WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

F. Hoffmann-La Roche AG v. Fundacion Private Whois

Case No. D2013-2191

1. The Parties

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

The Respondent is Fundacion Private Whois, Domain Administrator of Panama, Republic of Panama.

2. The Domain Name and Registrar

The disputed domain name <tamiflu-acheter.com> (the “Domain Name”) is registered with Internet.bs Corp. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 18, 2013. On December 18, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 26, 2013, 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 January 3, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 23, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 24, 2014.

The Center appointed W. Scott Blackmer as the sole panelist in this matter on January 29, 2014. 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 a Swiss company based on Basel and listed on the SIX Swiss Exchange in Zurich. A leading researcher and manufacturer of pharmaceuticals and medical diagnostic products, the Complainant controls a group of affiliated companies that operates in more than 100 countries. One of the group’s products is an antiviral pharmaceutical preparation branded as TAMIFLU, which is advertised globally for the treatment of influenza (“flu”). The Complaint indicates that the product has received considerable media attention as well, particularly in connection with the worldwide “swine flu” pandemics of 2009 and 2013.

The Complainant’s registered trademarks include International Registration No. 713623 (Switzerland and 67 other countries) for TAMIFLU, registered June 3, 1999, and International Registration No. 727329 for TAMIFLU with figurative elements, registered February 7, 2000.

The Domain Name was created on November 28, 2013 and registered in the name of the Registrar’s domain privacy service, which has neither submitted a Response nor disclosed the name of the real party in interest.

The Domain Name resolves to a French-language website advertising TAMIFLU for purchase online, including photographs of the Complainant’s product and packaging with the TAMIFLU mark. The operator of the website is not identified, but at least one page on the website mentions an online English healthcare provider and pharmacy.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is confusingly similar to its TAMIFLU mark, and that the Respondent has no rights or legitimate interests in the Domain Name. The Complainant infers that the Respondent registered and used the well-known and distinctive mark in the Domain Name to mislead Internet users for commercial gain.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:

(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.

Under paragraph 15(a) of the Rules, “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

A. Identical or Confusingly Similar

The Complainant indisputably holds registered TAMIFLU trademarks. The Domain Name incorporates this mark in its entirety, adding a hyphen and the French word “acheter” ( “to buy”). This generic addition does not avoid confusion with the mark. It serves rather to heighten the likelihood of confusion, as the Respondent’s website is in the French language and offers TAMIFLU for purchase online.

UDRP panels customarily treat the first element of a Policy complaint as a standing requirement, which simply requires “a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name”; some panels refer as well to the “overall impression” created by the domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2. The Panel finds that these tests are met in this case and concludes that the Domain Name is confusingly similar to the Complainant’s TAMIFLU mark for purposes of the first element of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:

(i) before any notice to it of the dispute, the Respondent’s 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) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or

(iii) the 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.

Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a disputed domain name, it is well established that after a complainant makes a prima facie case, the burden of production to show rights or legitimate interests in the domain name shifts to the respondent. See WIPO Overview 2.0, paragraph 2.1.

It is undisputed here that the Complainant did not give the Respondent permission to use its TAMIFLU mark in the Domain Name, which is used for a commercial website ostensibly selling the Complainant’s product. Many UDRP panels have concluded that a reseller or distributor may legitimately make nominative use of the manufacturer’s trademark in a domain name, even without the authorization of the trademark holder, under certain conditions. These include “the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site’s accurately and prominently disclosing the registrant's relationship with the trademark holder”. See WIPO Overview 2.0, paragraph 2.3, citing Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, and other decisions.

The Oki Data conditions are not satisfied in this case. It is not clear on this record whether the anonymous Respondent actually sells genuine TAMIFLU. Moreover, the website does not disclose the Respondent’s relationship, if any, with the Complainant. A website visitor could easily conclude that the website is sponsored by or associated with the Complainant itself. Thus, the Respondent’s use of the Domain Name is not “in connection with a bona fide offering of goods or services” within the meaning of the Policy.

The Panel finds that the Complaint presents a prima facie case, and the Respondent has not come forward with evidence of a right or legitimate interest in using the Complainant’s trademark in the Domain Name.

The Panel finds that the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Policy’s non-exhaustive list of circumstances that are considered evidence of bad faith (paragraph 4(b)) includes the following:

“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product or service on your web site or location.”

This example of bad faith applies to the circumstances of this proceeding. The Complainant’s TAMIFLU trademark is a distinctive, coined term. The Domain Name is comprised of that trademark and the French verb “acheter” meaning “to buy”, and it is used for a French-language website ostensibly offering the Complainant’s TAMIFLU product for sale online. The Respondent’s website clearly refers to the Complainant’s product and reproduces photographs of the branded product and packaging. Thus, the Domain Name itself tends to attract Internet users familiar with the Complainant’s mark, and the associated website then exploits the TAMIFLU mark for commercial purposes, without permission or justification and without disclosing its actual source or sponsorship. This represents bad faith for Policy purposes, as described in the Policy, paragraph 4(b)(iv). The Respondent, still veiled in anonymity, has not offered any alternative explanation for the selection and use of a Domain Name based on a distinctive trademark.

The Panel concludes that the third element of the Policy has been established on this record.

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 <tamiflu-acheter.com> be transferred to the Complainant.

W. Scott Blackmer
Sole Panelist
Date: February 18, 2014