WIPO Domain Name Decision: D2007-1708

WIPO

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

F. Hoffmann- La Roche AG v. PrivacyProtect.org

Case No. D2007-1708

1. The Parties

The Complainant is F. Hoffmann-La Roche AG, Grenzacherstrasse, Basel, of Switzerland, represented by F. Hoffmann-La Roche AG, Switzerland.

The Respondent is PrivacyProtect.org, Domain Admin, Moergestel, Netherlands.

2. The Domain Name and Registrar

The disputed domain name <buytamiflu.net> is registered with EstDomains, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 20, 2007. On November 22, 2007, the Center transmitted by email to EstDomains, Inc. a request for registrar verification in connection with the domain name at issue. On November 25, 2007, EstDomains, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on December 4, 2007. The Center verified that the Complaint together with the amendment to 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 December 4, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was December 24, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 28, 2007.

The Center appointed Tan Tee Jim, S.C. as the sole panelist in this matter on January 8, 2008. 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 field of pharmaceuticals and diagnostics. The Complainant has global operations in more than 100 countries.

TAMIFLU designates an antiviral pharmaceutical preparation, namely a product against flu. The Complainant is the registered proprietor of the TAMIFLU trademark in over 100 countries worldwide. The registrations include International Registration Nos. 713623 and 727329, claiming a priority date of May 4, 1999.

The disputed domain name is <buytamiflu.net>.

The Respondent operates a website using the above domain name. The website contains a search engine with sponsored links.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

(1) the disputed domain name is confusingly similar to the Complainant’s mark TAMIFLU because it incorporates the mark in its entirety;

(2) the addition of the word “buy” does not sufficiently distinguish the disputed domain name from the Complainant’s mark as it may suggest that the Respondent’s website is a location where a consumer may buy TAMIFLU products;

(3) because TAMIFLU has been referred to in many mass media and various Governments have decided to stockpile TAMIFLU against bird flu, the trademark’s notoriety will increase the likelihood of confusion;

(4) the Respondent does not have rights or legitimate interests in respect of the disputed domain name pursuant to the Policy, paragraph 4(a)(ii) because of the following reasons:

(a) the Complainant owns the exclusive rights for TAMIFLU;

(b) the Complainant did not grant a licence, permission or authorization to the Respondent to use TAMIFLU in its disputed domain name;

(d) the Respondent’s website is a search engine with sponsored links;

(e) the Respondent’s use of the TAMIFLU mark is to benefit from the reputation of the trademark TAMIFLU and illegitimately trade on its fame for commercial gain and profit; and

(5) the disputed domain name was registered and is being used in bad faith for the following reasons:

(a) at the time of registration, the Respondent, no doubt, had knowledge of the Complainant’s well- known TAMIFLU product/mark;

(b) the Respondent is using the website to intentionally attempt to attract Internet users to the Respondent, by creating a likelihood of confusion with the Complainant’s mark as to the source, affiliation and endorsement of the Respondent’s website or of the products or services posted on or linked to the Respondent’s website; and

(c) the Respondent’s use of the domain name will intentionally mislead consumers and confuse them so as to attract them to other websites making them believe that the websites behind those links are associated or recommended by the Complainant.

B. Respondent

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

6. Discussion and Findings

A. Elements of the Policy

Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present in order to succeed in the Complaint:

(1) the disputed domain name is identical with or confusingly similar to a trademark in which the Complainant has rights; and

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

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

In accordance with paragraph 14(b) of the Rules, if the Respondent does not submit a Response, the Panel shall, in the absence of exceptional circumstances, decide the dispute based on the Complaint.

(1) Identical or Confusingly Similar

The Complainant has provided prima facie evidence of its registrations in relation to its TAMIFLU trademarks in class 5 (covering pharmaceutical antiviral products) in several countries, such as Albania, Austria, China, France, Vietnam, among others. On the basis of these registrations, the Panel is satisfied that the Complainant has rights in the trademarks.

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks. Apart from incorporating the Complainant’s mark in its entirety, the disputed domain name also incorporates the word “buy”. The word “buy” is a generic term and based on previous Panel decisions, the inclusion of such a word does not sufficiently distinguish the disputed domain name from the Complainant’s mark (see, for example, F. Hoffmann-La Roche AG v. Digi Real Estate Foundation, WIPO Case No. D2007-0946 (“buyxenical.com”); F. Hoffmann-La Roche AG v. Brave, WIPO Case No. D2006-1603 (<buyxenical.net>); and Dell Inc. v. DI_4747995, WIPO Case No. D2007-0803 (<buydellware.info>, amongst other domain names). In the Panel’s view, the inclusion of the term “buy” in the disputed domain name increases the likelihood of confusion in the present case because it implies that it is a website where Internet users can purchase TAMIFLU products (see also F. Hoffmann- La Roche AG v. Digi Real Estate Foundation, WIPO Case No. D2007-0946 which concerns <buyxenical.com>).

The Panel finds for the Complainant in relation to the first element.

(2) Rights or Legitimate Interests

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

(1) the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services before any notice to the Respondent of the dispute; or

(2) the Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or

(3) the Respondent is making a legitimate non-commercial 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.

As the Respondent failed to file a Response, the Panel does not have before it any evidence of the circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances which might reasonably be said to give to the Respondent a right to or a legitimate interest in the disputed domain name. Previous decisions under the Policy have found it sufficient for a complainant to make a prima facie showing of its assertion in the event of a respondent’s default.

The Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name for the following reasons:

(1) the Complainant has provided evidence of its worldwide registrations and use of its TAMIFLU trademark in relation to antiviral pharmaceutical products and, consequently, in the absence of contrary evidence from the Respondent, the said trademark and the term TAMIFLU are not those that traders could legitimately adopt other than for the purpose of creating an erroneous impression of an association with the Complainant and/or its TAMIFLU products;

(2) there is no indication that prior to the registration of the disputed domain name in November 2007, the Respondent is commonly known by the term “tamiflu” as an individual, business or organization or has been using the term in connection with a bona fide offering of goods and services;

(3) the Respondent has not provided any evidence of legitimate use of the disputed domain name or reasons to justify the choice of domain name and/or the term “tamiflu” in the disputed domain name; and

(4) there is also no evidence that the Complainant has licensed or otherwise authorized the Respondent to use any of its TAMIFLU trademark or to apply for or use any domain name incorporating the term “tamiflu”.

The Panel therefore finds for the Complainant in relation to the second element.

(3) 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 disputed domain name in bad faith, namely,

(1) the circumstances indicating that the respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the omplainant 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

(2) 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

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

(4) the respondent has, by using the domain name, intentionally attempted to attract, for commercial gain, Internet users to his 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 or service on the respondent’s website or location.

By failing to file a Response, the Respondent has failed to invoke any of the circumstances that could demonstrate that the Respondent did not register and use the disputed domain name in bad faith and to assist the Panel in this regard.

The website using the disputed domain name contains a search engine with sponsored links. It provides an online pharmacy which offers “Tamiflu” and various other drugs which directly compete with the Complainant. It is apparent that the use of the disputed domain name is an attempt to attract, for commercial gain, Internet users to the Respondent’s site, by creating a likelihood of confusion with the Complainant’s mark. Further, the use of the disputed domain name is likely to confuse or mislead Internet users that the Respondent’s site is sponsored or endorsed by the Complainant or is affiliated to the Complainant.

Additionally, the choice of such an inventive and uncommon word as “Tamiflu” for use in the same field as the Complainant’s could not have been coincidental or unintentional. Even if this were not the case, the Panel accepts that the mark TAMIFLU had already achieved notoriety through the mass media when the Respondent registered the disputed domain name in November 2007. It is thus probable that the Respondent knew or at least should have known of the Complainant’s TAMIFLU mark when it registered the disputed domain name in November 2007 and chose or used the mark to attract, for commercial gain, Internet users to its site by creating a likelihood of confusion with the Complainant’s mark or to confuse or mislead Internet users that the Respondent’s site is sponsored or endorsed by the Complainant or is affiliated to the Complainant.

The Panel therefore finds for the Complainant in relation to the third element.

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 <buytamiflu.net> be transferred to the Complainant.

Tan Tee Jim, S.C.
Sole Panelist

Dated: January 22, 2008