The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally.
The Respondent is Anaconda Ltd. of Tel -aviv. Israel.
The disputed domain name <ordertamifluonline.info> (the “Domain Name”) is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 3, 2009. On July 6, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Domain Name. On July 6, 2009, GoDaddy.com, 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 the Respondent of the Complaint, and the proceedings commenced on July 9, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was July 29, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 13, 2009.
The Center appointed David Taylor as the sole panelist in this matter on August 19, 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.
The factual background is taken from the submissions contained in the Complaint and the Exhibits annexed hereto given that there was no Response filed.
The Complainant submits that together with its affiliated companies, it is one of the world's leading research-focused healthcare group in the fields of pharmaceutical and diagnostics, having global operations in more than 100 countries.
The Complainant owns several registered trade marks in the term TAMIFLU, including for instance the following:
- International Registration number 713623, registered on June 3, 1999 and covering class 5;
- International Registration number 727329, registered on February 7, 2000 and covering class 5.
The trade mark TAMIFLU refers to an antiviral pharmaceutical preparation, used for flu treatment or flu prevention.
The Respondent registered the Domain Name <ordertamifluonline.info> on June 21, 2009. The Domain Name points to a webpage titled “TAMIFLU. YOUR OCCASIONAL LIFE SAVER” and containing information about the Tamiflu product. The webpage, to which the Domain Name points, contains several “Order Tamiflu Online” or “Buy Tamiflu Online” links. These links are not active but for one which points to a third party website at “www.rx-tab.com” which allows users to order pharmaceutical products including Tamiflu.
(i) The Complainant contends that the Domain Name is confusingly similar to the Complainant's mark.
The Complainant points out that the Domain Name reproduces the Complainant's entire trade mark in the term TAMIFLU. In the Complainant's view, the addition of the descriptive terms “order” and “online” does not sufficiently distinguish the Domain Name from the trade mark in which the Complainant claims to have rights.
Furthermore, the Complainant states that in the past year, the trade mark TAMIFLU has been referred to in many mass media outlets in the context of the swine flu crisis. As a result, the Complainant asserts that the notoriety of its TAMIFLU trade mark will increase the likelihood of confusion with the Domain Name.
The Complainant underlines that its use and registration of the trade mark TAMIFLU predate the Respondent's registration of the Domain Name.
(ii) The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name.
The Complainant submits that it never granted the Respondent a licence or permission or authorization to use the trade mark TAMIFLU in the Domain Name. In the Complainant's view, the Respondent uses the Domain Name for commercial gain and with the purpose of capitalizing on the fame of the TAMIFLU trade mark. Therefore, the Complainant asserts that the Domain Name clearly alludes to the Complainant.
According to the Complainant, the Respondent registered and uses the Domain Name in order to benefit from the reputation of the trade mark TAMIFLU and illegitimately trade on its fame for commercial gain and profit.
(iii) The Domain Name was registered and is being used in bad faith.
The Complainant asserts that the Domain Name was registered in bad faith. To support this assertion, the Complainant submits that there is no doubt that at the time of registration the Respondent had knowledge of the Complainant's well-known product and trade mark TAMIFLU.
In the Complainant's view, the Respondent is also using the Domain Name in bad faith as through the website the Respondent is intentionally attempting, for commercial purpose, to attract Internet users to its website by creating a likelihood of confusion with the Complainant's well-known mark as to the source, affiliation and endorsement of the Respondent's website or of the products or services posted on or linked to the Respondent's website.
The Complainant claims that the Respondent, by using the Domain Name, is 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 the Complainant. Thus, in the Complainant's view, the Respondent may generate unjustified revenues and is therefore illegitimately capitalizing on the TAMIFLU trade mark fame.
For all the foregoing reasons, the Complainant requests that the Domain Name be transferred to it.
The Respondent did not reply to the Complainant's contentions.
Paragraph 15(a) of the Rules states that a panel shall decide a 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.
In the case of default by a party, paragraph 14 of the Rules states that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, the Rules, the Panel shall draw such inferences therefrom as it deems appropriate. In this case, the Respondent has not submitted any Response and consequently, despite the opportunity given, has not contested any of the contentions by the Complainant. The Panel will therefore have to proceed on the basis of the factual statements contained in the Complaint and the documents available to support the contentions.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) the Domain Name registered to the Respondent is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
Taking each of these issues in turn, the Panel decides as follows:
The first element that needs to be satisfied is whether the Complainant has rights in the term TAMIFLU.
The Complainant submits evidence that it has rights in the term TAMIFLU. The Complainant states that it owns many registered trade marks in the term TAMIFLU worldwide, including International Registrations. Based on the evidence produced by the Complainant, the Panel is satisfied that the Complainant has rights in the term TAMIFLU.
The second element to be satisfied is whether the Domain Name is identical or confusingly similar to the term TAMIFLU in which the Complainant has rights.
The Domain Name reproduces the exact Complainant's trade mark in the term TAMIFLU with the mere addition of the words “order” and “online” and the gTLD “.info”. The Panel is of the view that generally, confusing similarity may not be avoided where a domain name reproduces the entire mark of a third party with the mere addition of descriptive or non-distinctive terms, especially when the trade mark reproduced is particularly distinctive and has received considerable media coverage worldwide. The words “order” and “online” are not capable of reducing the risk of confusing similarity as these words are merely suggesting that the Respondent's website is a location where a consumer could buy TAMIFLU product (see Lilly ICOS LLC v. John Hopking/Neo net Ltd, WIPO Case No. D2005-0694).
With regard to the addition of the gTLD “.info”, it is widely accepted that it is irrelevant in considering the issue of confusing similarity between a trade mark and a domain name.
The Panel therefore finds that the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.
The Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Domain name, in accordance with paragraph 4(a)(ii) of the Policy.
Paragraph 4(c) of the Policy sets out various ways in which the Respondent may demonstrate rights or legitimate interests in the Domain Name, as follows:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or
(iii) you are 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 Panel considers that the Complainant has presented a prima facie showing of the Respondent's lack of rights or legitimate interest in the Domain Name.
In the Panel's view, the failure of the Respondent to file a response can suggest that the Respondent lacks rights or legitimate interests in the Domain Name.
Indeed, no evidence was submitted by the Respondent to suggest that the Complainant had authorised the Respondent to make any use of the term TAMIFLU.
Similarly no evidence was submitted to suggest that the Respondent has ever been commonly known by the Domain Name or that the Respondent had made, prior to the registration of the Domain Name, any use or preparation to use the Domain Name in connection with a bona fide offering of goods or services.
The Panel is of the view that the Respondent is not making a legitimate noncommercial or fair use of the Domain Name since the website to which the Domain Name points contains a link to a commercial website where users can purchase pharmaceutical products online.
The Panel considers that the Respondent registered the Domain Name in order to benefit from the goodwill and reputation of the Complainant's trade mark in the term TAMIFLU and illegitimately trade on it.
In addition, the Panel infers from the registration date of the Domain Name (June 21, 2009) that the Respondent sought to benefit from the substantial media exposure of TAMIFLU products in the context of the swine flu crisis.
Furthermore, the Panel considers that the reproduction of the TAMIFLU trade mark in the Domain Name in order to facilitate the purchase of the TAMIFLU products without prescription and without the authorization of the Complainant is not a bona fide offering of goods or services under the Policy (see Hoffmann-La Roche Inc. v. Eric Kaiser a/k/a eDrugNet, WIPO Case No. D2003-0721).
The Panel further considers that the use of the Domain Name raises questions of public health and safety as it would seem to enable consumers to buy, without any medical examination, the Tamiflu product. By not filing a response, the Respondent cannot prove that the use of the website is safe and consistent with medical custom and practice.
The Panel therefore finds that the Respondent has no rights or legitimate interests in the Domain Name and therefore has satisfied the requirement of paragraph 4(a)(ii) of the Policy.
The Complainant must prove that the Domain Name has been registered and is being used in bad faith in the sense of paragraph 4(a)(iii) of the Policy.
Paragraph 4(b) of the Policy sets out various circumstances which may be treated by the Panel as evidence of the registration and use of the Domain Name in bad faith, as follows:
“For the purposes of 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 you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 your website or location or of a product or service on your website or location.”
In view of the fact that the registration of the Complainant's trade mark in the term TAMIFLU predates the registration of the Domain Name by some ten years and considering the recent mass media coverage to which the Tamiflu products have been exposed, it is inconceivable that the Respondent would not have been aware of the Complainant's trade mark and product at the time of the Domain Name's registration. The choice by the Respondent of the TAMIFLU trade mark, plus the descriptive words “order” and “online” of itself demonstrate this.
This is further supported by the fact that the content of the website to which the Domain Name points is offering to sell the product in question. The Panel is therefore satisfied that the Respondent did register the Domain Name in bad faith.
With regard to the use of the Domain Name in bad faith, the Panel considers that the Domain Name is being used to attract consumers and make a commercial gain by linking to a third party website enabling users to buy pharmaceutical products online without any medical examination and thereby taking advantage of the goodwill and likelihood of confusion with the Complainant's trade mark. Although the exact contractual arrangements between the Respondent and the owner of the website to which the Respondent's website links are unclear, it is more likely than not that this linking to “www.rx-tab.com” generates revenue in the hands of the Respondent.
The Panel agrees with the Complainant's assertion that the Respondent is intentionally misleading consumers and confusing them by making them believe that the websites behind the links are associated with the Complainant. The Panel therefore finds that the Respondent has used the Domain Name in bad faith.
Finally, the Respondent's failure to rebut any of the Complainant's arguments is a further element from which the Panel infers bad faith on the Respondent's part.
The Panel therefore finds that the Respondent registered and is using the Domain Name in bad faith pursuant to paragraph 4(a) 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, <ordertamifluonline.info> be transferred to the Complainant.
David Taylor
Sole Panelist
Dated: September 2, 2009