The Complainant is F. Hoffmann-La Roche AG, of Basel, Switzerland represented internally.
The Respondent is Global Communciations Link / Domains by Proxy, Inc., of Ontario Canada.
The disputed domain names <canadatamiflu.com> and <canadiantamiflu.com> are registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 13, 2009. On May 13, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On May 13, 2009, GoDaddy.com, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 20, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on May 20, 2009. The Center verified that the Complaint together with the amendment to 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 25, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was June 14, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 17, 2009.
The Center appointed Lana I Habash as the sole panelist in this matter on July 2, 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 one of the world leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics, with global operations in over 100 countries. The Complainant holds trademark registrations of the trademark TAMIFLU, which is used in connection with a flu medicine, including international registrations Nos. 713623 & 727329 with priority date of May 1999.
The disputed domain names <canadiantamiflu.com> and <canadatamiflu.com> were registered in April 2009, and point to parking websites of the Registrar GoDaddy.com Inc. with links to other websites.
The Complainant asserts that its trademark TAMIFLU, which designates an antiviral pharmaceutical preparation, namely a product against flu has been, particularly in the past months heavily referred to in many mass media in view of current so called “swineflu”. The Complainant contends that the notoriety of the trademark increases the likelihood of confusion with the disputed domain name, which has been registered after the registration of the trademark, and in the advent of swineflu.
The Complainant also asserts that it has exclusive rights to the trademark and it has not authorized the Respondent in any manner to use the trademark in the disputed domain names.
The Complainant alleges that the disputed domain names <canadatamiflu.com> and <canadiantamiflu.com> divert Internet users to parking websites of the Registrar GoDaddy.Inc. with links to commercial websites, and that the Respondent's only reason in registering and using the disputed domain names is to benefit from the reputation of the trademark TAMIFLU and illegitimately trade on its fame for commercial gain and profit.
Furthermore, the Complainant contends that, at the time of registration of the disputed domain names, the Respondent must have had knowledge of the Complainant's well-known product/ trademark “TAMIFLU”, considering that it is an invented term by the Complainant, which acquired a great deal of fame. The Complainant alleges that it is evident that the disputed domain names are also being used in bad faith, as the Respondent is intentionally attempting (for commercial purpose) to attract Internet users to the Respondent's websites, by creating a likelihood of confusion with the Complainant's well known mark as to the source, affiliation and endorsement of the Respondent's websites or of the products or services posted on or linked to the Respondent's websites.
The Respondent did not reply to the Complainant's contentions.
According to the Policy, the Complainant must prove each of the three elements referred to in paragraph 4(a) of the Policy in order to have a favorable order, namely that:
i. the disputed domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
ii. the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
iii. the disputed domain names have been registered and is being used in bad faith.
The Complainant has demonstrated trademark rights in the trademark TAMIFLU supported by International Registration Nos. 713623 & 727329 with priority date of May 1999. Based on the facts at hand, the Panel finds that the disputed domain names <candatamiflu.com> and <canadiantamiflu.com> are confusingly similar to the trademark TAMIFLU in which the Complainant has rights. The disputed domain names fully incorporate the trademark TAMIFLU, of which the Complainant holds various trademark registrations worldwide, including the International Registrations cited above.
The additions of the words “Canada” and “Canadian” do not distinguish the disputed Domain Names from the trademark in such a manner that eliminates confusion, considering that the disputed Domain Names contain the Trademark in its entirety and the added words “Canada” and “Canadian” are not specific, but may in fact increase confusion as to suggest that the disputed Domain Names belong to a Canadian subsidiary of the Complainant. See Accor v. Lee Dong Youn, WIPO Case No. D2008-0705; eBay Inc. v. Sunho Hong, WIPO Case No. D2000-1633 America Online v. Dolphin@Heart, WIPO Case No. D2000-0713.
The Panel finds that the Respondent in this case lacks rights or legitimate interests in the disputed domain names.
As indicated above, the Complainant has demonstrated that it has developed considerable goodwill in the trademark TAMIFLU, particularly in light of the public concern with swineflu, during which time, the Respondent registered the disputed domain names.
In the absence of any contention to such facts from the Respondent, the Panel considers that the Complainant has made a prima facie case of lack of rights or legitimate interest on part of the Respondent, particularly, in the absence of any license from the Complainant to use the Trademark on its website, or in any other way. See Inter-IKEA Systems B.V. v. Evezon Co. Ltd., WIPO Case No. D2000-0437.
Moreover, the Panel is convinced that the use of the disputed domain names by the Respondent in the current manner does not qualify as a legitimate interest, since the Respondent is using the disputed domain names to point to parking websites, which provide a click through service to websites, which offer competing products with those of the Complainant's.
Various UDRP Panels have held that such sites, providing click through sponsored links to other websites do not generally grant the registrant rights or legitimate interests in the domain name, even if such directory is provided by the Registrar and not the Respondent itself. See MBI, Inc. v Moniker Privacy Services/Nevis Domains LLC, WIPO Case No. D2006-0550; Royal Bank of Canada v. Henry Chan, WIPO Case No.. D2003-0031 and The Knot, Inc. v. Ali Aziz, domain name <myknot.com>, WIPO Case No. D2007-1006.
Moreover, in F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451, the Panel found that “the use of the domain name as a parking website is not a bona fide non-commercial use pursuant to paragraph 4(c)(iii) of the Policy, even if the content on the parking website available at the disputed domain name is not developed by the Respondent but provided by the Internet Service Provider Go Daddy”
In light of the Respondent's failure to respond to the Complaint, no information has been provided to the Panel to demonstrate preparation to use the disputed domain names for a bona fide offering of goods or services and considering that the Respondent is not commonly known by the disputed domain names, the Panel finds that the Complainant satisfies the requirements of paragraph 4(a)(ii) of the Policy.
For the purposes of the Policy, bad faith may be determined by evaluating four factors, which are mentioned in the Policy on a non-exclusive basis (paragraph 4(b));
(i) circumstances indicating that the registrant 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 that complainant, for valuable consideration in excess of the registrant's documented out-of-pocket costs directly related to the domain name; or
(ii) the registrant 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 registrant has engaged in a pattern of such conduct; or
(iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant'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 registrant's website or location or of a product or service on the registrant's website or location.
Considering the facts of this case, the Panel is convinced that bad faith according to the fourth factor can be inferred; the fact that the Respondent is using the domain names to point to a directory of competing products and sites that provide information about the flu and how to combat it, supports the finding of knowledge on part of the Respondent of the good will of the Complainant. Therefore, the Panel believes that the Disputed Domain Names were registered to direct consumers to competing websites, for the purpose of commercial gain, especially at such a time, when TAMIFLU has been featured in mass media, in response to the outbreak of swineflu. See Hoffmann-La Roche Inc. v. WhoisGuard. WIPO Case No. D2005-1288.
A number of previous UDRP decisions concluded that the use of a domain name to redirect Internet users to websites of competing organizations constitutes bad faith registration and use under the Policy. Such decisions include Check Into Cash, Inc. v. Rico Marquez, WIPO Case No. D2007-094; Edmunds.com, Inc. v. Ult. Search Inc., WIPO Case No. D2001-1319 and Verisign, Inc. v. jumbo domains, WIPO Case No. D2006-1582.
Considering the above, and on a balance of probabilities, the Panel finds that the Respondent did register and is using the disputed domain names 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 names <canadatamiflu.com> and <canadiantamiflu.com> be transferred to the Complainant.
Lana I Habash
Dated: July 14, 2009