ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. Whois Protected
Case No. D2009-1569
1. The Parties
1.1 The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, (the “Complainant”) internally represented.
The Respondent is Whois Protected, of VCN - Whois Protection Service of Panama City, Panama (the “Respondent”).
2.1 The disputed domain name (the “Domain Name”) is registered with Key-Systems GmbH dba domaindiscount24.com. (the “Registrar”).
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 23, 2009. On November 24, 2009, the Center transmitted by email to Key-Systems GmbH dba domaindiscount24.com a request for registrar verification in connection with the disputed domain name. On November 26, 2009, Key-Systems GmbH dba domaindiscount24.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 sent an email communication to the Complainant on November 25, 2009 quering the Complainant of the correct spelling of the domain name. The Complainant filed an amendment to the Complaint on that same day. The Center verified that the Complaint and the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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”).
3.2 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 November 30, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was December 20, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 21, 2009.
3.3 The Center appointed Ike Ehiribe as the sole panelist in this matter on December 28, 2009. 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 paragraph 7 of the Rules.
4.1 The Complainant, F.Hoffman – La Roche AG is a company duly organized under the laws of Switzerland, and together with its affiliated companies is one of the world’s leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics and having global operations in more than one hundred countries. The Complainant is the owner and holder of the trademark TAMIFLU which is registered in a large number of countries worldwide as is demonstrated by International Registration Certificate Nos 713623 and 727329, with a priority date of May 4, 1999.
4.2 The trademark TAMIFLU designates an antiviral pharmaceutical preparation, namely a product against flu.
4.3 The Respondent according to the Whois database registered the disputed Domain Name < tamiflu-kaufen.org> on November 15, 2009, with the Registrar known as Key-Systems GmbH dba domaindiscount24.com.
5. Parties’ Contentions
5.1 The Complainant contends that the disputed Domain Name is confusingly similar to the Complainant’s trademark in so far as it incorporates it’s trademark TAMIFLU in its entirety. The Complainant submits that the addition of a hyphen (-) followed by the generic term “kaufen” (to buy in German language) does not sufficiently distinguish the disputed Domain Name from the Complainant’s trademark.
5.2 The Complainant asserts that since the Complainant’s trademark, TAMIFLU has been referred to in the past months in the mass media in relation to the outbreak of swine flu disease; the trademark’s notoriety will increase the likelihood of confusion.
5.3 The Complainant further relies on the fact that the Complainant’s use and registration of the trademark TAMIFLU, since 1999, predates the Respondent’s registration of the disputed Domain Name, to conclude that the disputed domain name must be and will continue to be confusingly similar to the Complainant’s pre-existing trademark.
5.4 The Complainant further contends that as the Complainant owns exclusive rights for the trademark TAMIFLU, the Respondent has never been granted any licence, permission, authorization or consent to use the trademark in the disputed Domain Name.
5.5 The Complainant points out that it is obvious that the Respondent uses the disputed Domain Name for illegitimate commercial gain and with the purpose of capitalizing on the fame of the Complainant’s trademark TAMIFLU. In this regard the Complainant asserts that the disputed Domain Name directs to a webpage offering and or selling among others the Complainant’s products. The Respondent therefore relies on the decision in Hoffmann-La Roche Inc. v. Viagra Propecia Xenical & More Online Pharmacy, WIPO Case No. D2003 0793 to argue that it is evident that the Respondent is not making a legitimate non- commercial or fair use of the disputed Domain Name.
5.6 With reference to registration and use in bad faith, the Complainant submits that the Respondent registered the disputed Domain Name in bad faith since the Respondent, no doubt, had knowledge of the Complainant’s well - known product and trademark TAMIFLU. The Complainant in this regard relies on the decision of Hoffman – La Roche Inc. v. WhoisGuard, WIPO Case No. D2005 1288.
5.7 The Complainant also asserts that the disputed Domain Name is also being used in bad faith as the Respondent is intentionally attracting Internet users to their website by creating a likelihood of confusion with the Complainant’s well-known trademark, including a picture of the packaging, as the source, affiliation and endorsement of the Respondent’s website or of products or services posted on or linked to the Respondent’s website. In this regard, the Complainant also relies on the decision in Pfizer Inc.v. jg aka Josh Green, WIPO Case No. D2004-0784 to assert that bad faith use is established when the Respondent is found to be using the disputed Domain Name as a forwarding address to a for-profit on-line pharmacy.
5.8 The Complainant requests a decision that the disputed Domain Name be transferred to the Complainant.
5.9 The Respondent did not reply to the Complainant’s contentions and is in default. Therefore, in accordance with paragraphs 14(a) and (b) of the Rules the Panel
shall draw inferences as it considers appropriate from the Respondent’s default.
6. Discussion and Findings
6.1 Under paragraph 4(a) of the Policy, to succeed in this administrative proceeding the Complainant must prove: (i) that the Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith
6.2 As expressly stated in the Policy, the Complainant must establish the existence of each of the three elements in the proceedings.
A. Identical or Confusingly Similar
6.3 The Panel finds on the facts as submitted by the Complainant and unchallenged by the Respondent that the disputed Domain Name is no doubt confusingly similar to the well-known international trademark and name TAMIFLU owned exclusively by the Complainant. In essence, the disputed Domain Name incorporates the Complainant’s trademark in its entire entirety. The Panel is satisfied that as the Complainant contends, the addition of a hyphen and the generic term “Kaufen” does not sufficiently distinguish the disputed Domain Name from the Complainant’s trademark. The Panel also finds that the addition of the gTLD suffix, “org” to the disputed Domain Name does not sufficiently distinguish the disputed Domain Name, either.
6.4 The Panel in this regard relies on two decisions in: (i) F.Hoffmann –La Roche AG v. PrivacyProtect.org Domain Admin and Mark Sergijenko, WIPO Case No. D2007-1854 and (ii) Lily ICOS LLC v. John Hopking/Neo net Ltd., WIPO Case No. D2005-0694, where other Panelists in cases involving the infringement of trademarks of popular and well- known pharmaceutical products, have held that a user of a domain name cannot avoid likely confusion by appropriating another’s entire trademark and adding descriptive or non-descriptive words to it.
6.5 In the circumstances, the Panel finds that the Complainant has established that the disputed Domain Name is confusingly similar to the Complainant’s trademark in which it has exclusive rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
6.6 The Panel finds as a fact that the Respondent has failed to provide any evidence or circumstances required to establish that it has rights or legitimate interests in the disputed Domain Name within the ambit of paragraph 4(c) of the Policy. The Complainant submits that the Respondent does not possess any licence, consent or authority permitting the use of the trademark TAMIFLU or in a domain name. The Complainant asserts that the Respondent is using the disputed Domain Name for illegitimate commercial or financial gain as the disputed Domain Name directs to a webpage offering and or selling products of the Complainant such as VIAGRA together with other products directly competing with the Complainant’s products. The Complainant further submits that the Respondent’s only reason for registering the disputed Domain Name is to benefit from the world wide popularity of the trademark TAMIFLU and to illegitimately trade on its reputation for commercial gain and profit.
6.7 The Panel finds that these are assertions adequately substantiated by documentary evidence which the Respondent has failed to controvert. The Panel accordingly, draws adverse inferences from the Respondent’s failure or refusal to do so. The Panel also finds support from the decision cited by the Complainant in the case of Hoffmann- La Roche Inc. v. Viagra Propecia Xenical & More Online Pharmacy Supra to hold that it is manifestly obvious that the Respondent is not making a legitimate non-commercial or fair use of the disputed Domain Name in so far as the disputed Domain Name directs to a webpage offering pharmaceutical products of the Complainant and the Complainant’s competitors for sale.
6.8 The Panel therefore finds that the Complainant has satisfied the requirement that the Respondent has no rights or legitimate interests in the disputed Domain Name in accordance with paragraph 4(a)(ii) of the Policy.
6.9 As regards bad faith registration, the Panel finds that the Respondent registered the disputed Domain Name in bad faith. The Panel has taken a number of factors into account in arriving at this conclusion. First, is that the Respondent ought to have known that the Complainant has held and owned exclusive rights in the trademark TAMIFLU since 1999 before seeking to register the disputed Domain Name in November 2009; a well-known international trademark designating an antiviral pharmaceutical preparation which in the recent past months has attracted considerable mass media commentary since the outbreak of swine flu disease. Secondly, the refusal of the Respondent to transfer the disputed Domain Name after being notified of the commencement and existence of the pending administrative proceeding in this matter. Thirdly, the fact that the disputed Domain Name directs to a webpage offering for sale pharmaceutical products of the Complainant and the Complainant’s competitors.
6.10 As has been previously observed by other Panelists, it is quite clear in the circumstances of this case, that not only did the Respondent have the Complainant’s trademark in mind when the disputed Domain Name was registered, but also, the confusion that would no doubt follow in the minds of Internet users and on-line consumers to divert them to the Respondents website for illegitimate commercial gain. See in this regard, F. Hoffmann-La Roche AG v. PrivacyProtect.org Domain Admin and Mark Sergijenko Supra. See also the cases of Hoffmann-La Roche Inc. v. WhoisGuard Supra and Pfizer Inc.v.jg aka Josh Green Supra cited by the Complainant.
6.11 The Panel therefore finds that the Complainant has also established the finding of bad faith use and registration within the ambit of paragraph 4(b)(iv) of the Policy.
7.1 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 be transferred to the Complainant forthwith.
Dated: January 11, 2010.