The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally.
The Respondent is eComplex Corporation of Illinois, United States of America.
The disputed domain names <swineflutamiflu.com> and <tamifluswineflu.com> (the “domain names”) are registered with Wild West Domains, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 5, 2009. On May 5, 2009, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the disputed domain names. On May 6, 2009, Wild West Domains, 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” or “UDRP”), 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 May 8, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was May 28, 2009.
On May 11, 2009, the Center received an email from the Complainant, requesting suspension of the administrative proceeding until May 20, 2009 in order to enable the parties to discuss settlement options. On May 18, 2009, the Center received an email from the Complainant indicating that settlement talks had not been successful, and that the Complainant wished to re-institute the proceeding. The Center received a message from the Respondent of same date, indicating that it was still willing to consider settlement. The case was re-instituted on May 19, 2009, and the deadline for response was set at June 5, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 9, 2009.
The Center appointed Alan L. Limbury as the sole panelist in this matter on June 25, 2009. 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.
The Complainant manufactures and markets a pharmaceutical treatment for flu under the trademark TAMIFLU, which it has registered in numerous countries, with an apparently earliest priority date of May 4, 1999.
The domain names were registered on April 27, 2009. At the time of the Complaint, they led to websites offering sponsored links to flu remedies. For some time prior to their registration, a pandemic of flu known as swine flu had received worldwide media attention, as had the Complainant's TAMIFLU product as a treatment for swine flu.
The Complainant says that the domain names are confusingly similar to its TAMIFLU trademark, and that the Respondent has no rights or legitimate interest in the domain names, which were registered and are being used in bad faith.
As to legitimacy, the Complainant says it has given no permission to use its mark in the domain names and that the Respondent is using them for commercial gain and with the purpose of capitalizing on the fame of the Complainant's TAMIFLU mark. The Complainant cites Fox News Network, LLC v. Warren Reid, WIPO Case No. D2002-1085:
“using the Domain Name to mislead users by diverting them to a search engine […] does not appear to be use in connection with a bona fide offering of goods or services and therefore legitimate”
The Complainant says the domain names were registered in bad faith since at the time of registration the defendant had, no doubt, knowledge of the Complainant's mark. The domain names are obviously being used in bad faith since the Respondent is intentionally attempting (for a commercial purpose) to attract Internet users to its websites by creating a likelihood of confusion with the Complainant's well-known mark as to the source, affiliation and endorsement of Respondent's websites or of the products or services posted on or linked to Respondent's websites.
The Respondent is also illegitimately capitalizing on the fame of the TAMIFLU trademark by intentionally misleading consumers into believing that the websites behind those links are associated with or recommended by the Complainant, thereby generating unjustified revenues.
The Respondent did not reply to the Complainant's contentions.
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the domain names are identical or confusingly similar to a mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain names; and
(iii) the domain names have been registered and are being used in bad faith.
The Respondent having failed to file a Response, asserted facts may be taken as true and reasonable inferences may be drawn from the information provided by the Complainant, Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441. See also Microsoft Corporation v. Freak Films Oy, WIPO Case No. D2003-0109; SSL INTERNATIONAL PLC v. MARK FREEMAN, WIPO Case No. D2000-1080 and ALTA VISTA COMPANY v. GRANDTOTAL FINANCES LIMITED et. al., WIPO Case No. D2000-0848.
The Complainant clearly has rights in the registered mark TAMIFLU.
The test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, Wal-Mart Stores, Inc. v. Traffic Yoon, WIPO Case No. D2006-0812. The top level domain “.com” is to be disregarded, Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525 and Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429. Likewise the content of the Respondent's websites must be disregarded, A & F Trademark, Inc. and Abercrombie & Fitch Stores, Inc. v. Justin Jorgensen, WIPO Case No. D2001-0900.
Here the domain names comprise the Complainant's trademark in its entirety, together with the expression “swine flu”, which has come to denote a particular form of flu for which the Complainant's TAMIFLU treatment is associated in the public mind. Whether appended as a prefix or as a suffix, that expression does nothing to distinguish the domain names from the Complainant's mark. Accordingly the Panel finds the domain names to be confusingly similar to the Complainant's TAMIFLU mark.
The Complainant has established this first element of the Policy.
The Complainant's assertions suffice to constitute a prima facie showing of absence of rights or legitimate interests in the domain names on the part of the Respondent. The evidentiary burden therefore shifts to the Respondent to show by concrete evidence that it does have rights or legitimate interests in the domain names, Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 and Cassava Enterprises Limited, Cassava Enterprises (Gibraltar) Limited v. Victor Chandler International Limited, WIPO Case No. D2004-0753.
In the absence of a Response, the Panel finds that the Respondent has no rights or legitimate interests in the domain names, for the reasons given by the Complainant.
The Complainant has established this second element of the Policy.
This Panel respectfully adopts the reasoning of the learned panel in Hoffmann-La Roche Inc. v. WhoisGuard, WIPO Case No. D2005-1288, cited by the Complainant:
“[w]ith 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”.
It is clear from the content of the websites that the Respondent is fully aware of the Complainant's TAMIFLU mark. The Panel infers the Respondent was so aware at the time of the registration of the domain names and intended, in registering the domain names, to target the Complainant and its mark.
The sponsored links available at the Respondent's websites are of the kind from which it may be expected that the Respondent makes commercial gain. Accordingly, in the absence of a Response, the Panel finds that the Respondent is using the domain names intentionally to attempt to attract, for commercial gain, Internet users to the Respondent's websites by creating a likelihood of confusion with the Complainant's mark as to the affiliation of the Respondent's websites and the products available through the links thereon.
Under the Policy, paragraph 4(b)(iv), this finding is evidence of both bad faith registration and bad faith use. Accordingly, the Panel finds that the Respondent registered and is using the domain names in bad faith.
The Complainant has established this third element of the Policy.
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 <swineflutamiflu.com> and <tamifluswineflu.com> be transferred to the Complainant.
Alan L. Limbury
Dated: July 9, 2009