The Complainant is F. Hoffmann-La Roche AG, Basel, Switzerland, represented internally.
The Respondent is Rudiger Meissner, Berlin, Germany.
The disputed domain name <tamiflu-shop.org> is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 24, 2009. On August 24, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On August 24, 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 for the administrative, billing and technical contacts. 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 August 28, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was September 17, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 22, 2009.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on September 28, 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 operations in more than 100 countries. The Complainant is the proprietor of a number of international trademark registrations for the mark TAMIFLU in class 5 (for example, International Registration number 713623, registered June 3, 1999 and number 727329, registered February 7, 2000). This trademark is protected in a multitude of countries worldwide including Germany, where the Respondent is based. The mark TAMIFLU is used by the Complainant to represent its antiviral pharmaceutical preparation which is used in the treatment of influenza and which has gained particular notoriety during the current outbreak of so-called “swine flu”. The Respondent registered the disputed domain name on July 27, 2009. A screenshot of the website associated with the disputed domain name dated August 28, 2009 shows that this contains advertising hyperlinks provided by the registrar of the disputed domain name including such items as “swine flu” and “Bioflu”.
The domain name of the Respondent is confusingly similar to the Complainant's mark as it incorporates that mark in its entirety. The addition of the generic term “shop” does not sufficiently distinguish the domain name from the trademark. In recent years and particularly in the past months the Complainant's TAMIFLU mark has been referred to in many mass media in view of the current so-called swine flu. The trademark's notoriety will increase the likelihood of confusion. The Complainant's registration and use of the TAMIFLU mark predates the Respondent's registration of the domain name.
The Respondent has no rights or legitimate interests in the domain name. The Complainant has exclusive rights in the TAMIFLU trademark and has not granted any licence, permission or authorisation to the Respondent to use it. The Respondent is using the domain name for commercial gain to capitalise on the fame of the Complainant's TAMIFLU trademark. The Respondent's use of the domain name to provide sponsored link advertising via the registrar Go Daddy is not a bona fide offering of goods and services and the Respondent's only reason in registering the domain name is to benefit from the reputation of the trademark TAMIFLU and illegitimately trade on its fame for commercial gain and profit.
The domain name was registered in bad faith. At the time of registration, the Respondent must have had knowledge of the Complainant's well known product and trademark TAMIFLU considering the mark is an invented term. The domain name is being used in bad faith. The use of the domain name is likely to result in consumer confusion as to the supposed affiliation between the Complainant's trademark and the Respondent, its website and the relative sponsored advertising links thereon. It may also generate unjustified revenues and therefore is illegitimately capitalising on the fame of the Complainant's trademark.
The Respondent did not reply to the Complainant's contentions.
To succeed, the Complainant must demonstrate that all of the elements enumerated in Paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(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 clearly has extensive registered trademark rights in the distinctive term “tamiflu”. The disputed domain name incorporates this term in its entirety and merely adds the additional word “shop” together with a hyphen. As is customary in cases under the Policy the top level domain “.org” should be disregarded for the purposes of comparison. The Complainant's mark is extremely well-known and has lately attained particular notoriety. It is well recognized in previous cases under the Policy that where such a mark is incorporated in its entirety within a domain name, the addition of one or more generic words will not distinguish that domain name from the mark (Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Kil Inja, WIPO Case No. D2000-1409). The dominant part of the disputed domain name is the Complainant's trademark and not the word “shop”. In these circumstances, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights and that accordingly the first element under the Policy has been established.
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in a disputed 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 Respondent has chosen not to explain its conduct or to set out evidence of any rights or legitimate interests. The Complainant has asserted that the Respondent is not commonly known by the name “tamiflu”, and has not been given any licence or other authorization to use the Complainant's trademark in the disputed domain name.
The Complainant has also provided evidence that the website associated with the disputed domain name has been used to publish sponsored links for third party websites, where the links promote various goods or services. It is well established that this type of use of a domain name, which in effect trades off the Complainant's reputation and trademark, offering competing goods and services, is not bona fide and it is clear that the Respondent's use of the disputed domain name in this manner does not confer any rights or legitimate interests upon it.
In the Panel's view it is also reasonable to infer from the evidence that the disputed domain name was selected by the Respondent to trade off the reputation and notoriety of the Complainant's trademark, with the purpose of attracting Internet users to the Respondent's website. This is so in the Panel's view notwithstanding the fact that in the present case the sponsored links appear to be provided by the Respondent's domain name registrar rather than directly by the Respondent itself (F. Hoffmann-La Roche AG v. Malcave e-dominios S.A., WIPO Case No. D2006-0451).
The Panel cannot conceive of any possible legitimate interest or right that the Respondent might have in the disputed domain name. The Respondent has defaulted in filing a response in the present proceedings and accordingly has failed to provide evidence of any circumstance which would convince the Panel to the contrary.
Accordingly the second element under the Policy has been met.
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.” (Policy, paragraph 4(b)).
In the present case the Complainant asserts that at the time of the registration the Respondent must have known of the Complainant's trademark and thus had an intention to target the Complainant's rights by incorporating the term “tamiflu” in the disputed domain name. Apart from the addition of the descriptive term “shop” the domain name is identical to the Complainant's trademark. The Panel agrees with the Complainant that it is inconceivable that the Respondent would select such a domain name without an awareness of the Complainant's rights and thus that the disputed domain name was registered in bad faith.
While the disputed domain name might be described as “parked” at present, the use to which it has been put is clearly capable of disrupting the Complainant's business and likewise is liable to give rise to consumer confusion in light of the registrar-provided links to third party goods and services, many of which are in competition with those of the Complainant. Whether or not the Respondent itself is the recipient of revenues from the website associated with the disputed domain name, the Panel notes that there is a reasonable likelihood that unjustified revenues will be generated thereby. Furthermore, the Respondent in choosing not to file a Response in these proceedings has provided no evidence of any good faith intent or suitable explanation for its conduct in parking the disputed domain name as it has. In these circumstances the Panel is also satisfied that the disputed domain name has been used in bad faith.
Accordingly, the Panel finds that the third element of the Policy has been established 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-shop.org> be transferred to the Complainant.
Andrew D. S. Lothian
Dated: October 5, 2009