Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, internally represented.
Respondent is PrivacyProtect.org of Moergestel, the Netherlands / Dena Lanterman, TBA Corp. of Geneva, Switzerland.
The disputed domain name <tamiflupig.com> (the “Domain Name”) is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 7, 2009. On July 7, 2009, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain name. On July 9, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com transmitted by email to the Center its verification response, disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on July 9, 2009, providing the registrant and contact information disclosed by the Registrar and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on July 10, 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 Respondent of the Complaint, and the proceedings commenced on July 10, 2009. This proceeding was suspended from July 13, 2009 upon Complainant's request, the expectation being that the dispute would be resolved amicably. Having failed to settle the case, Complainant requested that the proceeding be re-instituted, and the proceeding was re-instituted on July 28, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was August 14, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on August 17, 2009.
The Center appointed Bernhard F. Meyer as the Sole Panelist in this matter on August 25, 2009. The Panel finds that it was properly constituted and submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center, to ensure compliance with the Rules, paragraph 7.
Complainant, with its affiliated companies, is a worldwide operating healthcare group. It is active, along with the production and disposal of reagents and hardware for medical diagnosis, particularly in the research, production and disposal of medicaments.
Complainant is, among others, the owner of the following trademarks:
- TAMIFLU International Registration No. 713623, registered May 4, 1999;
- TAMIFLU International Registration No. 727329, registered September 23, 1999.
Complainant's trademark TAMIFLU designates antiviral pharmaceutical preparations, namely a product to treat flu.
Respondent, Dena Lanterman, registered the Domain Name on May 25, 2009.
Complainant asserts that the Domain Name is confusingly similar to its trademark TAMIFLU.
Moreover, Complainant states that given Complainant's exclusive rights in the trademark TAMIFLU, Respondent has no rights or legitimate interests in respect of the Domain Name.
In Complainant's view, there is no doubt that Respondent had knowledge of Complainant's notorious trademark TAMIFLU at the time of registration of the Domain Name. By now selling Complainant's products through the website at the Domain Name, Respondent clearly demonstrates its intention to attract Internet users to its website, for commercial gain, by creating a likelihood of confusion with Complainant's trademark. For those reasons, Complainant is convinced that the Domain Name was registered and is being used in bad faith.
Being served properly with the Complaint by the Center, Respondent failed to respond within the time limit set. It is assumed, however, that Respondent opposes Complainant's request.
Since Respondent has not submitted a Response, the Panel will base its decision on the allegations brought forward by Complainant and the evidence accompanying the Complaint.
According to paragraph 4(a) of the Policy, Complainant must prove each of the following three elements in order to succeed in this proceeding:
(i) the Domain Name is identical or confusingly similar to a trademark or servicemark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
The Panel finds it established that TAMIFLU is a well-recognized trademark and is both distinctive and famous.
The Domain Name <tamiflupig.com> incorporates Complainant's entire trademark TAMIFLU along with the word “pig”. Taking into account that a pandemic disease is presently spreading around the world which in several western countries is commonly referred to as “swine-flu”, the word “pig” (which is a synonym for “swine”) combined with the name of the famous antiviral drug Tamiflu, simply points out to consumers another form of application of the drug. Therefore, the addition of the word “pig” to Complainant's trademark TAMIFLU does nothing to prevent the Domain Name from being confusingly similar to Complainant's trademark. Quite to the contrary, the word combination increases the self-evident assumption of consumers that a connection exists between the Domain Name <tamiflupig.com> and Complainant's trademark. Hence, the Domain Name is confusingly similar to Complainant's trademark TAMIFLU (see F. Hoffmann-La Roche v. Globex International, WIPO Case No. D2006-0692).
The preconditions of paragraph 4(a)(i) of the Policy are fulfilled.
TAMIFLU is a freely invented, non-descriptive trademark in which Complainant and any third party licensed by Complainant have legitimate business interests. Respondent has not been granted any license, permission or other authorization by Complainant to use the trademark TAMIFLU. Still, Respondent not only registered a domain name reflecting Complainant's entire trademark in May 2009, but also started selling, among other third party products, Complainant's product Tamiflu through the site at the Domain Name. In light of the foregoing, there is no doubt that Respondent's intent was to misleadingly divert consumers to its website in order to realize commercial gain by capitalizing on the fame of Complainant's trademark TAMIFLU. Such behavior, as Complainant correctly asserts, cannot be considered as a bona fide offering of goods or services and is contradictory to a legitimate noncommercial or fair use of the Domain Name (see Samsung Electronics Co. Ltd v. NA/Ki Choi, WIPO Case No. D2007-0011).
Given the absence of an answer to the Complaint and the evidence forwarded by Complainant, the Panel concludes that Respondent has no rights or legitimate interests in respect of the Domain Name.
Thus, the Panel holds that the requirements of paragraph 4(a)(ii) of the Policy have been fulfilled.
Although Respondent did not answer to Complainant's allegations, Complainant needs to prove bad faith registration and use in order to prevail in this proceeding.
Considering the fame of the trademark TAMIFLU, the extensive media attention to the product in connection with the swine flu since early 2009, and the formative nature of the word “tamiflu”, the Panel concludes that Respondent was well aware of Complainant's rights at the time of registration of the Domain Name. Otherwise Respondent would not have chosen to integrate the unique term “tamiflu” into the Domain Name <tamiflupig.com> (see Hoffmann-La Roche Inc. v. WhoisGuard, WIPO Case No. D2005-1288).
Under the circumstances described above, it also appears evident to the Panel that Respondent intentionally tries to confuse Internet users as to the owner of its website at the Domain Name. Confusion is increased by the fact that Respondent sells, among others, Complainant's products through this website without clearly disclosing its own identity. Consumers are led to believe that Complainant is the owner of the website at the Domain Name. According to paragraph 4(b)(iv) of the Policy, such behavior is exemplary of bad faith registration and use.
Thus, registration and use in bad faith have been proven by Complainant, and the prerequisites of paragraph 4(a)(iii) of the Policy are met.
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 <tamiflupig.com> be transferred to Complainant.
Bernhard F. Meyer
Dated: September 7, 2009