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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

F. Hoffmann-La Roche AG v. Stephen Annand

Case No. D2007-0378

 

1. The Parties

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

The Respondent is Stephen Annand of Clacton-On-Sea, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <tamiflutablets.com> is registered with Schlund + Partner.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 13, 2007. On March 15, 2007, the Center transmitted by email to Schlund + Partner a request for registrar verification in connection with the domain name at issue. On March 21, 2007, Schlund + Partner 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 March 27, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was April 16, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 19, 2007. On April 19, 2007, the Respondent submitted a late response via e-mail to the Center.

The Center appointed Johan Sjцbeck as the sole panelist in this matter on April 26, 2007. 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 has provided evidence regarding the registered trademark TAMIFLU with international registration number 713623 with priority as of May 4, 1999, and the registered trademark TAMIFLU with international registration number 727329, dated February 7, 2000.

The disputed domain name <tamiflutablets.com> was registered by the Respondent on February 6, 2006.

 

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

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. The Complainant operates in more than 100 countries and the Complainant has registered the trademark TAMIFLU in a multitude of countries. The Complainant has submitted evidence of two international trademark registrations for the mark TAMIFLU with the registration numbers 713623 and 727329.

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

The disputed domain name <tamiflutablets.com> incorporates the Complainant’s trademark TAMIFLU in its entirety and contains the addition of a descriptive word which is linked to the services of the Complainant. The Complainant is therefore of the opinion that the disputed domain name is confusingly similar to the Complainant’s trademark TAMIFLU.

In the past years, the Complainant’s trademark TAMIFLU has been vigorously referred to in the mass media due to the fact that various governments have been stockpiling the Complainant’s product as protection against bird flu. Furthermore, the registration of the trademark TAMIFLU predates the registration of the disputed domain name and the Complainant has not granted any license or given any kind of permission or authorization to the Respondent to use the trademark TAMIFLU in a domain name. The Respondent’s website is a search engine with sponsored links. The Respondent’s only reason for registering 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 there is no reason why the Respondent should have any rights or legitimate interest in the domain name.

The Complainant argues that the disputed domain name was registered by the Respondent in bad faith. At the time of registration, the Complainant must have had knowledge of the Complainant’s well-known trademark TAMIFLU.

Furthermore, it is the opinion of the Complainant that the disputed domain name <tamiflutablets.com> is being used in bad faith. 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 trademark, as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or of the products or services posted on or linked to at the Respondent’s website. The website to which the disputed domain name resolves contains advertising links to websites promoting and/or offering products and services of third parties.

The Respondent is intentionally misleading consumers and makes consumers believe that other websites are associated with or recommended by the Complainant. As a result, the Respondent may generate unjustified revenues for each click-through of the sponsored links. The Respondent is illegitimately capitalizing on the fame of the Complainant’s trademark TAMIFLU.

B. Respondent

On April 19, 2007, three days past the deadline, the Respondent submitted a late Response via e-mail.

The Respondent states that he purchased the disputed domain name in good faith and that he has owned the domain name for an additional two years. Furthermore, the Respondent maintains that the domain name has not been used and that any links on the website is a result of parking the domain name. The Respondent contends that he offered to transfer the disputed domain name to the Complainant when he was contacted under the condition that the Complainant would pay the costs involved for the transfer, and that the Complainant declined to pay anything to the Respondent.

 

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:

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

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

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

A. Identical or Confusingly Similar

The Complainant is, according to the submitted evidence, the owner of the trademark TAMIFLU. The disputed domain name <tamiflutablets.com> contains the trademark in its entirety with the addition of the generic word “tablets”. The ability for such a generic word to distinguish the domain name from the trademark is limited and has little, if any, legal significance according to previous case law. See for example Nokia Corporation v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102, regarding the domain name <nokiagirls.com>, in which the addition of the noun “girls” was not sufficient to distinguish the domain name from the trademark NOKIA.

Having the above in mind, it is the opinion of the Panel that the domain name <tamiflutablets.com> is confusingly similar to the Complainant’s trademark TAMIFLU and that the Complainant has proved the requirement under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

(a) that he has made 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 prior to the dispute; or

(b) that he is commonly known by the domain name, even if he has not acquired any trademark rights; or

(c) that he intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.

The Complainant has not licensed or otherwise consented to the Respondent’s use of the trademark TAMIFLU in connection with the disputed domain name <tamiflutablets.com> which is confusingly similar to the trademark.

The Respondent has not submitted any evidence indicating that the Respondent is the owner of any trademark rights or that the Respondent is commonly known by the disputed domain name.

From the submitted evidence in this case, it is clear that the Respondent’s website, to which the disputed domain name resolves, contains numerous sponsored commercial links leading to websites promoting and/or offering products and services of third parties. The Respondent’s use of the disputed domain name serves the purpose of generating revenue via advertised pay-per-click products and links and that does not represent a use of the domain name in connection with a bona fide offering of goods and services. See for example Sigikid H. Scharrer & Koch GmbH & Co. KG, MyBear Marketing-und Vertriebs GmbH, Mr. Thomas Dufner v. Bestinf, WIPO Case No. D2004-0990.

There is no evidence in the case that refutes the Complainant’s submissions, and the Panel concludes that the Complainant has also proved the requirement under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include:

(i) circumstances indicating the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the domain name were registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided it is a pattern of such conduct; or

(iii) circumstances indicating that the domain name was registered primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the domain name has intentionally been used in an attempted to attract, for commercial gain, Internet users to a website or other on-line location, by creating a likelihood of confusion with a trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on a website or location.

The Complainant’s registered trademark TAMIFLU predates the registration of the disputed domain name <tamiflutablets.com> and it has been argued by the Complainant that it is obvious that the Respondent knew or must have known about the Complainant’s well-known trademark when registering the domain name. The trademark TAMIFLU is an invented term and the addition of the generic word “tablets” further indicates that the disputed domain name has been made with the Complainant’s product in mind, since tablets are a common method to distribute pharmaceutical products. It is highly unlikely that the Respondent registered the disputed domain name without any knowledge of the Complainant’s mark.

As previously stated, it is clear that the website, to which the disputed domain name resolves, contains numerous sponsored commercial links. The Respondent has argued that he had nothing to do with the commercial links on the website to which the disputed domain name resolves. However, the submitted evidence indicates that the domain name has been part of the Sedo Domain Parking program in which domain name holders earn money each time a consumer clicks on the advertisements displayed. Such exploitation of the reputation of trademarks to obtain click-through commissions from the diversion of Internet users is an indication of use in bad faith according to previous decisions. See for example LґOrйal, Biotherm, Lancфme Parfums et Beautй & Cie v. Unasi, Inc, WIPO Case No. D2005-0623.

The circumstances in the case before the Panel indicate that the Respondent has been aware of the Complainant’s trademark TAMIFLU and that the disputed domain name <tamiflutablets.com> has intentionally been used in an attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the trademark TAMIFLU as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on a website.

The Panel concludes that the Complainant has proved the requirements under paragraph 4(b) of the Policy and that the domain name <tamiflutablets.com> has been registered and 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, <tamiflutablets.com>, be transferred to the Complainant.

 


Johan Sjцbeck
Sole Panelist

Dated: May 10, 2007

 

Источник информации: https://internet-law.ru/intlaw/udrp/2007/d2007-0378.html

 

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