WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hoffmann-La Roche Inc. v. Transure Enterprise Ltd, Host Master
Case No. D2008-0938
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 Transure Enterprise Ltd, Host Master, Road Town, Tortola, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed Domain Name <tamilfu.com> is registered with Above.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 24, 2008. On June 20, 2008, the Center transmitted by email to Above.com, Inc. a request for registrar verification in connection with the disputed Domain Name. On June 26, 2008, Above.com, Inc. 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 July 2, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was July 22, 2008. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on July 25, 2008.
The Center appointed Fleur Hinton as the sole panelist in this matter on July 31, 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
As stated in the Complaint, the Complainant and its affiliated companies are a world known pharmaceutical manufacturing group and the Complainant's trademark TAMIFLU has been extensively promoted and used as an antiviral preparation. A Google search in which the keyword is “tamiflu” reveals pages of references to the Complainant's TAMIFLU product which is used as an application against bird flu. The Complainant has received widespread publicity around the world independent of its own promotional activity.
The Complainant has registered the trademark TAMIFLU in the United States of America (“United States”) with a first use date of November 12, 1999. The Complainant also owns the domain name <tamiflu.com>.
5. Parties' Contentions
The Complainant argues that the Domain Name contains the Complainant's trademark with only the juxtaposition of one pair of letters, the “f” and the “l”. The Complainant contends that this small difference does not suffice to prevent the Domain Name from being found to be confusingly similar to the Complainant's trademark and further argues that the Domain Name is an example of a typosquatting case.
The Complainant states that the Respondent does not have any rights or legitimate interests in the Domain Name. The Complainant's trademark is an invented word and the Complainant has not licensed the Respondent to use it in relation to anything whatsoever. The Complainant refers also to the Respondent's use of the Domain Name as a means of offering pornography and linking visitors to the site of other pornographic sites and cites the UDRP case of Ultimate Electronics, Inc v Phayze, Inc., WIPO Case No. D2002-0851 to support its contention that the use of a domain name to offer links to pornographic sites and content is not a noncommercial or fair use of a domain name. In further support, the Complainant points to the content of the site to which the Domain Name leads as evidence that the Domain Name is not being used as a bonafide offering goods or services by the Respondent.
The Complainant argues that the Respondent's registration and use of the Domain Name is in bad faith. The Respondent cannot have had any intention in using the Domain Name which is so close to the Complainant's trademark other than to profit in the promotion of its business in pornography by attracting people to its site who have made a typographical error in trying to enter the Complainant's trademark which corresponds to its domain name when attempting to visit the Complainant's website.
The Respondent did not file a Response or otherwise reply to the Complainant's contentions.
6. Discussion and Findings
In order to make out its case, the Complainant must satisfy the Panel that the Respondent, in its adoption of the Domain Name has breached section 4(a) of the Policy by showing that:
(i) the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in the Domain Name, and;
(iii) the Domain Name bas been registered and is being used in bad faith.
A. Identical or Confusingly Similar
It is clear that the Domain Name is confusingly similar to the Complainant's widely-known trademark as it is identical to the Complainant's trademark with the juxtaposition of the “f” and “l”. Further, a Google search using the keyword “tamiflu” shows many pages of entries of references to the Complainant's trademark TAMIFLU. The Panel notes that the trademark TAMIFLU is a widely-known trademark and finds that the Domain Name is confusingly similar to the Complainant's trademark.
B. Rights or Legitimate Interests
In order to satisfy the criterion that the Respondent has no rights or legitimate interests in the disputed Domain Name, the Complainant must at least establish an unrebutted prima facie case to that effect. In this instance, the Respondent has adopted the Domain Name which is confusingly similar to the Complainant's trademark. The Complainant has stated that it has not given a license or other authorization to the Respondent to use the Domain Name.
Further, perusal of the website which is reached when one enters the Domain Name does not show that the Respondent is commonly known by the Domain Name or that the Domain Name is being used for noncommercial or fair use purposes. The Panel finds, therefore, that the Complainant has satisfied its burden of establishing a prima facie case that the Respondent has no rights or legitimate interests in the Domain Name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions Section 2.1.
As the Respondent has not taken the opportunity offered it to provide argument or evidence to the contrary (e.g., under paragraph 4(c)), the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
The Respondent has adopted for its Domain Name a term which is similar to the Complainant's widely-known trademark, which is an invented word. The Complainant alleges that the Respondent has engaged in “typosquatting”, that is, taking a widely-known trademark and changing the position of a couple of letters so that people who enter a typographical error when attempting to visit the Complainant's website by entering its trademark as a domain name will, instead, be taken to the Respondent's very different website.
The Panel finds that this is a case of “typosquatting” and further that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website, 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 or service on the Respondent's website. Further, the failure of the Respondent to use the Domain Name in any way on its website other than as its address is further evidence to establish on balance that the Respondent registered and is using the Domain Name in bad faith. As the Respondent has not taken the opportunity offered it to put its own case, the Panel finds that the Respondent has registered and is using the 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 <tamilfu.com> be transferred to the Complainant.
Dated: August 13, 2008