The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally.
The Respondent is MEDISOURCE LTD of British Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
The disputed domain name <tamiflu-relenza.com> is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 22, 2009. On July 22, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On July 22, 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 July 24, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was August 13, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 14, 2009.
The Center appointed Ross Wilson as the sole panelist in this matter on August 18, 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, together with its affiliated companies, is one of the world's leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics. It has global operations in more than 100 countries.
The mark TAMIFLU designates an antiviral pharmaceutical preparation to be used against influenza. It is registered in many countries including two International Registrations with a priority date of June 1999.
The Complainant contends that the disputed domain name is confusingly similar to its TAMIFLU trademark because it incorporates the mark in its entirety. The addition of another term (which is a third party's trademark) does not distinguish the disputed domain name from the Complainant's trademark.
The Complainant has exclusive rights for TAMIFLU and no licence, permission or authorization consent was granted to use TAMIFLU in the disputed domain name. The disputed domain name directs Internet users to websites which are search engines composed of sponsored links for commercial gain and with the purpose of capitalizing on the fame of the Complainant's mark.
In the Complainant's view the Respondent's only reason for registering and using the disputed domain name was to benefit from the reputation of the trademark TAMIFLU and illegitimately trade on its fame for commercial gain and profit.
The Complainant has no doubt that the disputed domain name was registered in bad faith since at the time of the registration the Respondent had knowledge of the Complainant's well-known product/mark TAMIFLU. The Complainant contends that the disputed domain name was also being used in bad faith because 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 website or of the products or services posted on or linked to the Respondent's website.
The Complainant argues that the Respondent, by using the disputed domain name, is intentionally misleading consumers and confusing them so as to attract them to other websites making them believe that the websites behind those links are associated or recommended by the Complainant. As a result, the Respondent may generate unjustified revenues and therefore is illegitimately capitalizing on the TAMIFLU trademark fame.
The Respondent did not reply to the Complainant's contentions.
The onus is on the Complainant to prove each of the three elements set out in paragraph 4(a) of the Policy, as follows:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Complainant provided compelling evidence that it has registered rights in the trademark TAMIFLU in many countries.
The disputed domain name consists of the Complainant's trademark in full together with the word relenza and the suffix gTLD “.com”.
It has been held in many previous cases that incorporating a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to a registered trademark (see The Stanley Works and Stanley Logistics Inc. v. Camp Creek Co., Inc., WIPO Case No. D2000-0113 and World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306).
The word relenza is the product name of a rival antiviral pharmaceutical preparation and is also recognised as a well known trademark. Recently, both medicines have received considerable publicity associated with the reduction of swine flu symptoms.
The inclusion of a third party's trademark in a domain name incorporating a complainant's trademark in its entirety does not provide sufficient differentiation for a disputed domain name to be considered distinctive from a complainant's trademark. Panels have consistently found a likelihood of confusion under these circumstances (see Hoffmann-La Roche Inc. v. #1 Viagra Propecia Xenical & More Online Pharmacy, WIPO Case No. D2003-0793).
In view of the above, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to the Complainant's trademark in which it has demonstrable rights. The Complainant therefore has satisfied the first element of the Policy.
Paragraph 4(c) of the Policy sets out how a respondent can demonstrate rights to or legitimate interests in a disputed domain name. In this case, the Respondent has chosen not to file any submission or evidence to demonstrate its rights or legitimate interests in the disputed domain name <tamiflu-relenza.com>. In this situation, paragraph 14(b) of the Rules allows the Panel, in the absence of exceptional circumstances, to draw such inferences from the absence of a Response from the Respondent as it considers appropriate.
The Respondent has chosen to use a domain name that contains the Complainant's trademark in its entirety without authorisation by the Complainant by way of any license, consent or other right. The evidence provided by the Complainant demonstrates that the Respondent has used the disputed domain name to attract Internet users to sponsored sites, a number of which specifically relate to influenza.
The act of redirecting Internet users to other websites by using the reputation and goodwill of the Complainant's trademark through a domain name that incorporates a well known trademark to a sponsored website unconnected to the trademark owner, does not constitute bona fide offering of goods and services (see Fox News Network, LLC v. Warren Reid, WIPO Case No. D2002-1085; Madison Square Garden L.P., Radio City Trademarks, LLC v. Great Camanoe Investments Ltd / Belize Domain Names Whois Service Lt, WIPO Case No. D2007-0819; Lance Armstrong Foundation v. Chris Angeles, WIPO Case No. D2005-0888; Baudville, In. v. Henry Chan, WIPO Case No. D2004-0059 and Sanofi-aventis v. Milton R. Benjamin, WIPO Case No. D2005-0544).
Given the opportunity through this dispute process the Respondent has failed to rebut the Complainant's case or assert any rights in the domain name.
Based on the above the Panel considers the Complainant has satisfied the second element of the Policy.
For the purposes of determining if there was bad faith registration and use, the Panel considered the circumstances of the registration and use of the domain name as set out in paragraph 4(b) of the Policy, noting that it does not impose any limitation on how the registration and use of a domain name in bad faith is evidenced.
The Respondent registered the disputed domain name on June 15, 2009, just days after the World Health Organization's announced on June 11, 2009 the start of a world influenza pandemic. At that time there had been considerable media publicity about the so called swine flu. The media frequently made references to two prominent antiviral products, tamiflu and relenza, noted for their reduction of influenza symptoms. The Respondent chose to construct a domain name by including both well known pharmaceutical products, namely, the Complainant's trademark and a third party's trademark. Also, the Respondent's website specifically incorporates influenza sponsored links. In the Panel's mind there can be no doubt that the Respondent was aware of the Complainant's medicine at the time of registering the domain name and in doing so registered in bad faith.
As mentioned above, the Complainant has provided evidence that the Respondent's website provided links to sponsored influenza websites which indicates bad faith use. The use of the Complainant's trademark was an attempt by the Respondent to infer that there is some association between the Complainant and the sponsored links. Clearly, the Respondent was intentionally attracting Internet users for commercial gain.
On the basis of the above and the evidence provided by the Complainant, the Panel is satisfied that the Respondent's conduct falls within paragraph 4(b)(iv) of the Policy. Therefore, the Panel finds that the Complainant has demonstrated that the disputed domain name was registered and used 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 name <tamiflu-relenza.com> be transferred to the Complainant.
Dated: August 28, 2009