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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

F. Hoffmann-La Roche AG v. Stoyan Stoyanov

Case No. D2006-0197

 

1. The Parties

The Complainant is F. Hoffmann-La Roche AG, Basel, Switzerland, represented by an internal representative.

The Respondent is Stoyan Stoyanov, Plovdiv, Bulgaria.

 

2. The Domain Name and Registrar

The disputed domain name <newstamiflu.com> is registered with Go Daddy Software.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 14, 2006. On February 15, 2006, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On February 16, 2006, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 February 17, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was March 9, 2006. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on March 10, 2006.

The Center appointed Ian Blackshaw as the sole panelist in this matter on March 15, 2006. 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, together with its affiliated companies is one of the world’s leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics, with global operations in more than 100 countries. The Complainant’s mark TAMIFLU is protected as a trademark in a multitude of countries worldwide. By way of examples, reference is made to the International Registration Nos. 713623 and 727329, covering pharmaceutical antiviral products and preparations respectively, copies of the corresponding registration certificates having been provided to the Panel. The priority dates of these registrations for the mark TAMIFLU are May 4, and September 23, 1999 respectively.

The mark TAMIFLU designates an antiviral pharmaceutical preparation, namely a product against flu.

 

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

A1. The domain name is confusingly similar to a trademark or service mark in which the Complainant has rights;

(Policy, paragraph 4(a)(i), Rules, paragraphs 3(b)(viii), 3(b)(ix)(1))

The domain name of the Respondent is confusingly similar to the Complainant’s mark in that it incorporates this mark in its entirety.

The addition of the word “news” does not sufficiently distinguish the domain name from the Complainant’s mark.

In the past years and, in particular, in the past months, the Complainant’s mark TAMIFLU has been referred to in mass media in view of the fact that various Governments have decided to stockpile the product TAMIFLU against birdflu. The notoriety of the trademark, therefore, increases the likelihood of confusion.

Furthermore, the Complainant’s use and registration of the mark TAMIFLU predates the registration of the domain name by the Respondent.

Therefore, the domain name is confusingly similar to the trademark TAMIFLU of the Complainant.

A2. The Respondent has no rights or legitimate interests in respect of the domain name;

(Policy, paragraph 4(a)(ii), Rules, paragraph 3(b)(ix)(2))

The Complainant has exclusive rights for the name TAMIFLU, as mentioned above, and no license, permission, authorization or consent has been granted to the Respondent to use the mark TAMIFLU in the domain name registered by the Respondent.

Furthermore, it is obvious that the Respondent uses the domain name for commercial gain and with the purpose of capitalizing on the fame of the Complainant’s mark TAMIFLU.

Therefore, the domain name at issue clearly alludes to the Complainant.

The Respondent’s website offers TAMIFLU and provides links to other on-line pharmacies, for example, “ www.online-pill-store.com“ and “ www.rxcenter.net“, printouts of which have been provided to the Panel.

The Respondent’s website also provides links to other websites owned by the Respondent, which offer products manufactured by competitors of the Complainant. For example, clicking on “Cialis” redirects to “ www.newscialis.com“ and clicking on “Viagra” redirects to “ www.newsviagra.com“. Again, printouts of these websites have been provided to the Panel.

According to Hoffmann-La Roche Inc. v. #1 Viagra Propecia Xenical & More Online Pharmacy, WIPO Case No. D2003-0793: “a reseller does not have the right to incorporate the trademark of the resold goods into the domain name of the reseller.”

According to Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784: “several cases have found that a registrant has no legitimate interest in a domain name that is similar to a pharmaceutical manufacturer’s mark and that is being used to direct consumers to an on-line pharmacy.”

According to Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946: “Respondent must use the site to sell only the trademarked goods; otherwise it could be using the trademark to bait Internet users and then switch them to other goods.”

There is no reason, therefore, why the Respondent should have any right or interest in the domain name at issue.

A3. The domain name was registered and is being used in bad faith;

(Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3))

The domain name was registered in bad faith, since at the time of the registration, that is, on October 1, 2005, the Respondent had, no doubt, knowledge of the Complainant’s well-known product/mark TAMIFLU.

According to Hoffmann-La Roche Inc. v. WhoisGuard, WIPO Case No. D2005-1288: “with the widespread fame of the TAMIFLU mark it is simply not credible to believe that the Respondent registered the domain name in issue without knowledge of the Complainant’s mark. Only someone with knowledge of the mark – considering the fact that the mark is an invented term – could have registered the domain name in issue. Thus, the Respondent registered the domain name in bad faith.”

The domain is also being used in bad faith. This is obvious, since, when viewing the Internet-website of the Respondent, one realizes that the 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 as to the source, affiliation and endorsement of the Respondent’s website.

Furthermore, by directing Internet users to on-line pharmacies which sell pharmaceuticals without requiring proof of a physical examination by a physician, evidence of which has been provided to the Panel, the use of the domain name in issue <newstamiflu.com> is potentially harmful to the health of Internet users, who purchase TAMIFLU products under the mistaken impression that they are dealing with the Complainant.

B. Respondent

The Respondent, having been duly notified of the Complaint and these proceedings, did not reply to the Complainant’s contentions or take any part in them.

 

6. Discussion and Findings

To qualify for cancellation or transfer of the domain name at issue, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:

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

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

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

In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

In accordance with paragraph 14(a) of the Rules, in the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the Panel, the Panel shall proceed to a decision on the Complaint; and (b) if a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences as it considers appropriate.

In accordance with paragraph 10(d) of the Rules, the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.

In previous UDRP cases in which the respondent failed to file a Response, the Panel’s decisions were based upon the complainant’s assertions and evidence, as well as inferences drawn from the respondent’s failure to reply. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064; and also Kцstritzer Schwarzbierbrauerei v. Macros-Telekom Corp, WIPO Case No. D2001-0936.

Nevertheless, the Panel must not decide in the Complainant’s favor solely based on the Respondent’s default (Cortefiel S.A. v. Miguel Garcнa Quintas, WIPO Case No. D2000-0140). The Panel must decide whether the Complainant has introduced elements of proof, which allow the Panel to conclude that its allegations are true.

A. Identical or Confusingly Similar

It is established case law that, where a domain name incorporates a complainant’s registered mark, this is sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.

The domain name at issue incorporates the trademark TAMIFLU, which is owned and has been commercially used and promoted by the Complainant in and for the purposes of its business and the sale of its products as a trademark for several years. Furthermore, the Panel accepts and recognizes that the Complainant’s trademark TAMIFLU is well known to and has a good reputation in pharmaceutical circles. Thus, there is a clear misuse and infringement on the part of the Respondent of the Complainant’s well-known trademark and such use is also in breach of the Policy.

The Panel agrees with the Complainant’s contention that the addition of the word “news” is descriptive and adds no distinctiveness or source of origin elements whatsoever to the domain name at issue, which essentially incorporates the Complainant’s well-known trademark.

In view of this, the Panel finds that the domain name registered by the Respondent is confusingly similar to the trademark TAMIFLU, in which the Complainant has clearly demonstrated, to the satisfaction of the Panel, that it has well-established and commercially valuable rights through registration and exclusive commercial use for several years.

B. Rights or Legitimate Interests

In order to determine whether the Respondent has any rights or legitimate interests in respect of the domain name (paragraphs 3(b)(ix)(2) of the Rules and 4(c) of the Policy), attention must be paid to any of the following circumstances in particular but without limitation:

- Whether before any notice to the Respondent of the dispute, there is any evidence of 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;

- whether the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights;

- whether the Respondent is making a legitimate non commercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.

There is no evidence to show that the Respondent was acting in pursuance of any rights or legitimate interests when registering the domain name at issue. Indeed, in view of the Complainant’s well-known trademark TAMIFLU and its product sold under that brand, the Respondent must have known, when registering the domain name at issue, that the Respondent could not have - or, indeed, have claimed - any such rights or interests. This is re-enforced by the addition of the ‘descriptor’ “news” to the trademark TAMIFLU as part of the domain name at issue in an attempt which, as mentioned above, fails to make it distinctive and different.

In particular, the Panel finds no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the domain name at issue in connection with a bona fide offering of goods or services. On the contrary, the Respondent has used the domain name at issue for a website that purports to be and gives the impression of emanating from or, at least, in some way, associated with the well-known business of the Complainant.

Likewise no evidence has been adduced that the Respondent has commonly been known by the domain name; nor is making a legitimate non-commercial or fair use of the domain name. In fact, as regards the latter point, the Respondent is offering for sale on its website the Complainant’s product identified by the trademark TAMIFLU, as well as other products which are in competition with those of the Complainant.

Neither is there any evidence that the Respondent has been authorized or licensed by the Complainant to use the Complainant’s well-known trademark TAMIFLU as part of the domain name at issue.

Indeed, the adoption by the Respondent of a domain name confusingly similar to the Complainant’s trademark inevitably leads to the diversion of the Complainant’s consumers to the Respondent’s website (see further on this point below) and the consequential tarnishing of the Complainant’s trademark. In other words, the Respondent is trading for commercial gain on the good name and worldwide reputation of the Complainant’s business and trademark and unfairly attracting to its own business and activities the substantial goodwill that the Complainant has established over many years throughout the world in its name and mark, sufficient evidence of which has been provided to the Panel, without any right or legal justification for doing so.

Therefore, the Panel concludes that the Respondent has neither rights to nor legitimate interests in the domain name at issue.

C. Registered and Used in Bad Faith

Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which prima facie constitute evidence of bad faith. However, this list is not exhaustive, but merely illustrative. See Nova Banka v. Iris, WIPO Case No. D2003-0366.

Paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:

“(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the Respondent’s website or location or of a product or service on its website or location.”

Based on the evidence provided in the case file, the Panel agrees with the Complainant’s contention that the Respondent by registering the domain name at issue is unfairly trading on the Complainant’s valuable goodwill established in its trademark TAMIFLU over several years. Indeed, in the absence of any evidence to the contrary, of which none is forthcoming on the part of the Respondent, the Respondent’s registration of the domain name at issue would not appear to be accidental, but deliberate and calculated to exploit the Complainant’s notoriety in the pharmaceutical field in general and in particular in respect of the much-in-demand antiviral product identified by the Complainant’s trademark TAMIFLU, which is incorporated by the Respondent in the domain name at issue. In fact, as was pointed out in paragraph 6.8 of the Decision in Hoffmann-La Roche Inc. v. WhoisGuard, WIPO Case No. D2005-1288, cited above by the Complainant, no claim for bona fide use of a domain name can be made “….when a respondent uses a disputed domain name confusingly similar to an invented mark [as in the present case] in which a complainant has rights and [the respondent] uses that disputed domain name to redirect internet users to a commercial website selling the very same product identified by the mark. To do otherwise would allow respondents to trade off the goodwill of trademark owners with impunity.”

Again, by registering and using the domain name at issue incorporating the Complainant’s trademark, TAMIFLU, the Respondent is misleading Internet users and consumers into thinking that it is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business, or the Respondent’s activities are approved or endorsed by the Complainant, none of which appears to be the case.

Furthermore, by directing Internet users to on-line pharmacies, which sell competing pharmaceutical products and also do so without requiring proof of a physical examination by a physician, the use of the domain name at issue is not only potentially harmful to the health of Internet users, but also misleading, and all of this, in the view of the Panel, also constitutes bad faith on the part of the Respondent. Indeed, using someone else’s well-known brand name to divert Internet users and consumers to websites offering products that compete with those of the Complainant and benefiting directly and indirectly from so doing can hardly be described as acting in good faith.

Finally, the failure of the Respondent to file any answer to the Complaint or otherwise participate in these proceedings, in the view of the Panel, is also an indication of bad faith on the part of the Respondent.

Therefore, for all the above reasons, the Panel concludes that the Respondent has registered and is using the domain name at issue 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 <newstamiflu.com> be transferred to the Complainant.

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Ian Blackshaw
Sole Panelist

Dated: March 16, 2006