The Complainant is F. Hoffmann-La Roche AG, Basel, of Switzerland, represented internally.
The Respondent is Steven Pratt, Florida, of United States of America.
The disputed domain names <swine-flu-tamiflu.com> and
<tamiflu-swine-flu.com> are registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 6, 2009. On May 7, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On May 8, 2009, GoDaddy.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” 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 11, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was May 31, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 2, 2009.
The Center appointed Nathalie Dreyfus as the sole panelist in this matter on June 9, 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 is a Swiss global health-care company that operates worldwide in the fields of pharmaceuticals and diagnostics.
One of its products is an antiviral pharmaceutical preparation called Tamiflu.
According to the annexes submitted with the Complaint, the Complainant states that it is the owner of the following trademarks, for which it has provided copies:
- International Trademark TAMIFLU, No. 713623 registered on June 3, 1999 and covering goods in class 5;
- International Trademark TAMIFLU + logo No. 727329 registered on February 7, 2000 and covering goods in class 5.
The disputed domain names <tamiflu-swine-flu.com> and <swine-flu-tamiflu.com> were both registered on April 28, 2009, with GoDaddy and are currently being held by Respondent.
Respondent has used the domain names at issue to resolve to a website that offers Complainant's products and Complainant's competitor's products.
Complainant has put forth the following legal and factual contentions:
The words “swine” and “flu” could directly be related to its products and therefore could not sufficiently distinguish the domain names from the trademark's rights.
Complainant points out that, in the past few months, its product had important media coverage due to the swine flu pandemic threat and that the trademark's fame is likely to increase the likelihood of confusion.
Complainant also highlights that its trademark registrations precede the registration of the domain names in dispute.
Complainant asserts that Respondent is not a licensee of the Complainant, nor is he otherwise authorized to use any of Complainant's trademarks.
The domain names direct to a webpage offering and selling Complainant's products as well as competitive products. Therefore Complainant argues that Respondent registered the domain names in dispute in order to take advantage of Complainant's trademark reputation and obtain commercial gain.
As for the bad faith registration and use, according to Complainant there is no doubt that, on the date of registration of the domain names Respondent was aware of Complainant's trademark and product TAMIFLU.
Given the content of the websites, Complainant believes that it is obvious that the purpose for registering the litigious domain names was to attract Internet users by creating a likelihood of confusion due to the similarity to its trademarks, to make a commercial profit.
The Respondent did not reply to the Complainant's contentions and therefore is in default.
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(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 used in bad faith.
Complainant has demonstrated that it is the rightful owner of international trademark TAMIFLU + logo No. 727329. However, Complainant has not presented evidence that international trademark TAMIFLU n°713623 is still valid as no proof of renewal has been provided.
In accordance with paragraph 10(a) of the Rules, the Panel considers itself competent to independently obtain additional evidence from the internet to clarify this issue (see Société des Produits Nestlé SA v. Telmex Management Services, WIPO Case No. D2002-0070). On June 17, 2009 the Panel visited the Madrid Express database available on WIPO's website in order to investigate whether the trademark has been renewed. The Panel found that the trademark expected expiration date is June 3, 2019; therefore the trademark has been duly renewed.
A further aspect that needs to be assessed is whether there is confusing similarity between the trademark and the domain names in dispute. The domain names fully incorporate Complainant's trademark TAMIFLU associated with the generic terms “swine” and “flu”.
In previous Panel decisions it has often been held that the mere incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to the complainant's registered mark. (AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758; Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253).
Moreover, in light of previous decisions, the Panel considers that the mere addition of two generic terms, such as “swine” and “flu”, does not alleviate the likelihood of confusion (Alstom v. FM Laughna, WIPO Case No. D2007-1736; Groupe Auchan v. Jakub Kamma, WIPO Case No. D2007-0565). All the more so given the nature of those two words which are directly linked with Complainant's trademark and products, and therefore may reinforce the likelihood of confusion in the users' minds (LXR Holdco, LLC v. Much Media S.A./WHOIS Identity Shield, WIPO Case No. D2008-0958; 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. R Blue, WIPO Case No. D2005-0290).
Another difference between the trademark TAMIFLU and the domain names is the adjunction of “.com”. Such an adjunction is due to the current technical specificities of the domain name system. Therefore, this inclusion should not be taken into account when evaluating the identity or similarity between the disputed domain names and the Complainant's trademark (New York Life Insurance Company v. Arunesh C. Puthiyoth, WIPO Case No. D2000-0812; Accor S.A. v. jacoop.org, WIPO Case No. D2007-1257; Telstra Corp Ltd v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
As a result, the Panel finds that the domain names are identical or at least confusingly similar to the trademarks TAMIFLU owned by the Complainant. Therefore, the Panel considers that the condition set out by paragraph 4(a)(i) of the Policy has been met by the Complainant.
Paragraph 4(c) of the Policy sets out examples of what a respondent may demonstrate to show that it has rights or legitimate interests in respect of a domain name.
“Any of the following circumstances, in particular, but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you 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 (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 are 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 Panel believes on the record that there is no relationship between Respondent and Complainant and that Respondent is not a licensee of Complainant nor has Respondent otherwise obtained an authorization to use Complainant's trademark.
Furthermore several UDRP decisions have established that once a complainant has made a prima facie case that a respondent lacks legitimate interest or right, the burden shifts to the respondent to prove its right and legitimate interest in the domain name (see Sinbar v. Forsyte Corporation, WIPO Case No. D2008-1667; Southcorp Limited v. Frontier Direct Pty Ltd, WIPO Case No. D2004-0949; Cassava Enterprises Limited, Cassava Enterprises (Gibraltar) Limited v. Victor Chandler International Limited; WIPO Case No. D2004-0753).
In the present case, the Panel finds that Complainant has made a prima facie showing of Respondent´s lack of rights or legitimate interests to the disputed domain names. The Panel´s opinion is further corroborated by the lack of Response by Respondent in these proceedings as well as the Panel´s findings further below. Consequently, the Panel considers that the condition set out by paragraph 4(a)(ii) of the Policy has been met by Complainant.
For the purpose of paragraph 4(a)(iii) of the Policy, if the following circumstances, in particular but without limitation, are found by the Panel to be present, shall be evidence of the registration and use of the domain name in bad faith:
(i) circumstances indicating that the holder has registered or has 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 that Complainant, for valuable consideration in excess of the holder's documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from using the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder's website or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the holder's website or location or of a product or service on the holder's website or location.
Both conditions are cumulative, as stated in many decisions adopted under the Policy (Robert Ellenbogen v. Mike Pearson, WIPO Case No. D2000-0001). Consequently, the Complainant must clearly show that: (a) the domain names were registered by the Respondent in bad faith and, (b) the domain names has been used by the Respondent in bad faith.
The domain names are composed of the Complainant's trademark and the mere addition of the generic terms “swine” and “flu”.
The Panel considers that it has been established by previous decisions that Complainant's trademarks enjoy a worldwide reputation.
In previous decisions, panels have considered that in certain circumstances when a complainant's trademark is famous, respondent's bad faith could be inferred (AT&T Corp. v. LaPorte Holdings, Inc., WIPO Case No. D2004-1088, “Bad faith can be presumed based on the fame of Complainant's marks, such that the Respondent was aware or should have been aware of Complainant's well-known marks and claims of rights thereto”).
Accordingly, and more particularly in recent months Complainant's trademark has been the subject of important media coverage due to a viral disease also called the “swine flu”. In the Panel's eye it is no coincidence that Respondent has registered the domain names at issue when this virus was starting to spread and associated the trademark with the name of the disease.
Consequently, it is reasonable to infer that the Respondent did not ignore the existence of Complainant's trademark when it registered the domain names.
These findings lead the Panel to conclude that the domain names in dispute have been registered in bad faith by the Respondent.
In order to meet the requirement of paragraph 4(a)(iii) of the Policy, it is not sufficient to prove that the domain names are registered in bad faith, it is also necessary to prove that the domain names are being used in bad faith.
Respondent's domain names lead to a website displaying information on the swine flu and explaining that a way to prevent contamination is to take Complainant's product or a competitor's product. Respondent also offers users the possibility to order such products online via its website. The wording as well as the content of the domain names is very likely to mislead Internet users which will believe that Respondent is somehow affiliated to Complainant and that he is legitimately authorized to sell online its products. In the Panel's opinion this clearly constitutes use in bad faith. Previous decisions confirm this opinion (see F. Hoffmann-La Roche AG v. Bulent Sedef, WIPO Case No. D2008-0636. “The obvious inference to be drawn from using the domain name <buy-tamiflu-online.com> as a URL for the Respondent's online pharmacy site is that the Respondent intended to attract traffic to that site. Internet users are likely to believe that a site identified by a name incorporating the TAMIFLU mark must belong to or at least be approved by the Complainant. Once on the site some of those users can be expected to buy pharmaceuticals from the Respondent from which he will derive commercial gain. Such use falls full square within paragraph 4(b)(iv) and constitutes evidence of registration and use in bad faith”).
The Panel shall like to point out that no contact details could be found on the litigious website. Hence the users do not even know the provenience of the drugs sold on the website. The market of counterfeited drugs is easily accessible on the Internet. These drugs are often expired or even complete imitations. This is a serious matter of public health which should be closely monitored.
The Panel therefore considers that the disputed domain names have been registered in order to divert Internet users wishing to search for Complainant's marks and products to Respondent's websites and to obtain commercial gain.
As a result, the Panel finds that the domain names have been registered and used in bad faith. Therefore, the Panel considers that the condition set out by paragraph 4(a)(iii) of the Policy has been met by the Complainant.
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, <tamiflu-swine-flu.com> and <swine-flu-tamiflu.com> be transferred to the Complainant.
Dated: June 17, 2009