Complainant is Hoffmann-La Roche Inc. of New Jersey, United States of America, represented by Lathrop & Gage L.C. of United States of America.
Respondent is MartinV of Massachusetts, United States of America.
The disputed domain name <tamiflupig.net> is registered with Web Commerce Communications Limited dba WebNic.cc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 26, 2010. On January 26, 2010, the Center transmitted by email to Web Commerce Communications Limited dba WebNic.cc. a request for registrar verification in connection with the disputed domain name. On January 28, 2010, Web Commerce Communications Limited dba WebNic.cc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on January 28, 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 Respondent of the Complaint, and the proceedings commenced on February 3, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was February 23, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 24, 2010.
The Center appointed Lorelei Ritchie as the sole panelist in this matter on March 2, 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.
Complainant is Hoffman-La Roche Inc. Complainant is one of the leading research and development companies of pharmaceutical and diagnostic products in the world. Complainant sells an antiviral drug under the mark TAMIFLU. Complainant advertises its TAMIFLU product extensively throughout the world in many types of media, including television, medical journals, and direct mailings. Due to the extensive and pervasive types of influenza that have spread through the world over the past few years, including the “swine” (or pig) flu, Complainant has seen sales of its TAMIFLU drug in excess of hundreds of millions of dollars in the United States, where Respondent is based, and in the billions of dollars worldwide. The TAMIFLU mark has become quite famous, garnering unsolicited media attention year round from publications around the world.
Complainant has obtained several trademark registrations for TAMIFLU, including in the United States, where Respondent is based (2439305, issued 2001; and 2576662, issued 2002).
Complainant, via its parent company, F. Hoffman-La Roche AG, owns the registration for the domain name <tamiflu.com>. Complainant uses this domain name to connect to a website through which it informs potential customers about its TAMIFLU mark and its antiviral, pharmaceutical product.
Respondent registered the disputed domain name <tamiflupig.net> on November 17, 2009. Respondent has no affiliation with Complainant. Respondent has linked the disputed domain name to websites that describe or advertise goods or services that are unaffiliated with Complainant or Complainant’s services. These include competing antiviral products. Complainant has not authorized these links, nor the use of its trademarks therewith.
Complainant contends that (i) <tamiflupig.net> is identical or confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the disputed domain name; and (iii) Respondent registered and is using the disputed domain name in bad faith.
Respondent did not reply to Complainant’s contentions in this proceeding.
This Panel must first determine whether <tamiflupig.net> is identical or confusingly similar to a trademark or service mark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that it is. The disputed domain name directly incorporates Complainant’s famous, registered trademark TAMIFLU, and merely adds the descriptive word “pig”, descriptive of the common “swine” flu that has been a global pandemic over the past year.
The Panel finds that the added word “pig” would be perceived by web users as descriptive of information about treatments for the “swine” or “pig” flu which can be treated with Complainant’s antiviral products sold under its TAMIFLU mark.
Numerous UDRP panels have agreed that supplementing or modifying a trademark with generic or descriptive words does not make a domain name any less “identical or confusingly similar” for purposes of satisfying this first prong of paragraph 4(a)(i) of the Policy. See, for example, DaimlerChrysler A.G. v. Donald Drummonds, WIPO Case No. D2001-0160; and Microsoft Corporation v. Step-Web, WIPO Case No. D2000-1500.
This Panel therefore finds that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
The Policy provides some guidance to respondents on how to demonstrate rights or legitimate interests in the domain names at issue in a UDRP dispute. For example, paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that Respondent has been “commonly known by the domain name”; or (iii) “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”.
Respondent did not reply to the Complaint, however, and no evidence has been presented to this Panel that might support a claim of Respondent’s rights or legitimate interests in the disputed domain name. Rather, as mentioned in Section 4 of this Panel’s decision, Respondent has used the disputed domain name to divert Internet users to websites that are unaffiliated with Complainant or Complainant’s services. As Complainant points out, “tamiflu” is a coined term (at least as to the “–tami” prefix). Therefore, this Panel finds that Complainant has provided sufficient evidence of Respondent’s lack of rights or legitimate interests in accordance with paragraph 4(a)(ii) of the Policy.
There are several ways that a complainant can demonstrate that domain names were registered and used in bad faith. For example, paragraph 4(b)(iv) of the Policy states that bad faith can be shown where “by using the domain name [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or of a product or service on [the] web site or location”. As noted in Section 4 of this Panel’s decision, Respondent has linked the disputed domain name to websites that describe or advertise goods or services that are unaffiliated with Complainant or Complainant’s services. In so doing, Respondent is trading on the goodwill of Complainant’s trademarks to attract Internet users, presumably for Respondent’s own commercial gain. This evidences bad faith by Respondent.
In particular, Respondent has linked the disputed domain name to websites that describe or advertise goods or services that are unaffiliated with Complainant or Complainant’s services. These include competing antiviral products. Complainant has not authorized these links, nor the use of its trademarks therewith.
Therefore, this Panel finds that Respondent registered and used the disputed domain name in bad faith in accordance with 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 disputed domain name <tamiflupig.net> be transferred to Complainant.
Lorelei Ritchie
Sole Panelist
Dated: March 12, 2010