Complainant is Hoffmann-LaRoche Inc. of Nutley, New Jersey, United States of America, represented by Lathrop & Gage LLP, United States of America.
Respondent is Carolyn Mardis of Columbia, Maryland, United States of America.
The disputed domain name <tamifluinfo.net> is registered with FastDomain, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 15, 2009. On December 15, 2009, the Center transmitted by email to FastDomain, Inc. a request for registrar verification in connection with the disputed domain name. On December 17, 2009, FastDomain, Inc. confirmed by email that the Respondent identified in the Complaint is the listed registrant of record of the disputed domain name, confirmed the Respondent's details, confirmed that the domain name registration agreement is in English, and confirmed the creation and expiration dates of the disputed domain name. 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 December 18, 2009. In accordance with the Rules, paragraph 5(a), the due date for Respondent to answer or respond was January 7, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on January 8, 2010.
The Center appointed Barbara A. Solomon as the sole panelist in this matter on January 19, 2010. 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 factual background is taken from the allegations contained in the Complaint and the exhibits annexed thereto.
Complainant is the manufacturer of a pharmaceutical anti-viral preparation sold in the United States under the name TAMIFLU. Complainant owns incontestable United States trademark registrations for the TAMIFLU mark for a pharmaceutical anti-viral preparation. These marks provide Complainant with a priority date of 1999 in connection with the word mark TAMIFLU and 2000 in connection with a stylized design mark featuring the term TAMIFLU. TAMIFLU has been available in the United States for the treatment of influenza since at least November, 1999. With the advent of each influenza season, Complainant's drug has received media attention as a possible treatment. In addition to the unsolicited media, Complainant alleges that it has promoted its TAMIFLU branded product in print advertisements, medical journals, promotional materials, packaging, as well as through the Internet site at “www.tamiflu.com” (although no evidence of such promotion other than through the website is offered).
On or about April 28, 2009, Respondent registered the disputed domain name. On June 1, 2009, Complainant sent a letter via email and certified mail, return receipt requested to the Respondent objecting to the registration and adoption of the disputed domain name and requesting that the disputed domain name be transferred. Complainant does not indicate if any response was received to the demand letter and no response appears in the record.1
While there is no record in the Complaint of what content appeared on the website associated with the disputed domain name as of the registration date, as of November 4, 2009, the disputed domain name has been used to connect to a website consisting of sponsored listings for physicians, pharmacies, and flu shots among other ostensibly health-related links. Other searches available at the disputed domain name concern such unrelated topics as movie theaters, patio heaters, music, art and radio. The parking page for the disputed domain name is provided by the company Sedo which also appears to be brokering a possible sale of the disputed domain name.2 There is no readily apparent information about the TAMIFLU medication available at the website associated with the disputed domain name. Rather the disputed domain name appears to be used exclusively for purposes of generating sponsored links.
Complainant makes the following contentions:
1. Complainant owns the trademark TAMIFLU by virtue of its U.S. registrations for the mark.
2. The disputed domain name is identical or confusingly similar to Complainant's TAMIFLU trademark. Complainant notes that Respondent's addition of the descriptive term “info” to Complainant's mark does not prevent a finding of confusing similarity.
3. Respondent has no rights or legitimate interest in the disputed domain name because TAMIFLU has no valid use other than to refer to Complainant's product; there exists no relationship between Complainant and Respondent that would give rise to any right by Respondent to use or own a domain name that incorporates Complainant's TAMIFLU mark; Respondent is not making legitimate non-commercial or fair use of the domain name but rather is using the domain name to redirect Internet users to websites of Complainant's competitors; and generally Respondent's use of the TAMIFLU mark is an attempt to create and benefit from consumer confusion.
4. Respondent registered and is using the disputed domain name in bad faith. Complainant points to the facts that TAMIFLU is a coined term; that the disputed domain name is being used to capitalize on the reputation of Complainant's mark; that the disputed domain name adopted by Respondent is intended to create and to promote products of Complainant's competitors; and that Respondent has no authorization from Complainant to use Complainant's trademark as or in a domain name.
Respondent did not reply to Complainant's contentions. Accordingly, the Panel may decide the dispute based on the Complaint. All factual allegations are accepted as true, and the Panel may draw appropriate inferences from Respondent's default. Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009.
In order to succeed on its claim, Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests with respect to the disputed domain name; and (iii) the disputed domain name has been registered and used in bad faith. While Complainant provides alternate theories to support its claim, the Policy does not require the Panel to address each alternative argument or theory that Complainant has put forth.
Complainant easily satisfies the first requirement of paragraph 4(a)(1) of the Policy. Complainant owns two pleaded U.S. federally registered trademarks for the mark TAMIFLU. Given Complainant's U.S. trademark registrations, which issued prior to the registration of the disputed domain name, Complainant's rights in TAMIFLU are established and the Panel may not set aside, disallow or ignore Complainant's rights. See WIPO Overview of WIPO Panel Views on Selected UDRP questions (noting consensus view that if a Complainant owns a registered trademark it satisfies the threshold requirement of having trademark rights); Owens Corning Fiberglas Technology, Inc. v. Hammerstone, WIPO Case No. D2003-0903 (according determination of the United States Patent and Trademark Office (USPTO) to register a trademark due deference and rejecting any argument that complainant's mark is generic).
The disputed domain name contains the TAMIFLU mark in its entirety. The addition of the generic word “info” is insufficient to change the fact that the disputed domain name is confusingly similar to Complainant's trademark. Indeed, this term may actually lead to more confusion as consumers may believe that the website is an authorized website of the Complainant providing information about Complainant's TAMIFLU drug. E.g., Banca Intesa S.p.A. v. Moshe Tal, WIPO Case No. D2006-0228 (addition of generic term “online” to complainant's trademark does not create a dissimilar mark); Banco Bradesco S/A v. Gilberto Costa, WIPO Case No. D2009-0148 (noting that the adoption of a trademark in its entirety as a domain name, together with other descriptive material does not suffice to overcome an allegation that the domain name is indistinguishable from the trademark in question).
Although the Respondent has defaulted, the burden of proof remains on the Complainant to establish the absence of rights or legitimate interests in the disputed domain name. Here, Complainant has sufficiently pled a prima facie case of illegitimacy which has not been rebutted. It has pleaded without contradiction that Respondent is not authorized to use the TAMIFLU mark, that Respondent is not commonly known as “tamifluinfo.net”, that Respondent is not making a bona fide offering of goods or services at the website associated with the disputed domain name, that there is no legitimate non-commercial use of the disputed domain name and that the Respondent is using the disputed domain name as a parking page with sponsored links to Complainant's competitors and to online pharmacies. The burden therefore shifts to Respondent to establish its rights or legitimate interests in the disputed domain name. By defaulting, Respondent has failed to meet that burden.
This is not a case where there is any evidence that Respondent is an established domain name resale enterprise that is involved in the registration and sale of generic terms. Here, the Respondent has selected as its domain name Complainant's very trademark and registered the disputed domain name precisely when that trademark was increasingly in the news as a result of a flu outbreak. This timing cannot be mere coincidence.
Further, the fact that the home page associated with the disputed domain name may contain sponsored links for third parties who purport to sell Complainant's TAMIFLU product cannot establish legitimate rights in Respondent. Respondent is not using the disputed domain name to sell Complainant's product; it is using the disputed domain name to sell advertising space for sponsored links and generating income from those links. Regardless of whether the third parties who have placed sponsored ads on Respondent's website are selling genuine products of Complainant – and Complainant has not proven this one way or the other – Respondent's use of Complainant's mark is an attempt to misdirect Internet users familiar with Complainant's mark for commercial gain, including paid-per-click advertising revenues. See Chanel, Inc. v. Domain Privacy Group, Inc. / Charlene Newport, WIPO Case No. D2009-0081 (no legitimate interest where domain name owner is not selling the trademarked items and the Registrant does not have trademark owner's express permission to use the mark).
Paragraph 4(b) of the Policy sets forth various circumstances that can give rise to and otherwise constitute evidence of registration and use of a domain name in bad faith. Although the Policy identifies activities that constitute bad faith use and registration, the list set forth in paragraph 4(b) of the Policy is not exhaustive. United Feature Syndicate, Inc. v. Takeshi Komaba, WIPO Case No. D2002-0901.
As an initial matter, the evidence shows that the disputed domain name was registered only after the Complainant had adopted and used the TAMIFLU mark, after Complainant obtained two U.S. federal trademark registrations for its TAMIFLU mark, and after Complainant had established an Internet presence under the TAMIFLU mark.
Respondent is using the disputed domain name in connection with a website containing sponsored links. It is well established that the use of a parking page with sponsored links is strong evidence of bad faith. While it is not clear if Respondent chose the advertisements appearing on the parking page, that is of no relevance. Certainly, the Respondent knowingly agreed to register the disputed domain name with a company that provides parking pages and that provides sponsored links on those parking pages. Further, it cannot be disputed that the Respondent was aware that the parking company would generate advertisements of some sort at the website associated with the disputed domain name and that Respondent would benefit from this advertising. There is little doubt that Respondent and/or the parking company are commercially benefitting from the use of Complainant's trademark. This satisfies the requirements of paragraph 4(b)(iv) of the Policy. Express Scripts, Inc. v. Windgather Investments Ltd./Mr. Cartwright, WIPO Case No. D2007-0267; Serta Inc. v. Charles Dawson, WIPO Case No. D2008-1474. Further, Respondent's website has the possibility of diverting Internet users to websites that may be selling unregulated, unauthorized and perhaps counterfeit TAMIFLU branded products which not only diverts actual sales away from Complainant but could potentially create a health risk.
Given Respondent's use of the disputed domain name in connection with a website featuring sponsored ads and the failure of Respondent to provide any evidence of any actual or contemplated good faith use of the disputed domain name, the Complainant has met its burden of proving bad faith. Indeed, in light of the overriding objective of the Policy “to curb the abusive registration of domain names in the circumstances where the registrant is seeking to profit from and exploit the trademark of another,” Match.com, LP v. Bill Zag and NWLAWS.org, WIPO Case No. D2004-0230, it is apparent that Respondent had in mind Complainant and its TAMIFLU mark when registering the disputed domain name and that the registration and use of the disputed domain name has led to and without transfer will continue to lead to abuse by Respondent.
Accordingly, the Panel finds that Complainant has satisfied the requirements of paragraph 4(b) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <tamifluinfo.net> be transferred to Complainant.
Barbara A. Solomon
Dated: January 26, 2010
1 Complainant does not indicate whether the letter was returned or if Complainant received a signed copy of the certified receipt that accompanied the demand letter. Complainant makes no argument in its Complaint about whether the failure to respond to the demand letter constitutes bad faith.
2 Complainant does not mention the offer for sale or assert that the offering of the disputed domain name for sale violates the Policy.