WIPO Domain Name Decision: D2005-1288

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Hoffmann-La Roche Inc. v. WhoisGuard

Case No. D2005-1288

1. The Parties

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

1.2 Respondent is WhoisGuard, Westchester, California, United States of America.

2. The Domain Name and Registrar

2.1 The disputed domain name <tamiflu.net> is registered with eNom.

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 12, 2005. On December 14, 2005, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On December 14, 2005, eNom transmitted by email to the Center its verification response confirming that 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”).

3.2 In accordance with the Rules, Paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on December 21, 2005. In accordance with the Rules, Paragraph 5(a), the due date for the Response was January 10, 2006. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 12, 2006.

3.3 The Center appointed Jay Simon as the sole Panelist in this matter on January 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

4.1 Complainant is the United States subsidiary of one of the world’s largest pharmaceutical companies, the parent company being located in Basel, Switzerland.

4.2 Complainant, in its own right, registered the trademark TAMIFLU in the United States Patent and Trademark Office, Reg. No. 2,439,305, registered as of March 27, 2001, for a pharmaceutical antiviral preparation. Complainant also has a fanciful registration for the same mark, Reg. No. 2,576,662, registered as of June 4, 2002.

4.3 Complainant refers to itself, its parent and related companies collectively as Roche, and has submitted a certificate, International Registration No. 713,623 for TAMIFLU in the name of its parent company. This Panel notes that in the Complaint, Complainant is listed as Hoffmann-La Roche Inc., a corporation duly organized under the laws of the State of New Jersey with offices in Nutley, New Jersey.

4.4 The pharmaceutical preparation known as TAMIFLU is an antiviral drug for the treatment of influenza and has been sold in the United States under Complainant’s mark at least since November 1999. With the advent of each influenza season, and particularly the concern about avian influenza, Complainant’s drug has received worldwide attention as a possible treatment for avian influenza. As a consequence many news articles in international newspapers and radio broadcasting stations have mentioned TAMIFLU and associated it with its manufacturers, Complainant, or at least its parent and related companies.

4.5 Complainant’s parent company registered the domain name <tamiflu.com> on June 28, 1999, updated as of May 5, 2005.

4.6 Respondent registered the disputed domain name on October 18, 2005.

4.7 Complainant attempted to contact Respondent by email and by FedEx letter, the latter being returned as undeliverable because of an incorrect address. In the letter, Complainant advised Respondent that it was infringing Complainant’s trademark rights and requested transfer of the disputed domain name to Complainant. An email exchange followed between counsel for Complainant and the technical contact for Respondent. The contact for the disputed domain name stated that the disputed domain name was displayed for 10 seconds after which the site redirected internet users to another site that sells TAMIFLU medication on-line and that the contact is not responsible for the site to which users are redirected.

4.8 Respondent did not file a Response in these proceedings and was notified of its default by the Center.

5. The Parties Contentions

A. Complainant

5.1 Complainant contends that it has trademark rights in the mark TAMIFLU by virtue of its registration in the United States Patent and Trademark Office and the international registration of the mark by its parent company.

5.2 Complainant further contends that the disputed domain name is identical or confusingly similar to the mark in which Complainant has rights, i.e., the disputed domain name incorporates Complainant’s mark in its entirety adding only the gTLD “.net”.

5.3 Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name and has not been commonly known by that name.

5.4 Complainant contends that it has not authorized Respondent to use Complainant’s mark or to incorporate the mark into any domain name. Further, Complainant has not licensed Respondent to use the TAMIFLU mark and Complainant’s registrations – trademark and domain name – pre-date Respondent’s registration of the disputed domain name.

5.5 Complainant further contends that Respondent has not used the disputed domain name in a bona fide offering of goods and services, but has used Complainant’s mark, as incorporated into the disputed domain name, to divert internet users to an unrelated website that sells the pharmaceutical product to the public without a prescription.

5.6 Complainant further contends that Respondent is not making a legitimate, non-commercial or fair use of the disputed domain name.

5.7 Complainant contends that Respondent registered and is using the disputed domain name in bad faith. Complainant contends that Respondent seeks to capitalize on the reputation of Complainant’s mark – which is a coined term and has no meaning – by redirecting Internet users to a website that solicits orders for Complainant’s prescription drug.

5.8 Complainant requests that the disputed domain name should be transferred to Complainant.

B. Respondent

5.9 Respondent has failed to respond to the Complaint and has not otherwise actively participated in these proceedings.

6. Discussion and Findings

6.1 The Policy as affected by the Rules and the Supplemental Rules provides specified remedies to trademark owners against registrants of domain names where the owner of the mark (Complainant) proves each of the following elements:

(a) the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

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

6.2 Complainant has the burden of proof, by a preponderance of the evidence, respecting each element of Paragraph 6.1 above.

6.3 Respondent, having failed to respond in these proceedings, is in default, and in accordance with Paragraph 14(b) of the Rules, “the Panel shall draw such inferences… as it considers appropriate”.

6.4 Complainant has sufficient rights in the mark TAMIFLU as evidenced by its registration in the United States Patent and Trademark Office. Whether Complainant has rights in the international registration is not for this Panel to decide; the Panel notes that Complainant’s parent company is not a party to this proceeding. There is no evidence that Complainant controls the international mark, and the international registration is not necessarily pertinent to these proceedings. See, generally, Staples, Inc., Staples The Office Superstore, Inc., and Staples Contract and Commercial, Inc. v. SkyLabs Corporaton and DL Enterprises, WIPO Case No. D2004-0220.

A. Identical or Confusingly Similar (Paragraph 4(a)(i) of the Policy)

6.5 Complainant’s mark is an invented term and has received worldwide recognition. The disputed domain name incorporates the entirety of the mark adding only the gTLD suffix “.net.” This addition does nothing to distinguish the disputed domain name from Complainant’s well known trademark. This Panel accepts the decision in EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047 that incorporation of the entirety of a mark in which Complainant has rights amounts to confusing similarity between the mark and the disputed domain name.

B. Lack of Rights or Legitimate Interests (Paragraph 4(a)(ii) of the Policy)

6.6 Paragraph 4(c) of the Policy lists three, non-exclusive methods for determining whether a respondent has rights or legitimate interests in a disputed domain name. Nevertheless, the burden of demonstrating a respondent’s lack of rights or legitimate interests rests with a complainant. However, where a complainant has made the necessary assertions and has provided evidence therefore, that complainant has made a prima facie case and it is for the respondent to come forward with evidence of its rights or legitimate interests, if such evidence exists. In this case, Respondent has failed to rebut Complainant’s prima facie case, and Respondent has failed to present any evidence of its rights or legitimate interests in the disputed domain name. Such failure to come forward by Respondent is tantamount to admitting the truth of Complainant’s case. See Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624.

6.7 Complainant asserts that it has not licensed or otherwise authorized Respondent to use Complainant’s TAMIFLU mark. There is no evidence to the contrary. Nor is there evidence that Respondent was commonly known by the mark prior to these proceedings. Indeed, Complainant’s mark is an invented term, having no meaning, and it is highly unlikely (given the worldwide fame of Complainant’s mark) that Respondent stumbled upon the mark by happenstance. This position is reinforced by the fact that Complainant’s trademark registration and the parent company’s domain name registration pre-date Respondent’s registration of the disputed domain name.

6.8 Respondent’s use of the disputed domain name is neither fair use nor non-commercial use. Rather, Respondent’s use of the disputed domain name is for redirecting internet users to a website where the antiviral drug may be purchased without a prescription and contrary to United States law. Whether or not Respondent profits directly from the redirection of the disputed domain name to a commercial website is not determinative. The fact is that someone other than Complainant is profiting from the use of the disputed domain name – a name that is confusingly similar to Complainant’s mark. Consequently, the for profit nature of the use of the disputed domain name may be imputed to Respondent. Also, it is simply not reasonable to assume that Respondent is merely providing a public service when redirecting internet users to a particular commercial website.

6.9 No claim for bona fide use can be made when a respondent uses a disputed domain name confusingly similar to an invented mark in which a complainant has rights and uses that disputed domain name to redirect internet users to a commercial website selling the very same product identified by the mark. To do otherwise would allow respondents to trade off the goodwill of trademark owners with impunity. This Panel is aware of the decision and reasoning in Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784, and cases cited therein, and the reasoning in that case is equally applicable to the facts of this case.

C. Registration and Use in Bad Faith (Paragraph 4(a)(iii) of the Policy)

6.10 Paragraph 4(b) of the Policy indicates several non-exclusive methods for showing bad faith registration and use of a disputed domain name.

6.11 With the widespread fame of the TAMIFLU mark it is simply not credible to believe that Respondent registered the disputed domain name without knowledge of Complainant’s mark. Only someone with knowledge of the mark – considering the fact that the mark is an invented term – could have registered the disputed domain name. Thus, Respondent registered the disputed domain name in bad faith.

6.12 Regarding the use of the disputed domain name, Paragraph 4(b)(iv) of the Policy is instructive. This Panel believes that the disputed domain name was intentionally registered and used to attract customers for commercial gain to a website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of a website or a product on that website. The fact that the website offering the antiviral drug is automatically accessed by inputting the disputed domain name makes the latter website, for all intents and purposes, the website of Respondent. Thus, this Panel finds that the disputed domain name was used in bad faith.

7. Decision

7.1 For all the foregoing reasons, in accordance with Paragraph 4(a) of the Policy and Paragraph 15 of the Rules, this Panel orders that the domain name <tamiflu.net> be transferred to Complainant.

Jay Simon
Sole Panelist

Dated: February 1, 2006