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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Hoffmann-La Roche Inc. v. Mark Mill

Case No. D2007-0721

1. The Parties

The Complainant is Hoffmann-La Roche Inc. of New Jersey, United States of America, represented by Lathrop & Gage L.C., United States of America.

The Respondent is Mark Mill of Los Angeles, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <buy-tamiflu.name> is registered with Intercosmos Media Group d/b/a directNIC.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 15, 2007. On May 16, 2007, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. On May 17, 2007, Intercosmos Media Group d/b/a directNIC.com 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”), 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 Respondent of the Complaint, and the proceedings commenced on June 1, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was June 22, 2007. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 28, 2007.

The Center appointed Gary J. Nelson as the sole panelist in this matter on July 10, 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

Complainant is the owner of United States Trademark Registration No. 2,439,305 for TAMIFLU for pharmaceutical antiviral preparations; and is the owner of United States Trademark Registration No. 2,576,662 for TAMIFLU and Design for pharmaceutical antiviral preparations, among other registrations in numerous countries.

Respondent appears to have registered the <buy-tamiflu.name> domain name subsequent to the registrations of TAMIFLU by Complainant as a trademark.

5. Parties’ Contentions

A. Complainant

Complainant has made the following allegations:

Complainant, together with its affiliated companies, is one of the world’s leading manufacturers of pharmaceutical and diagnostic products.

Complainant is the owner of the TAMIFLU trademark, which is protected in a multitude of countries worldwide, including the United States. The TAMIFLU trademark has been registered in the United States since 2001. TAMIFLU is a trademark for a pharmaceutical product for the treatment and prevention of influenza. Complainant's TAMIFLU branded product has been extensively promoted in print advertisement, in medical journals, television advertising and direct mailings, among other promotional efforts. Complainant has been using TAMIFLU for antiviral preparations since November, 1999. Sales of the TAMIFLU branded product are in the hundreds of millions of dollars in the United States, and sales worldwide are in the billions of dollars.

Complainant’s parent company owns the <tamiflu.com> domain name where it operates a website dedicated to the promotion of the TAMIFLU branded product.

The <buy-tamiflu.name> domain name is confusingly similar to Complainant’s TAMIFLU trademark because it incorporates the TAMIFLU mark in its entirety and merely adds on descriptive words. The addition of these descriptive words is not sufficient to distinguish the contested domain name from Complainant’s TAMIFLU trademark.

The TAMIFLU trademark is well-known and notorious. The use and registration of TAMIFLU by Complainant predates the registration of the <buy-tamiflu.name> domain name by Respondent.

Respondent has not received a license, permission or authorization to use the TAMIFLU trademark in the contested domain name.

Respondent has no rights or legitimate interests in the <buy-tamiflu.name> domain name. Respondent’s website linked to the <buy-tamiflu.name> domain name is linked to a hardcore pornographic website.

Respondent is not commonly known by the name “buy-tamiflu.name”. The hardcore pornographic nature of Respondent's website is evidence of Respondent lacks a legitimate business interest in the disputed domain name.

Respondent has registered and is using the <buy-tamiflu.name> domain name in bad faith.

B. Respondent

Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

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

In view of Respondent’s failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and shall draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(i) The domain name in issue 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 the contested domain name; and

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

A. Identical or Confusingly Similar

Complainant is the owner of at least two United States Trademark Registrations granting trademark rights in TAMIFLU. Therefore, Complainant has established rights in this trademark pursuant to paragraph 4(a)(i) of the Policy. See Janus Int’l Holding Co. v. Rademacher, WIPO Case No. D2002-0201 (finding that the registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption).

Respondent’s <buy-tamiflu.name> domain name is confusingly similar to Complainant’s TAMIFLU trademark because it incorporates the entirety of Complainant’s trademark and merely adds the generic term “buy”, along with a hyphen and the generic top level “.name” domain name. Neither the addition of a generic term to another’s trademark nor a hyphen nor the addition of a generic top level domain name is sufficient to create a distinct domain name capable of overcoming a proper claim of confusing similarity. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, WIPO Case No. D2001-0026 (finding confusing similarity where the domain name in dispute contains the identical mark of the Complainant combined with a generic word or term); see also Sony Kabushiki Kaisha v. Inja, Kil, WIPO Case No. D2000-1409 (finding that “[n]either the addition of an ordinary descriptive word...nor the suffix “.com” detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus paragraph4 (a)(i) of the Policy is satisfied).

Complainant has proven the requirement of Policy, paragraph 4(a)(i) in regard to the <buy-tamiflu.name> domain name.

B. Rights or Legitimate Interests

The Panel finds that Respondent has no rights or legitimate interests in the contested domain name.

Respondent has failed to file a Response, which can suggest, in appropriate circumstances, that Respondent lacks rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd. and Glenn Greenhouse, WIPO Case No. D2000-1221 (finding that respondent’s failure to respond in a UDRP proceeding can be construed, in appropriate circumstances, as an admission that it has no legitimate interest in the contested domain names).

By not filing a Response, Respondent has not provided any evidence that it is commonly known by the <buy-tamiflu.name> domain name, or that it is commonly known by any name consisting of, or incorporating the name, “Tamiflu”, or “Buy Tamiflu”. In Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403, the panel held that a lack of rights or legitimate interest could be found where (1) Respondent is not a licensee of Complainant; (2) Complainant’s rights in its related trademarks precede Respondent’s registration of the contested domain name; and (3) Respondent is not commonly known by the domain name in question. The Panel notes that by not submitting a response, the Respondent also failed to provide any evidence that it is a licensee of Complainant or that its registration of the <buy-tamiflu.name> domain name predates Complainant’s rights in the TAMIFLU trademark.

In regard to the <buy-tamiflu.name> domain name, Respondent is currently operating a website linked to a hardcore pornographic website. The use of another’s widely-known trademark to attract Internet Users to a commercial pornographic website is not a bona fide offering of goods and services under paragraph 4(c)(i) of the Policy.

Even though an infringing use of another’s trademark can be powerful evidence that a Respondent does not have a legitimate right or interest in a contested domain name, and despite Complainant’s claim to the contrary, it is not necessary for the Panel in the present UDRP proceeding to make a finding on the Complainant’s claim that the use of Complainant’s TAMIFLU trademark to attract Internet Users to a pornographic website is not an infringement of Complainant's TAMIFLU trademark.

The Panel finds that Complainant has proven the requirement of Policy, paragraph (a)(ii).

C. Registered and Used in Bad Faith

The Panel finds that Respondent registered and is using the contested domain name in bad faith.

The Panel finds Respondent has elected to provide false contact information, as reflected by the WHOIS information associated with the contested domain name. An inference that Respondent registered and is using the contested domain name in bad faith can be reached from the apparent decision, by the Respondent, to provide inaccurate contact information. See Oxygen Media LLC v. Primary Source, WIPO Case No. D2000-0362.

Respondent is using Complainant’s widely known TAMIFLU trademark to attract Internet users to a website featuring hardcore pornographic material. In light of the fact the <buy-tamiflu.name> domain name has no pornographic or erotic connotations, the Panel finds that Respondent's incorporation of the TAMIFLU trademark into the <buy-tamiflu.name> domain name in an effort to attract Internet Users to a commercially viable pornographic website is evidence Respondent registered and is using the contested domain name in bad faith. See Caledonia Motor Group Limited v. Amizon, WIPO Case No. D2001-0860 (“...the diversion of the Domain Name to a pornographic site and the subsequent random diversions to sites unrelated to the Respondent, are certainly consistent with the finding...that the Domain Name was registered and is being used in bad faith”).

Further, the Panel finds that Respondent likely registered the <buy-tamiflu.name> domain name with full knowledge of Complainant’s rights in the TAMIFLU trademark. Respondent’s awareness of Complainant's TAMIFLU trademark may be inferred because the mark became famous prior to Respondent’s registration of the contested domain name. See Kraft Foods (Norway) v. Wide, WIPO Case No. D2000-0911 (“the fact that Respondent [chose] to register a well known mark to which he has no connections or rights indicates that he was in bad faith when registering the domain name at issue”). The knowing and deliberate registration of another’s well-known trademark is in an effort to secure commercial gain is evidence of bad faith registration and use.

Complainant has proven the requirement paragraph 4(a)(iii) of the Policy.

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, <buy-tamiflu.name> be transferred to the Complainant.

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Gary J. Nelson
Sole Panelist

Dated: July 11, 2007