The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally.
The Respondent is Igor Nikitin of Rostov-na-Donu, the Russian Federation.
The disputed domain name <tamiflu-generic.com> is registered with Name.com LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 18, 2009. On May 18, 2009, the Center transmitted by email to Name.com LLC a request for registrar verification in connection with the disputed domain name. On May 19, 2009, Name.com LLC 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 20, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was June 9, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 15, 2009.
The Center appointed Nathalie Dreyfus as the sole panelist in this matter on June 23, 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 name <tamiflu-generic.com> was registered on May 4, 2009, with Name.com LLC and is currently being held by the Respondent.
The Respondent has used the domain name at issue to resolve to a parking page mostly displaying commercial links in the field of pharmaceuticals.
The Complainant has put forth the following legal and factual contentions.
The disputed domain name incorporates the Complainant's trademark in its entirety in association with the word “generic” and a hyphen.
The word “generic” could directly be related to its products and therefore could not sufficiently distinguish the domain name from the trademark's rights.
The 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.
The Complainant also highlights that its trademark registrations precede the registration of the domain name in dispute.
The Complainant asserts that the Respondent is not a licensee of the Complainant, nor is he otherwise authorized to use any of the Complainant's trademarks.
The domain name directs to a parking page displaying commercial links pointing towards the Complainant's products as well as competitive products. Therefore the Complainant argues that the Respondent registered the domain name in dispute in order to take advantage of the Complainant's trademark reputation and obtain commercial gain.
As for the bad faith registration and use, according to the Complainant there is no doubt that, on the date of registration of the domain name Respondent was aware of Complainant's trademark and product TAMIFLU.
Given the content of the website, Complainant believes that it is obvious that the purpose for registering the disputed domain name 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 is therefore 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 with respect to the domain name; and
(iii) The domain name has been registered and is being 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 No. 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 in order to clarify this issue (see Société des Produits Nestlé SA v. Telmex Management Services, WIPO Case No. D2002-0070). On July 2, 2009, the Panel checked the Madrid Express database available on WIPO's website 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 name in dispute. The disputed domain name fully incorporates Complainant's trademark TAMIFLU associated with the generic term “generic”.
In light of previous UDRP decisions, the Panel considers that the mere addition of a common English word, such as “generic”, does not alleviate the likelihood of confusion (Alstom v. FM Laughna, WIPO Case No. D2007-1736 and Groupe Auchan v. Jakub Kamma, WIPO Case No. D2007-0565). All the more so given the nature of this word which can be directly linked to 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 and Société Air France v. R Blue, WIPO Case No. D2005-0290).
In fact the word “generic” can really easily be associated with the pharmaceutical jargon.
UDRP panelists have already dealt with the specific case of the association of the word “generic” with the name of a pharmaceutical product and have held that it does not create any distinctiveness that helps eliminate the possibility of confusion (See Eli Lilly Company v. Ron Stopchycki, WIPO Case No. D2007-1885, related to the domain name <genericzyprexa.com> stating that “[i]t has been well-established by panels in previous WIPO UDRP decisions that the mere addition of a common or descriptive word, such as ‘generic', to a trademark is not sufficient to avoid a finding of confusing similarity with that trademark”).
Moreover, in previous UDRP decisions the mere incorporation of a trademark in its entirety has been found to 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 and Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253).
Another difference between the trademark TAMIFLU and the disputed domain name is the adjunction of “.com”. Such an adjunction is due to the current technical requirements of the domain name system. Therefore, this inclusion should not be taken into account when evaluating the identity or similarity between the disputed domain name 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 and Telstra Corp Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
As a result, the Panel finds that the disputed domain name is identical or 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 or 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 and 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 with respect to the disputed domain name. The Panel's opinion is further corroborated by the lack of a 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 name has been used by the Respondent in bad faith.
The domain name is composed by the Complainant's trademark and the mere addition of the descriptive term “generic”.
The Panel considers that it has been established by previous UDRP decisions that Complainant's trademarks enjoy a worldwide reputation. (F. Hoffmann- La Roche AG v. PrivacyProtect.org, WIPO Case No. D2007-1708 and F. Hoffmann-La Roche AG v. Intermediate in Business, WIPO Case No. D2006-0620).
In previous UDRP 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 view it is no coincidence that Respondent has registered the domain name at issue when this virus was starting to spread. All the more so given the fact that Tamiflu is an invented word which has no meaning whatsoever in any language.
According to some research made by the Panel, it seems fair to argue that the disputed domain name has not only been registered to confuse users, but also to deceive them because, at the time the disputed domain name was registered, no generic version of Tamiflu had been released yet and a sub-license had been granted only for one country.
Consequently, it is reasonable to infer that the Respondent did not ignore the existence of Complainant's trademark when he registered the disputed domain name.
These findings lead the Panel to conclude that the domain name in dispute has 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 name is registered in bad faith, it is also necessary to prove that the domain name is being used in bad faith.
Respondent's domain name leads to a parking page displaying various sponsored links mostly in the field of pharmaceuticals. The Complainant's products are named on the website along with competitor's products and the links present on the domain name's website lead, among others, to online pharmacies. The wording as well as the content of the domain name is very likely to mislead Internet users which might believe that Respondent is somehow affiliated to Complainant and that he is legitimately authorized to sell its products online. In the Panel's opinion this clearly constitutes use in bad faith. Previous UDRP 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 fact that the disputed domain name resolves to a parking page confirms Respondent's bad faith because it links to a website selling Complainant's product but also competing ones. It is now well-established that the use of a parking page in this manner is strong evidence of bad faith. See, e.g., Bayerische Motoren Werke AG v. bmwrider llc, WIPO Case No. D2008-0610; Roust Trading Limited. v. AMG LLC, WIPO Case No. D2007-1857; Express Scripts Inc. v. Windgather Investments Ltd./Mr. Cartwright, WIPO Case No. D2007-0267 and Sports Saddle, Inc. v. Johnson Enters, WIPO Case No. D2006-0705. Not only does Respondent's registration divert Internet users to his site based on the goodwill of the trademark TAMIFLU, but it also threatens to divert actual sales away from Complainant.
As a result, the Panel finds that the domain name has 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 name <tamiflu-generic.com> be transferred to the Complainant.
Dated: July 3, 2009