumstances of this case wrapping a well-known mark with merely descriptive or generic words is a doomed recipe for escaping a conclusion that the domain name is confusingly similar to the well-known mark.
“Numerous [UDRP] Panel decisions have established that the addition of words or letters to a mark used in a domain name does not alter the fact that the domain names are confusingly similar to the mark.… Generally, a user of a mark may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it'.” J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23:50 (4th ed. 1998). See America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004 (citing Sporty's Farm L.L.C. v. Sportsman's Market, Inc., 202 F. 3d 489, 497-98 (2d. Cir. 2000)). The addition of a generic word to a trademark will not generally avoid a determination that the contested domain name is confusingly similar. “The fact that a domain name wholly incorporates a complainant's trademark is sufficient to establish identity or confusing similarity for the purpose of the Policy, despite the addition of other words to such marks.” Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. Here the addition of a generic term does not serve to distinguish the domain name from the trademark, but may reinforce the association of the Complainant's trademark with the domain name. Viacom International Inc. v. Frank F. Jackson and Nancy Miller, WIPO Case No. D2003-0755; Caterpillar Inc. v. Roam the Planet Ltd., WIPO Case No. D2000-0275; Société Air France v. RBlue, WIPO Case No. D2005-0290. See generally, WIPO Overview of WIPO Panel views on Selected UDRP Questions, 1.1.
The Panel concludes the Complainant has met its burden under paragraph 4(a)(1).
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out in particular, but without limitation, three circumstances which, if proved by the Respondent, shall be evidence of the Respondent's rights to or legitimate interests in the domain name for the purpose of paragraph 4(a)(ii), namely:
(i) before any notice of the dispute to the Respondent, the Respondent's use of, or demonstrable preparation to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate non commercial 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.
The Respondent has not provided any explanation for the use of the Complainant's mark. The Complainant has specifically alleged that the Respondent's use is not authorized and that the Respondent has never been a licensee of the Complainant. The Respondent's websites is not a criticism site or website designed to provide merely informational content with non commercial purpose. There is no evidence that the Respondent is making a legitimate non commercial or fair use of the disputed domain name without intent for commercial gain. See the Policy, paragraph 4(c)(iii).
Accordingly, the Complainant has established that the Respondent has no rights of interest in the domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith, namely:
(i) circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) The 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 the Respondent has engaged in a pattern of such conduct; or
(iii) The Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product.
The Complainant must establish that the domain name was registered in bad faith and continues to be used in bad faith. Again, the Respondent has provided no explanation as to why the contested domain name was chosen. The Respondent is clearly aware of the TAMIFLU mark. “Tamiflu” is not a natural language word. Indeed, the apparent commercial purpose of the “www.yourtamiflushop.com” site is to promote the sale of TAMIFLU and other pharmaceutical products. Moreover, the Respondent has supplied false contact information which, in itself, can be considered as some evidence of bad faith. See Oxygen Media LLC v. Primary Source, WIPO Case No. D2000-0362. The Complainant has thus established that the contested domain name was registered and is being used in bad faith. Sanofi-aventis, Avnetis Pharmaceutical Holdings, Inc., v. Babak Azizzadeh, WIPO Case No. D2007-1727.
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 <yourtamiflushop.com> be transferred to the Complainant.
William F. Hamilton
Date: August 6, 2008