World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

F. Hoffmann-La Roche AG v. PrivacyProtect.org and N/A Gwseyoo orekyoey (<…>@5w44tw54ytt.cw)

Case No. D2011-0690

1. The Parties

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

Respondents are PrivacyProtect.org, Domain Admin of Queensland, Australia, and N/A Gwseyoo orekyoey (<…>@5w44tw54ytt.cw), Japan.

2. The Domain Name and Registrar

The disputed domain name <buytamiflucheap.net> (the “Domain Name”) is registered with Domain Context, Inc., United States of America (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 20, 2011. On April 20, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 21, 2011, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. Following this reply from the Registrar, the Center found that the name of the registrant for the Domain Name was changed to Anatoly Abramov (<…@gmail.com>) of Minsk, Belarus. On May 2, 2011, the Center contacted the Registrar in relation to this change of contact details. Following this message from the Center, on May 3, 2011 the Registrar stated that the change was made because the previous contact information was invalid, and the new contact information was provided by the registrant of the Domain Name. The Registrar also confirmed that it had reinstated the contact details for the registrant of the Domain Name to those specified in Registrar’s communication of April 21, 2011. The Center then sent an email communication to Complainant on May 3, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on May 4, 2011.

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 Respondents of the Complaint, and the proceedings commenced on May 4, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 24, 2011. Respondents did not submit any formal Response. However, on May 5, 2011, an email message was received by the Center from the email address <…@gmail.com> (the one mentioned in the first paragraph of this section), by which the sender of the message stated that the Domain Name had been disabled. On May 6, 2011, the same person informed the Center that the Domain Name was put on Registrar lock, so he was not in a position to do anything with it.

The Center appointed Assen Alexiev as the sole panelist in this matter on June 17, 2011. 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

Complainant and its affiliated companies is one of the world’s leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics, and has global operations in more than 100 countries.

Complainant’s trademark TAMIFLU has the following registrations worldwide:

- International trademark with registration No.IR 713623 TAMIFLU, with priority date May 4, 1999, registered for goods in International Class 05; and

- International trademark with registration No.IR 727329 TAMIFLU and device, with priority date September 23, 1999, registered for goods in International Class 05.

The Domain Name was registered on March 10, 2011.

5. Parties’ Contentions

A. Complainant

According to Complainant, the Domain Name is confusingly similar to Complainant’s mark as it incorporates this mark in its entirety. The generic terms “buy” and “cheap” do not sufficiently distinguish the Domain Name from the trademark. Complainant’s use and registration of the trademark TAMIFLU predate Respondents’ registration of the Domain Name. In recent years, Complainant’s mark TAMIFLU has been referred to in many mass media in view that various Governments have decided to stockpile the product TAMIFLU against swine flu. Thus the trademark has become notorious, and this notoriety will increase the likelihood of confusion.

Complainant alleges that Respondents have no rights or legitimate interests in respect of the Domain Name. Complainant has exclusive rights for TAMIFLU, and no permission or consent was granted to use TAMIFLU in the Domain Name. The Domain Name directs to a webpage offering/selling among others also Complainant’s products. Respondents’ use is manifestly commercial. Respondents’ only reason in registering and using the Domain Name is to benefit from the reputation of the TAMIFLU trademark and illegitimately trade on its fame and capitalize on it for commercial gain and profit.

In Complainant’s submission, the Domain Name was registered and is being used in bad faith. The Domain Name was registered in bad faith since at the time of the registration Respondents had knowledge of Complainant’s well-known product and trademark TAMIFLU. Due to the widespread fame of the TAMIFLU trademark it is not probable that Respondents have registered the Domain Name without knowledge of it.

Complainant further submits that the Domain Name is being used in bad faith. As evident from the website associated to the Domain Name, Respondents are intentionally attempting to attract for commercial purpose Internet users to their website, by creating a likelihood of confusion with Complainant’s well-known trademark as to the source, affiliation and endorsement of Respondents’ website or of the products or services posted on or linked to Respondents’ website.

By using the Domain Name, Respondents are intentionally misleading the consumers and confusing them so as to attract them to other websites making them believe that the websites behind those links are associated or recommended by Complainant.

Complainant requests the transfer of the Domain Name.

B. Respondents

Respondents did not reply to Complainant’s contentions.

6. Discussion and Findings

Pursuant to Policy, paragraph 4(a), Complainant must prove each of the following to justify the transfer of the Domain Name:

(i) That the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) That Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) That Respondent has registered and is using the Domain Name in bad faith.

By Rules, paragraph 5(b)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…”

In this case, the Center has employed the required measures under Rules, paragraph 2(a), to achieve actual notice of the Complaint to the Respondents, and they were given a fair opportunity to present their case.

In the event of a default, under Rules, paragraph (14)(b): “[…]the Panel shall draw such inferences therefrom as it considers appropriate.” As stated by the panel in Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004: “ Here, the potential evidence of good faith registration and use was in respondent’s control. Respondent’s failure to present any such evidence or to deny complainant’s allegations allows an inference that the evidence would not have been favorable to respondent.” As stated by the panel in Viacom International Inc. v. Ir Suryani, WIPO Case No. D2001-1443: “Since the Respondent has not submitted any evidence and has not contested the contentions made by the Complainant, this Panel is left to render its decision on the basis of the uncontroverted contentions made, and the evidence supplied, by the Complainant. …In the absence of any evidence to the contrary submitted by the Respondent, this Panel accepts in large measure (but not wholly) the submitted evidence and the contended for factual and legal conclusions as proven by such evidence.”

In this administrative proceeding, Respondents have chosen not to submit a Response. Their default entitles the Panel to conclude that Respondents have no arguments or evidence to rebut the assertions of Complainant. The Panel has to take his decision on the basis of the statements and documents before it and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

A. Identical or Confusingly Similar

Complainant has provided sufficient information to establish its rights in the TAMIFLU trademarks, registered for the territories of various jurisdictions around the world.

It is a common practice under the Policy to disregard gTLDs such as the “.net” section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). Therefore, the relevant part of the Domain Name is its “buytamiflucheap” section. This part of the Domain Name appears as being composed of the words “buy” and “cheap” and the element “tamiflu” between them. The combination is dominated by the “tamiflu” element, as both “buy” and “cheap” are generic words with no distinctiveness and small weight in the overall appearance of the Domain Name, and may well be regarded as merely descriptive in respect of the “tamiflu” element. As to the “tamiflu” element, it is identical to the TAMIFLU trademarks of Complainant, which are distinctive and bear no ordinary meaning.

For these reasons, the Panel finds that the Domain Name is confusingly similar to trademarks in which Complainant has rights.

B. Rights or Legitimate Interests

Complainant claims that Respondents have no rights or legitimate interests in the Domain Name, stating a number of arguments in this regard. Thus, the Complainant has established a prima facie case under Policy, paragraph 4(a)(ii).

It is well established that once a complainant makes out a prima facie case that the respondent has no rights or legitimate interests in a domain name, the burden shifts to the respondent to rebut the showing by providing evidence to the contrary.

Respondents have chosen not to present to the Panel any allegations or documents in their defense despite the burden under the Rules, paragraph 5(b)(i) and 5(b)(ix) or the consequences that a panel may extract from the fact of a default (Rules, paragraph 14). If Respondents had any justification for registering or using the Domain Name, they could have provided it. In particular, Respondents have not contended that any of the circumstances described in Policy, paragraph 4(c) — or any other circumstance — is present in their favor.

The only information available about Respondents is the WhoIs information, provided by the Registrar, and the content of the website, associated to the Domain Name. The WhoIs information contains no evidence of rights or legitimate interests of Respondents in the Domain Name. On the contrary, this information was confirmed to be incorrect by the Registrar. In the Panel’s view, the provision of incorrect contact details for the purposes of the registration of the Domain Name without Respondents providing any plausible explanation for doing this, is in itself a circumstance that puts into question their rights and legitimate interests in the Domain Name.

As submitted by Complainant and not denied by Respondents, the Domain Name is linked to an online pharmacy website offering the product of Complainant alongside products of its competitors, and this has been done without the consent of the latter. In the Panel’s view, such activity cannot be regarded as bona fide and establishing rights or legitimate interests in the Domain Name. At the same time, Respondents make no claims for having rights or legitimate interests in respect of the Domain Name and provide no explanation whatsoever for its registration and use.

The above circumstances appear to confirm Complainant’s prima facie case. In the lack of any evidence or allegations to the contrary, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name within the meaning of the Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

For the purposes of Policy, paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the holder has registered or has 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 the holder’s documented out-of-pocket costs directly related to the domain name; or

(ii) the holder 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 holder has engaged in a pattern of such conduct; or

(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on the holder’s website or location.

Complainant’s TAMIFLU trademarks have become popular in the recent years following the global Swine influenza virus (SIV) or S-OIV (swine-origin influenza virus) crisis, and the Domain Name is confusingly similar to them. According to the uncontroverted contention of Complainant, the Domain Name has been used to attract Internet users to an online pharmacy website offering the product of Complainant alongside products of its competitors without the consent of Complainant. Such conduct clearly shows that Respondents are well aware of Complainant and of its product and trademark, and the registration and use of the Domain Name appear as an attempt at an illegitimate exploitation with a commercial purpose of Complainant’s reputation and trademarks.

Taking all the above into account and in the lack of any contrary allegation by Respondents, the Panel is prepared to accept that the Domain Name has been registered and used by Respondents in an attempt for commercial gain to attract Internet users to the Domain Name by creating a false association with Complainant and its trademarks. Under the Policy, such actions amount to bad faith registration and use of the Domain Name.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <buytamiflucheap.net> be transferred to Complainant.

Assen Alexiev
Sole Panelist
Dated: July 1, 2011

 

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