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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

F. Hoffmann-La Roche AG v. Fred

Case No. D2006-0246

 

1. The Parties

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

The Respondent is Fred, Bine of Belize.

 

2. The Domain Name and Registrar

The disputed domain name <super-tamiflu.com> is registered with EstDomains, Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 28, 2006. On February 28, 2006, the Center transmitted by email to EstDomains, Inc. a request for registrar verification in connection with the domain name at issue. On March 1, 2006, EstDomains, Inc. 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. In response to a notification by the Center that the Complaint did not contain a sufficient submission on the part of the registrant to the jurisdiction at the principal office of the Registrar, Complainant consented to the jurisdiction of the courts at the location of the domain-holder’s address by e-mail dated March 7, 2006.

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”), 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 March 9, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was March 29, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 4, 2006.

The Center appointed Torsten Bettinger as the sole panelist in this matter on April 18, 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 is together with its affiliated companies 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 owns a number of trademark registrations protecting the mark TAMIFLU in numerous countries worldwide, inter alia, international registration No. 713623 TAMIFLU, registered on June 3, 1999, in class 5 and international registration No. 727329 Tamiflu & device, registered on February 7, 2000, in class 5.

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

Complainant submitted screen shots of Respondent’s web page at “www.super-tamiflu.com” containing various links such as “pill tamiflu”, “tamiflu sale” or “tamiflu order” which redirect Internet users to an online pharmacy at “www.legalmeds.info”. This online pharmacy offers for sale Complainant’s TAMIFLU product as well as various other pharmaceuticals.

 

5. Parties’ Contentions

A. Complainant

Complainant asserts that each of the elements specified in paragraph 4(a) of the Policy have been satisfied.

In reference to the element in paragraph 4(a)(i) of the Policy, Complainant argues that the word “super” is descriptive and therefore does not eliminate the similarity between Complainant’s trademark TAMIFLU and the disputed domain name.

In reference to the element in paragraph 4(a)(ii) of the Policy, Complainant contends that none of the situations described in paragraph 4(c) of the Policy can be established in this case. Complainant states that Respondent has no authorization or licence to use the TAMIFLU trademark in his domain name and that the use of Complainant’s trademark in order to redirect Internet users interested in Complainant’s goods to a website that offers for sale Complainant’s TAMIFLU product as well as other pharmaceuticals is not a use in connection with a bona fide offering of goods and services pursuant to Policy paragraph 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy paragraph 4(c)(iii).

In reference to the element in paragraph 4(a)(iii) of the Policy, Complainant asserts that there is no reason for Respondent to use Complainant’s mark in the disputed domain name other than to use it to attract Internet users to Respondent’s website for commercial gain. Respondent alleges that by using TAMIFLU, Respondent is creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website and the products offered on the website.

B. Respondent

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

 

6. Discussion and Findings

A. Identical or Confusingly Similar

The test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the domain name is used or other marketing and use factors, usually considered in trademark infringement (See Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic , WIPO Case No. D2000-1698 <guiness.com>, Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110 <ansellcondoms.com>, Dixons Group Plc v. Mr. Abu Abdullaah , WIPO Case No. D2001-0843 <dixons-online.net>, AT&T Corp. v. Amjad Kausar , WIPO Case No. D2003-0327 <attinternet.com>, <attuniversal.com>, BWT Brands, Inc. and British Am. Tobacco (Brands), Inc. v. NABR, WIPO Case No. D2001-1480; Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505).

The disputed domain name wholly incorporates Complainant’s famous trademark TAMIFLU, used in connection with drugs. The fact that the word “super” is added to Complainant’s trademark does not eliminate the similarity between Complainant’s trademark and the disputed domain name, as “super” is a descriptive component of the disputed domain name. In numerous cases, it has been held that a domain name that wholly incorporated a complainant’s registered mark may be sufficient to establish confusing similarity for purposes of the Policy despite the addition of descriptive words to such marks.

It is also well established that the specific top level of a domain name such as “.com”, “.org” or “.net” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (See Magnum Piering, Inc. v. The Mudjackers and Garwood & Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429).

The Panel thus finds that the domain name <super-tamiflu.com> is confusingly similar to the trademark in which Complainant has exclusive rights and that the Complainant has established the requirement of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy requires the Complainant to prove that the Respondent has no right or legitimate interest in the disputed domain name. However, it is consensus view among Panelists that if Complainant makes a prima facie case that the Respondent has no rights or legitimate interests, and Respondent fails to show one of the three circumstances under Paragraph 4(c) of the Policy, then the Respondent may lack a legitimate interest in the domain name.

Complainant asserted that the Respondent has neither a license nor any other permission to use the Complainant’s famous trademark TAMIFLU. The Respondent has not denied these assertions. The Panel thus finds that the Complainant has made a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain names which wholly incorporate the Complainant’s mark.

Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the domain name.

The Respondent’s use of the domain name in order to redirect Internet users to a website devoted to sale of Complainant’s TAMIFLU products and various other pharmaceuticals and thus capitalize on Complainant’s mark is not a bona fide use pursuant to paragraph 4(c)(i) of the Policy.

Further, nothing in the record suggests that Respondent trades under the domain name or the name TAMIFLU, or is commonly known by said domain name or the name TAMIFLU.

Under these circumstances, the Panel takes the view that the Respondent has no rights or legitimate interests in the domain name and that the requirement of paragraph 4(a)(ii) is also satisfied.

C. Registered and Used in Bad Faith

The Panel is also convinced that Respondent registered and has been using the domain name in bad faith.

Complainant’s pharmaceutical TAMIFLU is world wide known. It is therefore inconceivable that Respondent registered the domain name unaware of Complainant’s rights in its TAMIFLU marks.

Respondent registered a domain name which is except for a the descriptive term “super” identical to Complainant’s trademark. That and the nature of the website Respondent maintains makes it clear that his purpose is to divert traffic intended for Complainant’s site to his own, and thus capitalize on Complainant’s trademark.

This qualifies as bad faith under paragraph 4(b)(iv) in that the Respondent’s use of the domain name attempts to attract for commercial gain Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website.

Moreover, Respondent’s default in this proceeding reinforces an inference of bad faith. If Respondent had arguments that he acquired the domain name in good faith, and had good faith bases for using the domain name, he should have asserted them.

The Panel therefore concludes that Respondent registered and is using the domain name <super-tamiflu.com> in bad faith and that the requirement of the paragraph 4(a)(iii) of the Policy is satisfied.

 

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

 

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Torsten Bettinger
Sole Panelist

Dated: April 22, 2006