The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland.
The Respondent is Laimonis Katkevics of Riga, Latvia.
The disputed domain name <ordertamiflu.info> is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 9, 2009. On September 9, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On September 10, 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 disputed domain name. The Center has verified that the Complaint satisfies 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 September 14, 2009. In accordance with the Rules, paragraph 5(a), the due date for the Response was October 4, 2009. The Response was filed with the Center on October 1, 2009.
The Center appointed Sebastian Hughes as the sole panelist in this matter on October 7, 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 company and the owner of international registrations for the TAMIFLU word and TAMIFLU stylised word and device marks, which predate the date of registration of the disputed domain name (the “Trade Marks”).
The Respondent is an individual with an address in Latvia.
The disputed domain name was registered on July 24, 2009.
The following facts are alleged by the Complainant in the Complaint.
The Complainant together with its affiliates is one of the leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics, with global operations in more than 100 countries.
The Trade Marks designate an antiviral pharmaceutical preparation, namely a product against flu.
In the past few years and in particular in the past few months the Trade Marks have been referred to in many mass media in view of the current so-called “swine flu”.
The disputed domain name incorporates the Trade Marks in their entirety. The addition of the generic term “order” does not sufficiently distinguish the disputed domain name from the Trade Marks. The notoriety of the Trade Marks increases the likelihood of confusion.
The Complainant has not granted any licence, permission or authorisation to the Respondent to use the Trade Marks in the disputed domain name.
The Respondent is using the disputed domain name for commercial gain and with the purpose of capitalising on the fame of the Trade Marks.
The Respondent is using the disputed domain name to redirect Internet users to the website “http://buywartrol.info”, which is a site selling competitive products.
The Respondent's only reason in registering and using the disputed domain name is to benefit from the reputation of the Trade Marks and illegitimately trade on their fame for commercial gain and profit.
The disputed domain name was registered in bad faith since at the time of registration the Respondent had knowledge of the Complainant's well-known Trade Marks.
The disputed domain name is being used in bad faith. This is obvious since the Respondent is attempting (for commercial purpose) to attract Internet users to the Respondent's website, by creating a likelihood of confusion with the Trade Marks 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.
As a result, the Respondent is generating unjustified revenues and is therefore illegitimately capitalising on the fame of the Trade Marks.
The following facts are alleged by the Respondent in the Response.
The Respondent has filed submissions as follows:
“I bought this domain ordertamiflu.info via www.godaddy.com service! And it was possible for me to by domain ordertamiflu.info because it was available for purchase and I paid money and bought it – so that means F. Hoffmann-La Roche AG company had bought all domains that included word Tamiflu which they need and this one was free and aviable so they did not need it until now and I do not know why now…”
The Respondent has filed submissions as follows:
“domain name contains word Tamiflu because I am working as affiliate marketer and I am promoting and selling Tamiflu as an affiliate! So that is the reason why I need domain ordertamiflu.info! And that means that I am not using brand Tamiflu and domain ordertamiflu.info and registered it in bad faith ! Only in good faith to promote and sell Tamiflu!”
The Respondent has filed submissions as follows:
“I really do not know why Complainant – […] had attached screenshots of website which sells Wartrol from address www.buywartrol.info .…!? Because when you visit http://www.ordertamiflu.info - you will be redirected through my affiliate link to page which is selling Tamiflu… so Pharmacyescrow is affiliate with F. Hoffmann-La Roche AG too! So it look like everyone is selling and promoting Tamiflu in good faith! So where is the problem…?”
The Panel finds that the Complainant has rights in the Trade Marks acquired through use and registration.
The disputed domain name comprises the word mark “TAMIFLU” in its entirety. UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).
It is established that, where a mark is the distinctive part of the disputed domain name, the domain name is considered to be confusingly similar to the registered mark (DHL Operations B.V. v. DHL Packers, WIPO Case No. D2008-1694).
It is also established that the addition of generic terms to the disputed domain name has little, if any, effect on a determination of legal identity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does not exclude the likelihood of confusion (PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189).
The addition of the generic word “order” does not serve to distinguish the disputed domain name in any way. In the present circumstances, this additional word used in the disputed domain name may be disregarded in determining the question of confusing similarity.
The Panel finds that the disputed domain name is confusingly similar to the Complainant's Trade Marks.
The Panel therefore holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:
(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 noncommercial 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 Complainant contends that it has not authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Marks. The Complainant has prior rights in the Trade Marks which precede the Respondent's registration of the disputed domain name by approximately 10 years. The Complainant has therefore established a prima facie case that the Respondent has no rights and legitimate interests in the disputed domain name and thereby shifted the burden to the Respondent to produce evidence to rebut this presumption (Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name is used in connection with a bona fide offering of goods or services.
The disputed domain name is currently redirected to a website which is offering for sale the Complainant's Tamiflu product under the Trade Marks (the “Website”) together with other products, produced by competitors of the Complainant.
The Respondent claims to be working as an “affiliate marketer”, promoting and selling Tamiflu as an affiliate. However, even if the Respondent were an authorised marketer or seller of the products of the Complainant under the Trade Mark, in this Panel's view, this does not confer on the Respondent any rights in respect of the Trade Marks. In particular, it does not of itself confer on the Respondent the right to register any domain names comprising the Trade Marks (The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc., WIPO Case No. D2000-0113).
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name.
There has been no evidence adduced to show that the Respondent is making a legitimate non-commercial or fair use of the disputed domain name.
The Panel finds that the Respondent has failed to produce any evidence to establish its rights or legitimate interests in the disputed domain name. The Panel therefore finds that the Complaint fulfills the second condition of paragraph 4(a) of the Policy.
Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:
“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.”
The Trade Marks are well-known trade marks globally. The Respondent is using the disputed domain name as a forwarding address to an online pharmacy and the Website offers for sale not just the Complainant's Tamiflu product, but numerous other pharmaceutical products manufactured by competitors of the Complainant (Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784).
In all the circumstances, the Panel finds that the public is likely to be confused into thinking that the disputed domain name has a connection with the Complainant, contrary to the fact. There is a strong likelihood of confusion as to source, sponsorship, affiliation or endorsement of the Website.
The Panel therefore concludes that the Respondent's registration and use of the disputed domain name falls under paragraph 4(b)(iv).
For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.
For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the disputed domain name, <ordertamiflu.info>, be transferred to the Complainant.
Dated: October 20, 2009