WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

F. Hoffmann-La Roche AG v. Stanislav Cernevic

Case No. D2010-1396

1. The Parties

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

The Respondent is Stanislav Cernevic of Vilnius, Lithuania.

2. The Domain Name and Registrar

The disputed domain name <buytamifluonline.org> is registered with Tucows Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 18, 2010. On August 18, 2010, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On the same date, 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 23, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 12, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 13, 2010.

The Center appointed Enrique Ochoa de González Argüelles as the sole panelist in this matter on September 22, 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 is one of the largest pharmaceutical companies in the world.

The trademark TAMIFLU has been registered in several countries since May 1999, and it is a worldwide famous trademark owned by the Complainant.

The disputed domain name was registered on July 22, 2010.

5. Parties’ Contentions

A. Complainant

Identical or Confusingly Similar

The Complainant contends that together with its affiliated companies, it is one of the world’s leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics, having global operations in more than 100 countries. The Complainant asserts that its TAMIFLU mark (which designates an antiviral pharmaceutical preparation, namely a product against flu) is protected as a trademark in a multitude of countries worldwide.

The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s TAMIFLU mark as the disputed domain name incorporates this mark in its entirety. The addition of the generic terms “buy” and “online” does not sufficiently distinguish the disputed domain name from the trademark.

The Complainant contends that in the past years and in particular, in 2009, the 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 swineflu. The trademark’s notoriety will increase the likelihood of confusion and that the Complainant’s use and registration of the mark TAMIFLU do predate the Respondent’s registration of the Domain Name.

Rights or Legitimate Interests

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Complainant contends that it has exclusive rights for TAMIFLU and that no licence/ permission/authorization was granted to the Respondent to use TAMIFLU in the disputed domain name. The Complainant further asserts that the Respondent uses the disputed domain name for commercial gain and with the purpose of capitalizing on the fame of the Complainant’s mark TAMIFLU.

The Complainant contends that the disputed domain name alludes to the Complainant and directs to a webpage offering/selling among others also the Complainant’s products.

The Complainant contends that the Respondent’s only reason in registering and using the disputed domain name is to benefit from the reputation of the trademark TAMIFLU and illegitimately trade on its fame for commercial gain and profit and that there is no reason why the Respondent should have any right or legitimate interests in such domain name.

Registration and Use in Bad Faith

The Complainant contends that the disputed domain name was registered in bad faith since at the time of the registration i.e., on July 22, 2010, the Respondent had, no doubt, knowledge of the Complainant’s well-known product/mark TAMIFLU.

The Complainant contends that the disputed domain name is also being used in bad faith, since when viewing the website to which the disputed domain name resolves, anyone can realize that Respondent is intentionally attempting (for commercial purpose) to attract Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s well-known mark (including a picture of the packaging) as to the source, affiliation and endorsement of the Respondent’s website or of the products or services posted on or linked to Respondent’s website.

The Complainant contends that the Respondent, by using the disputed 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 and that as a result thereof, the Respondent may generate unjustified revenues and therefore is illegitimately capitalizing on the TAMIFLU trademark fame.

B. Respondent

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

6. Discussion and Findings

Because the Respondent did not respond to the Complaint, the Panel must decide the dispute based upon the Complaint.

Under paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements of its case in order to obtain the requested remedies:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

The Panel considers each element in the following order.

A. Identical or Confusingly Similar

The Complainant has shown in these proceedings its trademark ownership of the TAMIFLU trademark.

The Complainant argues that the disputed domain name is confusingly similar to its trademark.

The Panel finds that the disputed domain dame is confusingly similar to the Complainant's trademark TAMIFLU because it entirely incorporates the TAMIFLU trademark and additional generic words like “buy” and “online” do not add or do not give any distinctiveness to the disputed domain name. “The fact that the disputed domain names further include certain descriptive phrases associated with Respondent’s use of the disputed domain names to market and redirect consumers to websites that sell competitive products, as well as possibly Complainant’s products, is of no merit”. Hoffmann-La Roche Inc. v. Jason Barnes, WIPO Case No. D2010-1134.

The Panel finds therefore that the Complainant has proved the first of the three elements that it must establish.

B. Rights or Legitimate Interests

The Complainant has made evident that it has not licensed or otherwise authorised the Respondent to use its trade mark. Also, the Respondent does not appear to be commonly known by the domain name and it is evidently not making a legitimate noncommercial or fair use of it. The Complainant has established a prima facie case of lack of rights and legitimate interests and there has been no rebuttal from the Respondent. There is nothing in the case file that gives reason to believe that the Respondent has or has had any rights or legitimate interests in respect of the disputed domain name.

The Panel concludes that the Respondent has no rights and no legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Given the widely established market position of the Complainant and the Respondent’s use of the disputed domain name, it is beyond belief that the Respondent was unaware of the Complainant and its trademark when registering the disputed domain name.

The Complainant has provided evidence that the Respondent has knowingly acted so as to harm the Complainant’s business, for its own commercial gain, by use of the disputed domain name to direct the public to sources for acquisition of medicines. The public is then engaged by the confusing similarity of the disputed domain name to the trademark TAMIFLU, and thus taken advantage of by the Respondent. The use of the disputed domain name will make users believe that there is an entitling connection to the Complainant, whereas in fact there is none. The Respondent contributes wilfully to exposing the public to risks that may easily appear attributable to marketing endeavours of the Complainant and which tarnish its trade mark.

Based on the evidence in the case file, the Panel finds that the disputed domain name has been registered and is being used in bad faith.

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 <buytamifluonline.org> be transferred to the Complainant.

Enrique Ochoa de González Argüelles
Sole Panelist
Dated: October 6, 2010