World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

F. Hoffmann-La Roche AG v. Johan Lievense

Case No. D2010-1334

1. The Parties

The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland.

The Respondent is Johan Lievense of Brabant, the Netherlands.

2. The Domain Name and Registrar

The disputed domain name <swine-flu-tamiflu.info> is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 6, 2010. On August 6, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On August 7, 2010, the Registrar 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 August 10, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 30, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 31, 2010.

The Center appointed Alvaro Loureiro Oliveira as the sole panelist in this matter on September 17, 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.

4. Factual Background

The Complainant F. Hoffmann-La Roche AG is a company based in Switzerland.

The Complainant, together with its affiliated companies, is one of the leading researchers and developers of pharmaceutical and diagnostic products in more than 100 countries throughout the world. The Complainant is the owner of the trademark TAMIFLU which is protected in a large number of countries in which the Complainant has operations. The priority date for the trademark is May 4, 1999.

The mark TAMIFLU has acquired fame and celebrity, symbolizing the goodwill that the Complainant has created in its mark. It identifies an antiviral pharmaceutical preparation, namely a product against flu. This mark has become even more famous in the last couple of years, as it was indicated as a safe medicine to treat patients of the A-type flu, popularly known as “swine flu.

The Respondent registered the disputed domain name on July 17, 2010.

5. Parties’ Contentions

A. Complainant

The Complainant claims that the disputed domain name is confusingly similar to the Complainant’s trademark given that it incorporates it in its entirety.

The addition of the terms “swine-flu” does not sufficiently distinguish the disputed domain name from the Complainant’s trademark. Given that the product marked TAMIFLU has been widely referred to in the media in recent years this increases the likelihood of confusion.

The Complainant’s registration and use of the mark TAMIFLU predates the registration of the disputed domain name.

The Complainant further claims the Respondent has no rights or legitimate interests in the disputed domain name, as the Complainant has exclusive rights to the mark TAMIFLU, and that the Respondent has not been given any authorization to use the same.

The Complainant likewise asserts that the Respondent registered the disputed domain name in bad faith since at the time of its registration the Respondent had without doubt knowledge of the trademark and the Tamiflu products. It was further used in bad faith because the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website or other on-line location, by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service on the Respondent's website or location.

The Complainant points that the disputed domain name leads to a website which is a search engine, sponsored by several different links selling all kinds of goods. A notice in the upper right corner of the page induces the idea that the domain name is for sale, as they offer to help in the negotiation.

In sum, the Complainant alleges that the use of the disputed domain name is intentional to mislead consumers and to confuse them.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The disputed domain name <swine-flu-tamiflu.info> is, indeed, confusingly similar to the TAMIFLU trademark.

The Complainant has presented consistent evidence of ownership of the mark TAMIFLU in the world, by presenting two international registrations for this sign.

The use of the mark added to the expression “swine-flu” does not differentiate the disputed domain name from the mark – on the contrary, they form a phrase that can in fact mislead the public, as it may give the idea that the web site provides information on the swine flu and on the product that was confirmed to be a sure treatment to such disease – the preparation manufactured by the Complainant under the mark TAMIFLU.

Given the above, the Panel concludes that the disputed domain name is confusingly similar with the registered mark of the Complainant.

B. Rights or Legitimate Interests

Given, inter alia, the clear evidence that the mark TAMIFLU is registered in the Complainant’s name and is widely known as identifying one of the Complainant’s products, the Panel finds that the Complainant has established prima facie that the Respondent has no rights or legitimate interests in the disputed domain name. Hence, the Respondent cannot claim to have been using the trademark not knowing the Complainant’s rights to it. Moreover, the Respondent has not rebutted the Complainant’s prima facie case.

Furthermore, the use of the disputed domain name to intentionally mislead the consumers to the Respondent’s website where one can find several links to the commercialization of different products is a clear attempt to benefit from the renown of the mark TAMIFLU.

The Panel, thus, finds for the Complainant under the second element of the Policy.

C. Registered and Used in Bad Faith

The facts outlined in items A and B above can also evidence the Respondent’s bad faith in obtaining the disputed domain name.

As shown in Annex 1 of the Complaint, the disputed domain name was registered on July 17, 2010, while in the past two years the mark TAMIFLU has been mentioned by the international media as the product chosen by several governments as one to be used against swine flu. This fact leads to the conclusion that the expression chosen to complete the disputed domain name – swine flu – was not a coincidence.

The disputed domain name was constructed to clearly mislead the consumers. The Respondent intended to give an overall impression that the disputed domain name leads to an official web site, or to a website endorsed by the owners of the TAMIFLU trademark, which is not true. This attempt to mislead consumers is also evidence of bad faith from the Respondent.

All the points above lead to the conclusion by this Panel that the Respondent was fully aware of the Complainant and that the Respondent registered and is using the disputed domain name in bad faith.

The Panel finds that the Complainant has also proved the third element of the Policy.

7. Decision

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 <swine-flu-tamiflu.info> be transferred to the Complainant.

Alvaro Loureiro Oliveira
Sole Panelist
Dated: October 5, 2010

 

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