Complainant is Hoffmann-La Roche Inc. of Nutley, New Jersey, United States of America, represented by Lathrop & Gage LLP, United States of America.
Respondent is Anthony Hardy of Largo, Maryland, United States of America.
The disputed domain name <tami-flu.net> (the “domain name”) is registered with Tucows Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 16, 2009. On September 17, 2009, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the domain name. On September 17, 2009, Tucows 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 Respondent of the Complaint, and the proceedings commenced on September 22, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was October 12, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on October 14, 2009.
The Center appointed Jeffrey H. Kaufman as the sole panelist in this matter on October 27, 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.
Complainant is the owner of United States (“U.S.”) federal trademark registration No. 2,439,305 for the mark TAMIFLU, filed on April 26, 1999, registered on March 27, 2001, and No. 2,576,662 for the mark TAMIFLU and Design, filed on May 24, 2000, registered on June 4, 2002. The Tamiflu antiviral pharmaceutical preparation is a product indicated for the treatment and prevention of influenza.
The WhoIs record shows that the domain name was registered on April 27, 2009.
Complainant asserts that it has trademark rights to the mark TAMIFLU since 1999, before the domain name was registered by Respondent, and that the domain name is confusingly similar to its mark. Complainant also asserts that Respondent has no rights or legitimate interests in the domain name, and that Respondent registered and is using the domain name in bad faith.
Respondent did not reply to Complainant's contentions.
The Policy requires Complainant to prove each of the following three elements in order to prevail in this proceeding:
1) the domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
2) the respondent has no rights or legitimate interests in respect of the domain name; and
3) the domain name has been registered and is being used in bad faith.
Policy, paragraph 4(a).
Respondent was given notice of this proceeding in accordance with the Rules. The Center discharged its responsibility under Rules paragraph 2(a) to undertake reasonable efforts to provide actual notice of the Complaint to Respondent. The Panel finds that Respondent has been given a fair opportunity to present its case, and, as no Response was filed, the Panel will proceed to a decision on the Complaint. Rules, paragraph 14(a).
The Panel may decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable, Rules paragraph 15(a). As Respondent has defaulted, the Panel shall draw such inferences therefrom as it considers appropriate, Rules paragraph 14(b). Respondent's default does not automatically result in a decision in favor of Complainant; Complainant must still prove each of the three elements required by Policy paragraph 4(a).
Complainant has established that it has trademark rights to the mark TAMIFLU, and that these trademark rights date back to 1999, the date of filing of the federal application for the mark TAMIFLU, now registered as No. 2,439,305. Complainant also provided evidence of use and significant promotion of its mark.
The domain name <tami-flu.net> incorporates Complainant's mark in its entirety. The addition of a hyphen and the gTLD “.net” do nothing to dispel any confusing similarity between the domain name and Complainant's mark. Thus, the Panel finds that Complainant has satisfied this first element.
A respondent may demonstrate rights or legitimate interests to the domain name by any of the following, without limitation:
i) Before any notice to the respondent of the dispute, the respondent's 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) The respondent, as an individual, business, or other organization has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
iii) The respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Policy, paragraph 4(c).
In view of Complainant's rights to its marks dating back to well before Respondent's registration of the domain name, and Complainant's representation that it has not authorized Respondent to register the domain name, the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the domain name.
Furthermore, Complainant provided a copy of the website at “www.tami-flu.net” showing use of the registered mark TAMIFLU & Design which contained not only information on the Tamiflu drug, but also links to online sources including, according to Complainant, a source offering a non-FDA approved form that is not legal in the U.S.
As Respondent did not file a Response to this Complaint, the Panel finds that Complainant has met this element of the Policy.
In order to prevail, Complainant must prove both registration and use in bad faith. See World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001; Robert Ellenbogen v. Mike Pearson, WIPO Case No. D2000-0001.
However, the Policy states that the following circumstances shall be evidence of the registration and use of a domain name in bad faith:
i) Circumstances indicating that the respondent has registered or 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 documented out-of-pocket costs directly related to the domain name; or
ii) The respondent has 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 the respondent has engaged in a pattern of such conduct; or
iii) The respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its web site or location or of a product or service on its web site or location.
Policy, paragraph 4(b). These circumstances are non-exclusive, and the Panel may consider other circumstances as constituting registration and use of a domain name in bad faith. (Id.)
Respondent's unauthorized registration of the domain name <tami-flu.net> in 2009, approximately eight years after Complainant's TAMIFLU registration issued, and ten years after Complainant began use of the mark, together with Respondent's use of the domain name for a website making unauthorized use of the TAMIFLU logo and promoting sales of products in competition to Complainant, including unapproved drugs, are evidence of Respondent's registration and use of the domain name in bad faith. Policy paragraph 4(b)(iv).
The Panel finds that Complainant has established Respondent's bad faith use and registration of the domain name.
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 <tami-flu.net> be transferred to Complainant.
Jeffrey H. Kaufman
Dated: November 3, 2009