WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. PrivacyProtect.org / TBA Corp.
Case No. D2010-1378
1. The Parties
The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, internally represented.
The Respondent is PrivacyProtect.org of Moergestel, the Netherlands / TBA Corp. of Geneva, Switzerland.
2. The Domain Name and Registrar
The disputed domain name <buy-tamifluonline.com> (“the Disputed Domain Name”) is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 16, 2010. On August 16, 2010, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the Disputed Domain Name. On August 17, 2010, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com transmitted by email to the Center its verification response, disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 18, 2010, providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on August 18, 2010.
The Center verified that the Complaint together with the amendment to 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 19, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 8, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 13, 2010.
The Center appointed Jacques de Werra as the sole panelist in this matter on September 24, 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 and its affiliated companies are a global healthcare group involved in the field of pharmaceuticals and diagnostics in many countries around the world. The Complainant is the owner of the trademark TAMIFLU (“the Trademark”), which is protected in many countries, including on the basis of the Madrid System under international registration no. 713623 and 727329. The priority date for the Trademark is May 4, 1999. TAMIFLU designates an antiviral pharmaceutical preparation, namely a product against flu.
The Respondent registered the Disputed Domain Name on May 25, 2009. The Disputed Domain Name is used in connection with an online pharmacy on which many pharmaceutical products, including Tamiflu products, are offered for sale.
5. Parties’ Contentions
The Complainant claims as follows:
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 “buy” and “online” does not sufficiently distinguish the Disputed Domain Name from the Complainant’s Trademark. The Trademark has been widely referred to in the media recently so that this increases the likelihood of confusion.
The Complainant’s use and registration of the Trademark predate the Respondent’s registration of the Disputed Domain Name.
The Respondent’s reason in registering and using the Disputed Domain Name is to benefit from the reputation of the Trademark and to illegitimately trade on its fame for commercial gain and profit.
There is no reason why the Respondent should have any right or interest in the Disputed Domain Name.
The Disputed Domain Name was registered 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 Respondent has intentionally attempted to attract, for commercial gain, Internet users to 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 Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide a complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
i) that the Disputed Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,
ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
iii) that the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant has established that it is the owner of the Trademark.
Complainant contends that the Disputed Domain Name incorporates the Trademark and that the addition of the descriptive terms “buy” and “online” does not prevent the likelihood of confusion.
The Panel finds in this respect that the use of the Trademark in conjunction with the descriptive words “buy” and “online” does not affect the overall impression created by the Dispute Domain Name. The inclusion of these words consequently does not defeat the confusing similarity created by the use of the Trademark in its entirety. See F. Hoffmann-La Roche AG v. Red Claw Ventures Ltd., Red Claw, WIPO Case No. D2009-1116 (relating to the domain name <buytamifluonline.biz>) and Hoffmann-La Roche Inc. v. Private Person, Yaroslav P Savchenko, WIPO Case No. D2010-0394 (relating to the domain name <buy-cheap-accutane-online.com>).
For these reasons, the Panel finds that the Disputed Domain Name is confusingly similar to the Trademark and that Complainant has rights in the Trademark so that the requirements of paragraph 4(a)(i) of the Policy are met.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists the ways that a respondent may demonstrate rights or a legitimate interest in a domain name:
(i) before any notice of the dispute, respondent's use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) respondent (as an individual, business or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) respondent is 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 Policy places the burden on a complainant to establish the absence of a respondent's rights or legitimate interest in the disputed domain name. Because of the inherent difficulties in proving a negative fact, the consensus view is that the complainant need only put forward a prima facie case that the respondent lacks rights or legitimate interests. The evidential burden then shifts to the respondent to rebut that prima facie case. See World Wrestling Federation Entertainment, Inc v. Ringside Collectibles, WIPO Case No. D2000-1306; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.1.
In the present case the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and the Respondent has failed to assert any such rights. See Barbara Brennan Inc. v. Texas International Property Associates, WIPO Case No. D2008-0351; Sanford Winery Company v. Matt Geiser, WIPO Case No. D2008-0210.
By not submitting a Response, the Respondent has failed to invoke any circumstances which could demonstrate any right or legitimate interest in the Disputed Domain Name. The only evidence in this connection is that provided in the Complaint, and that which is self-evident from the website to which the Disputed Domain Name refers.
It is apparent from the evidence that the Disputed Domain Name is used by the Respondent to run an online pharmacy selling various pharmaceutical products including Tamiflu.
It has also been established that the Complainant has exclusive rights to the Trademark and has not licensed or otherwise permitted the Respondent to use its Trademark.
There is no indication that the Respondent has registered or used the name “tamiflu” as a trademark, or has ever been commonly known by this name.
Moreover, by not filing a Response, the Respondent has failed to invoke any circumstance which could indicate the existence of any right or legitimate interest it would have in the Disputed Domain Name; or otherwise rebut the Complainant's prima facie case that no such rights or legitimate interests exist.
The Panel is of the view, also taking into account the use of the Disputed Domain Name, that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
For all these reasons, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name so that the conditions of paragraph 4(a)(ii) of the Policy are met.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of a domain name in “bad faith”:
(i) circumstances indicating that respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) that 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 respondent has engaged in a pattern of such conduct; or
(iii) that respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent's website or other on-line location, by creating a likelihood of confusion with complainant's mark as to the source, sponsorship, affiliation, or endorsement of respondent's website or location or of a product or service on respondent's website or location.
The Panel first notes that the Trademark has gained global recognition and fame in the field of pharmaceutical products particularly as a result of the recent swineflu outbreak. See F. Hoffmann-La Roche AG v. Red Claw Ventures Ltd., Red Claw, WIPO Case No. D2009-1116.
Therefore, in view of the fame of the Complainant's Trademark, there is little doubt that the Respondent was aware of the Trademark prior to registering the Disputed Domain Name. This finding of the Panel is also evidenced by the fact that the Disputed Domain Name is used to direct Internet traffic to an online pharmacy selling various pharmaceutical products including Tamiflu.
In this respect, it is clear to this Panel that the Respondent has, by using the Complainant's Trademark in the Disputed Domain Name, attempted to divert Internet users to an online pharmacy, and has intentionally created a likelihood of confusion with the Complainant's Trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent's online pharmacy website, whereby the deliberate diversion of Internet users constitutes bad faith use, by creating confusion that takes advantage of the Complainant's and of the Trademark’s goodwill.
For these reasons, the Panel first concludes that the Respondent must have been aware of the Complainant's Trademark at the time it registered the Disputed Domain Name. Because the Respondent has attempted to attract Internet users to an online pharmacy, the Panel further finds that the Respondent has also used the Disputed Domain Name in bad faith. As a result, the Complainant has satisfied its burden of proving that the Respondent registered and used the Disputed Domain Name in bad faith according to paragraph 4(a)(iii) 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 domain name <buy-tamifluonline.com> be transferred to the Complainant.
Jacques de Werra
Dated: September 29, 2010