WIPO Domain Name Decision: D2006-0451

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.

Case No. D2006-0451

1. The Parties

The Complainant is F. Hoffmann-La Roche AG, Basel, Switzerland, represented by an internal representative.

The Respondent is Macalve e-dominios S.A., Heredia, Costa Rica.

2. The Domain Name and Registrar

The disputed domain name <all-about-tamiflu.com> is registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 11, 2006. On April 13, 2006, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On date of registrar verification, Go Daddy Software 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 April 18, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was May 8, 2006. The Response was filed with the Center on May 2, 2006.

The Center appointed Torsten Bettinger as the sole panelist in this matter on May 10, 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 Complainant is together with its affiliated companies one of the world’s leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics having global operations in more than 100 countries. The Complainant owns a number of trademark registrations protecting the mark TAMIFLU in numerous countries worldwide, inter alia, international registration No. 713623 TAMIFLU, registered on June 3, 1999, in class 5 and international registration No. 727329 TAMIFLU & device, registered on February 7, 2000, in class 5.

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

The Complainant submitted screen shots of a Go Daddy parking website at “www.all-about-tamiflu.com” containing various links such as “Bird Flu Information”, “Bird Flu Virus” etc. which redirect Internet users to commercial and non-commercial websites offering for sale pharmaceuticals or informing about bird flu and related matters.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that each of the elements specified in paragraph 4(a) of the Policy have been satisfied.

In reference to the element in paragraph 4(a)(i) of the Policy, the Complainant argues that the phrase “all about” is descriptive and therefore does not eliminate the similarity between the Complainant’s trademark TAMIFLU and the disputed domain name.

In reference to the element in paragraph 4(a)(ii) of the Policy, the Complainant contends that none of the situations described in paragraph 4(c) of the Policy can be established in this case. The Complainant states that the Respondent has no authorization or license to use the TAMIFLU trademark in its domain name and that the use of the Complainant’s trademark in order to redirect Internet users third parties is not a use in connection with a bona fide offering of goods and services pursuant to Policy paragraph 4(c)(i), nor a legitimate non-commercial or fair use pursuant to Policy paragraph 4(c)(iii).

In reference to the element in paragraph 4(a)(iii) of the Policy, the Complainant asserts that there is no reason for the Respondent to use the Complainant’s mark in the disputed domain name other than to use it to attract Internet users to the Respondent’s website for commercial gain. The Respondent alleges that by using TAMIFLU, the Respondent is creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website and the products offered on the website.

B. Respondent

The Respondent does not comment on the issue of whether the disputed domain name is confusingly similar to the Complainant’s trademark but disputes that it has no right or legitimate interest in the disputed domain name and that it registered and uses the disputed domain name in bad faith. In support of these assertions the Respondent argues that:

- the website available at the disputed domain name is not commercially used and that the content on the website is made available by the Internet Service Provider Go Daddy.com;

- it is legitimate to use the disputed domain name to show Internet users the benefits of the product Tamiflu;

- the mere registration of the disputed domain name does not justify the conclusion that the Respondent will make a bad faith use of it;

- the website available at the disputed domain name is inactive and therefore the Complainant has not established bad faith use of the disputed domain name.

6. Discussion and Findings

A. Identical or Confusingly Similar

The test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the domain name is used or other marketing and use factors, usually considered in trademark infringement (See Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-l698; Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110; Dixons Group Plc v. Mr. Abu Abdullaah, WIPO Case No. D2001-0843; AT&T Corp. v. Amjad Kausar, WIPO Case No. D2003-0327; BWT Brands, Inc. and British American Tobacco (Brands), Inc. v. NABR, WIPO Case No. D200l-l480; Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D200l-0505).

The disputed domain name wholly incorporates the Complainant’s famous trademark TAMIFLU, used in connection with drugs. The fact that the words “all about” are added to the Complainant’s trademark does not eliminate the similarity between the Complainant’s trademark and the disputed domain name, as “all about” is a descriptive component of the disputed domain name. In numerous cases, it has been held that a domain name that wholly incorporated a complainant’s registered mark may be sufficient to establish confusing similarity for purposes of the Policy despite the addition of descriptive words to such marks.

It is also well established that the specific top level of a domain name such as “.com”, “.org” or “.net” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429).

The Panel thus finds that the domain name <all-about-tamiflu.com> is confusingly similar to the trademark in which the Complainant has exclusive rights and that the Complainant has established the requirement of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy requires the Complainant to prove that the Respondent has no right or legitimate interest in the disputed domain name. However, it is consensus view among Panelists that if the Complainant makes a prima facie case that the Respondent has no rights or legitimate interests, and the Respondent fails to show one of the three circumstances under paragraph 4(c) of the Policy, then the Respondent may lack a legitimate interest in the domain name.

The Complainant asserted that the Respondent has neither a license nor any other permission to use the Complainant’s famous trademark TAMIFLU. The Panel finds that the Complainant has made a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name which wholly incorporates the Complainant’s mark.

The Respondent has not provided evidence of the circumstances specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the domain name.

The Respondent is not a reseller of the Complainant’s TAMIFLU products, but is using the Complainant’s trademark to divert Internet users to a parking website of the Internet Service Provider Go Daddy with links to commercial websites offering pharmaceuticals and health related products as well as non-commercial websites informing about bird flu and related topics.

The use of the domain name as a parking website is not a bona fide non-commercial use pursuant to paragraph 4(c)(iii) of the Policy, even if the content on the parking website available at the disputed domain name is not developed by the Respondent but provided by the Internet Service Provider Go Daddy.

Further, nothing in the record suggests that the Respondent is making any other legitimate non-commercial use of the domain name or registered the domain name as a descriptive, non-source identifying domain name in order to inform about the Complainant’s product or related matters.

Under these circumstances, the Panel takes the view that the Respondent has no rights or legitimate interests in the domain name and that the requirement of paragraph 4(a)(ii) is also satisfied.

C. Registered and Used in Bad Faith

The Panel is also convinced that the Respondent registered and has been using the domain name in bad faith.

The Complainant’s pharmaceutical TAMIFLU is known world wide. It is therefore inconceivable that the Respondent registered the domain name unaware of the Complainant’s rights in its TAMIFLU marks.

The Respondent registered a domain name which is except for the descriptive term “all about” identical to the Complainant’s trademark.

Even though the Respondent’s website is merely “parked”, the disputed Domain Name is in use within the meaning of paragraph 4(a)(iii) of the Policy. At present, it resolves to a page that offers links to sites of other companies and organisations, including the Complainant’s competitors (See Staples, Inc., Staples The Office Superstore, Inc., Staples Contract and & Commercial, Inc. v. John Morgan, WIPO Case No. D2004-0537 (“the Panel is persuaded that Respondent’s registration and use of the Disputed Domain Name for redirecting Internet users, particularly customers and potential customers of Complainants, from Complainant’s website to the website of [Respondent], a company which directly competes with Complainants, constitutes bad faith and use. Prior WIPO decisions support this conclusion. See also Edmunds.com, Inc. v. Ult Search, Inc., WIPO Case No. D2001-1319 (February 1, 2002) (“registration and use of a domain name to redirect Internet users to websites of competing organizations constitutes bad faith registration and use under the Policy.”

Further, as already mentioned, nothing in the record suggests that the Respondent is making any other legitimate non-commercial use of the domain name or registered the domain name as a descriptive, non-source identifying domain name in order to inform about the Complainant’s product or related matters.

Under these circumstances, the Panel finds that the Respondent registered and is using the domain name <all-about-tamiflu.com> in bad faith and that the requirement of paragraph 4(a)(iii) of the Policy is also satisfied.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the domain name <all-about-tamiflu.com> be transferred to the Complainant.

Torsten Bettinger
Sole Panelist

Dated: May 28, 2006