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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

F. Hoffmann-La Roche AG v. Fredderick

Case No. D2006-0306

 

1. The Parties

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

The Respondent is Fredderick, Cheboksari, Angola.

 

2. The Domain Names and Registrars

The disputed domain names <eccellentetamiflu.com>, <superioretamiflu.com> and <virtualetamiflu.com> are registered with EstDomains, Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 10, 2006. On March 10, 2006, the Center transmitted by email to EstDomains, Inc. a request for registrar verification in connection with the domain names at issue. On March 13, 2006, EstDomains, Inc. confirmed inter alia, that it was the current registrar of the domain names <superioretamiflu.com>, <virtualetamiflu.com> and <eccellentetamiflu.com> and that the disputed domain names were registered in the Respondent’s name. It also provided the contact details for the administrative and technical contact.

In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on March 15, 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 22, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was April 11, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 19, 2006.

The Center appointed Pravin Anand as the sole panelist in this matter on April 24, 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 facts stated by the Complainant, F. Hoffmann-La Roche AG, are as follows:

1) 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.

2) The Complainant has global operations in over 100 countries of the world.

3) The Complainant’s trademark TAMIFLU designates antiviral pharmaceutical preparations, namely a product against flu.

4) The Complainant’s trademark TAMIFLU is registered in a number of countries. Illustratively, international registrations under the Madrid Protocol are as under:

- TAMIFLU registration no. 713623 filed on June 3, 1999, in class 5.

- TAMIFLU registration no. 727329 filed on February 5, 2000, in class 5.

 

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions are summarized briefly hereunder:

1) The Complainant has rights in the trademark TAMIFLU. Additionally, the domain names <eccellentetamiflu.com>, <superioretamiflu.com> and <virtualetamiflu.com> are confusingly similar to the trademark in which the Complainant has rights.

2) The Respondent does not have any rights or legitimate interests in the domain names as:

- The Complainant has exclusive rights over TAMIFLU, and no license / permission / authorization has been granted to the Respondent to use the trademark TAMIFLU in a domain name.

- The Respondent’s websites are composed of various links, for example “order tamiflu,” “cheap tamiflu” and “sale tamiflu,” all of which redirect to two online pharmacies.

1) The domain names have been registered and are being used in bad faith as:

- The Respondent has attempted to attract Internet users, for commercial gain to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website.

- At the time of registration of the domain names the Respondent had knowledge of the Complainants trademark TAMIFLU.

B. Respondent

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

 

6. Discussion and Findings

The Complainant has to prove each of the following elements:

1) The domain names registered by the Respondent are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

2) The Respondent has no rights or legitimate interests in respect of the domain names; and

3) The domain names have been registered and are being used in bad faith.

In the case of a default by a party, paragraph 14 of the Rules prescribes that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or a requirement, under the Rules, the Panel shall draw such inferences therefrom, as it considers appropriate.

In this case, the Respondent has not submitted a Response and the Panel will therefore have to operate on the basis of facts stated in the Complaint and the evidence to support it.

A. Identical or Confusingly Similar

The Complainant has exclusive rights in the trademark TAMIFLU. Further the addition of the generic terms “eccellente,” “superiore” and “virtuale” does not make the domain names dissimilar to the trademark in which the Complainant has rights. The generic term “eccellente’ in Italian translates in English to “excellent.” Similarly the generic term “superiore” translates to “advanced” and the generic term “virtuale” translates to “virtual.”

Thus, the addition of these generic terms before the trademark TAMIFLU in which the Complainant has rights has no real significance and the predominant part remains the Complainants trademark TAMIFLU. See Dr. Grandel GmbH v. Drg Randel Inc., WIPO Case No. D2005-0829.

Further the Complainant’s use of the trademark TAMIFLU predates the Respondent’s registration of the domain names.

Internet users will pay little or no regard as to the generic terms “eccellente,” “virtuale” or “superiore” prefixed to the Complainant’s trademark TAMIFLU.

Therefore the Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

The Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names as:

(i) The Complainant has given the Respondent no license / permission / authorization to use its trademark TAMIFLU in domain names.

(ii) The website to which the disputed domain names resolve are composed of various links such as “cheap tamiflu,” “order tamiflu” or “sale tamiflu” all of which redirect to two online pharmacy websites, “www.can-meds.info” and “www.bestpahrmacydiuscount.info.” These pharmacies offer the Complainant’s drugs sold under the trademark TAMIFLU as well as other drugs manufactured by competitors of the Complainant. It is evident that the Respondent cannot have any rights or legitimate interests in a domain names that are similar to a pharmaceutical manufacturer’s mark and that is being used to direct consumers to an on-line pharmacy, which is unauthorized by the Complainant. See Pfizer Inc. v Seocho and Vladmir Snezko WIPO Case No. D2001-1199 and also Hoffmann –La Roche v. # Viagra Propecia Xenical & More Online Pharmacy, WIPO Case No. D2003-0793.

As the Respondent has not presented any evidence rebutting this prima facie showing, the Panel finds that the Respondent does not have any rights or legitimate interests in the domain names.

C. Registered and being Used in Bad Faith

The Complainant has alleged and the Panel finds that the domain names were registered and are being used in bad faith, for the following reasons:

(i) At the time of registration of the domain names, the Respondent had knowledge of the Complainant’s well-known product / mark TAMIFLU. See Hoffmann La Roche Inc. v. WhoisGuard, WIPO Case No. D2005-1288.

(ii) As mentioned earlier, the Respondent is attempting to attract Internet users to its websites for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites or of their on-line pharmacy websites. See Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784.

(iii) The Respondent is using the domain names as a forwarding address to a for profit online pharmacy.

The Panel therefore finds that the domain names have been registered and are 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 names <eccellentatamiflu.com>, <superioretamiflu.com> and <virtualetamiflu.com> be transferred to the Complainant.

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Pravin Anand
Sole Panelist

Dated: May 8, 2006