WIPO Domain Name Decision: D2007-0837

WIPO

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Hoffmann-La Roche Inc. v. MOLVIT GRUP SRL

Case No. D2007-0837

1. The Parties

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

The Respondent is MOLVIT GRUP SRL, Chisinau, Moldova.

2. The Domain Name and Registrar

The disputed domain name <tamifluonlinepharmacy.com> is registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 7, 2007. On June 8, 2007, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On June 11, 2007, 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. 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 June 14, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was July 4, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 5, 2007.

The Center appointed Susanna H.S. Leong as the sole panelist in this matter on July 18, 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 is Hoffmann-La Roche Inc., a leading manufacturer of pharmaceutical and diagnostic products. The Complainant is the registered trademark owner of the TAMILFLU mark for a pharmaceutical antiviral preparation in the United States since 1999. The TAMILFLU mark is also registered in numerous countries throughout the world.

The disputed domain name <tamifluonlinepharmacy.com> was registered by the Respondent on February 26, 2006.

5. Parties’ Contentions

A. Complainant

Identical or Confusingly Similar

The Complainant contends that the disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant contends that it is the registered owner of the trademark TAMIFLU in the United States of America since 1999 and that it has rights to the mark. The Complainant asserts that the TAMIFLU mark designates an antiviral pharmaceutical preparation, namely, a pharmaceutical product indicated for the treatment and prevention of influenza. The Complainant’s mark TAMIFLU has in the past years been extensively promoted, without limitation, in print advertisement in medical journals, promotional materials, packaging, medical informational materials, television advertising and direct mailings. Sales of the TAMIFLU pharmaceutical preparation are in the hundreds of millions of dollars in the United States of America since 2000, and sales worldwide are in the billions of dollars. In recent years, governments in many countries have decided to stockpile the Complainant’s TAMIFLU product against bird flu and the Complainant asserts that the TAMIFLU mark has become a famous mark in the United States of America and in many countries throughout the world. Therefore, the disputed domain name clearly alludes to the Complainant. The Complainant also asserts that it owns and has registered the domain name <tamiflu.com> through which the Complainant’s customers obtain information as to the TAMIFLU antiviral product manufactured and sold by the Complainant.

In view of the above, the Complainant contends that the Respondent’s domain name creates a strong likelihood of confusion as to the source, sponsorship, association or endorsement of the Respondent’s website by the Complainant. The Complainant points out that the Respondent’s domain name incorporates the whole of the Complainant’s mark with the addition of the words “online” and “pharmacy” but the Complainant contends that the addition of these words does nothing to detract from or disassociate the word TAMIFLU and the Complainant. The Complainant also points out that the Respondent’s website is selling a non-FDA approved version of the TAMIFLU drug which is illegal in the United States of America and that the website is selling TAMIFLU products without a prescription which is also illegal in the United States of America. Furthermore, the Respondent is using the Complainant’s TAMIFLU mark in a copyright notice as if it were a company name when it does not have the right to do so.

Rights or Legitimate Interests

The Complainant contends that the Respondent has no rights or legitimate interests in the domain name <tamifluonlinepharmacy.com> on the following grounds:

- That TAMIFLU is not a word and has no valid use other than in connection with the Complainant’s trademark;

- That the Complainant has not authorized the Respondent to use its trademark TAMIFLU or to incorporate the trademark into any domain name or trade name;

- That the Complainant has never granted the Respondent a license to use the TAMIFLU mark;

- That there is evidence that the disputed domain name is being used by the Respondent because of the goodwill created by the Complainant in the TAMIFLU mark;

- That based upon the Respondent’s website, it is clear that neither the Respondent nor its website has been commonly known by the domain name <tamifluonlinepharmacy.com>;

- That the Respondent’s appropriation and use of the Complainant’s famous trademark TAMIFLU in a domain name and in a trade name coupled with the use the mark in the copyright notices as it were a company name, the illegal sale of a non-FDA approved version of TAMIFLU into the United States of America without a prescription is a clear attempt to create and benefit from consumer confusion regarding the association between the Respondent’s activities and the Complainant’s bona fide business;

- That the Respondent is not using the domain name in connection with a bona fide offering of goods or services because the Respondent’s use of the Complainant trademark is infringing and cannot be considered bona fide;

- That there is no evidence that the Respondent is making a legitimate non-commercial or fair use of the disputed domain name without intent for commercial gain because it is clear that the Respondent is trading on the Complainant’s goodwill and is using the disputed domain name to solicit pharmaceutical orders without a license or authorization from the Complainant.

Registered and Used in Bad Faith

The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith based on the following evidence:

- That the Respondent’s true purpose in registering the domain name is to capitalize on the reputation of the Complainant’s TAMIFLU mark by diverting Internet users seeking the Complainant’s website to the Respondent’s own website so as to solicit orders for the Complainant’s TAMIFLU products;

- That the Complainant’s TAMIFLU mark is an invented and coined mark and that it has an extremely strong worldwide reputation;

- That there exists no relationship between the Respondent and the Complainant and that the Complainant has not given the Respondent the permission to use its famous TAMIFLU mark;

- That the Complainant would never authorize a non-FDA approved version of the TAMIFLU mark which is represented on the Respondent’s website to be on sale in the United States of America;

- That the only reasonable conclusion is the Respondent was aware of the TAMIFLU mark but has the bad faith intent to divert Internet users to the Respondent’s website all to the confusion of the public and the detriment of the Complainant;

- That by operating the website located at “www.tamifluonlinepharmacy.com”, the Respondent has intentionally attempted to attract for financial gain Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or the goods on the Respondent’s website.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, the Complainant must establish that each of the three following elements is satisfied:

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

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

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

Paragraph 4(a) of the Policy clearly states that the burden of proof lies with the Complainant to establish that all these three elements are satisfied in this proceeding.

Pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.

On the basis of the evidence introduced by the Complainant and in particular with regard to the content of the relevant provisions of the Policy, (paragraphs 4(a), (b), (c)), the Panel concludes as follows:

A. Identical or Confusingly Similar

The Complainant has produced substantial evidence to demonstrate that it has registered trademark rights in the mark TAMIFLU in the United States of America and in many countries throughout the world. The Panel finds that the Complainant has rights in the mark TAMIFLU.

In assessing the degree of similarity between the Complainant’s trademark and the disputed domain name, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements. The issue of degree of similarity between the Complainant’s mark and the disputed domain name is to be considered from the perspective of the average consumer of the goods or services concerned and in this case, the average consumer is the Internet user seeking to purchase or download information about the Complainant’s antiviral drug sold under the trademark TAMIFLU.

The disputed domain name comprises (a) an exact reproduction of the Complainant’s trademark TAMIFLU followed by (b) two English words “online” and “pharmacy” and finally (c) the top level domain suffix “.com” all in one continuous word. The Complainant’s mark has been reproduced in its entirety in the disputed domain name. The Panel accepts the Complainant’s contention that the addition of the two English words “online” and “pharmacy” do not provide additional specification or sufficient distinction from the Complainant or its trademark TAMIFLU. In fact, the Panel finds that the addition of the two English words serve to emphasize that information about the Complainant’s antiviral TAMIFLU drug is available at this website which increases the level of confusion of Internet users as Internet users may mistake the Respondent’s website whether as the Complainant’s official website or a website endorsed, sponsored or associated with the Complainant.

Accordingly, the Panel finds that the disputed domain name <tamifluonlinepharmacy.com> is confusingly similar to a trademark or service mark in which the Complainant has rights.

The Panel finds for the Complainant on the first part of the test.

B. Rights or Legitimate Interests

The burden of proof on this element lies with the Complainant. However, it is well established by previous UDRP Panel decisions that once a Complainant establishes a prima facie case that a respondent lacks rights or legitimate interests to a disputed domain name, the burden of proof shifts to the Respondent to rebut the Complainant’s contentions.

According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable 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; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Panel finds that the Complainant has made out a prima facie showing and notes that the Respondent in failing to submit a response, has not provided any evidence of the circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the domain name.

Based on the following reasons the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name:

1. The Respondent has not provided evidence of a legitimate use of the domain name or reasons to justify the choice of the word “tamifluonlinepharmarcy” in its business operations;

2. There was no evidence to show that the Complainant has licensed or otherwise permitted the Respondent to use its trademark or to apply for or use any domain name incorporating the trademark;

3. There is no indication that the Respondent is commonly known by the disputed domain name and/or is using the domain name in connection with a bona fide offering of goods or services;

4. There is no evidence to show that the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue; and

5. The Complainant and its trademark TAMIFLU enjoy a worldwide reputation with regard to its antiviral drug products. Consequently, in the absence of contrary evidence from the Respondent, the TAMIFLU trademark is not one that the Respondent could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant.

The Panel finds for the Complainant on the second part of the test.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith, namely:

(i) circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product.

The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that the Respondent has registered and used the disputed domain name in bad faith.

First, the Panel finds that the Complainant enjoys a worldwide reputation in its TAMIFLU mark and the antiviral drug sold under this trademark. In view of the severity of bird flu cases all over the world and the potential health risks posed, widespread publicity has been made about the Complainant’s TAMIFLU antiviral drug as a solution to the disease. Many governments have stockpiled the drug as a precaution. Furthermore, in this day and age of the Internet and advancement in information technology, the reputation of brands and trademarks transcend national borders. Therefore, the Panel finds that it is not conceivable that the Respondent would not have had actual notice of the Complainant’s trademark right at the time of the registration of the domain name. As indicated above, in the absence of contrary evidence from the Respondent, the Panel finds that the TAMIFLU trademark is not one that the respondent could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant. Thus, it would have been pertinent for the Respondent to provide an explanation of its choice in the disputed domain name. However, the Respondent has chosen not to respond to the Complainant’s allegations in the Complaint and this leads the Panel to conclude that the disputed domain name was registered by the Respondent in bad faith with the intent to create an impression of an association with the Complainant and its products and services.

Second, the Complainant has also adduced evidence to prove that by using a confusingly similar disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website which purports to sell a non-FDA approved version of the TAMIFLU antiviral drug. Given the worldwide reputation and the fame of the Complainant’s TAMIFLU trademark, the compelling conclusion is that the Respondent, by choosing to register and use a domain name which is confusingly similar to the Complainant’s widely known and distinctive trademark, intended to ride on the goodwill of the Complainant’s trademark in an attempt to exploit, for commercial gain, Internet traffic destined for the Complainant. Potential partners and end users are led to believe that the website “www.tamifluonlinepharmacy” is either the Complainant’s site or the site of official authorized partners of the Complainant, which it is not. Consequently, the Respondent has through the use of a confusingly similar domain name created a likelihood of confusion with the Complainant’s TAMIFLU trademark that may cause Internet users to conclude that the Respondent’s website is in one way or the other associated or connected with the Complainant’s. In the absence of evidence to the contrary and rebuttal from the Respondent, the choice of the disputed domain name and the conduct of the Respondent as far as the website on to which the domain name resolves are indicative of registration and use of the disputed domain name in bad faith.

The Panel finds for the Complainant on the third part of the test.

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 <tamifluonlinepharmacy.com> be transferred to the Complainant.

Susanna H.S. Leong
Sole Panelist

Dated: August 1, 2007