The Complainant is F. Hoffmann-La Roche AG, of Basel, Switzerland internally represented.
The Respondent is PrivacyProtect.org/ Catch4 Technologies, of Netherlands and of Delaware, United States of America, respectively.
The disputed domain name <tamiflu-kaufen.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 15, 2009. On December 15, 2009, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain name. On December 17, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 21, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on December 22, 2009. 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” 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”).
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 22, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was January 11, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 13, 2010.
The Center appointed Marie-Emmanuelle Haas as the sole panelist in this matter on January 29, 2010. 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.
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 and having operations in more than 100 countries. The Complainant's mark is protected as trademark in a multitude of countries worldwide. As an example, the International Registrations TAMIFLU Nos 713 623 and 727 329 are registered respectively since June 3, 1999 and February 7, 2000 for products under international Class 5 (namely “Antiviral pharmaceutical preparations”) and enjoy protection in a multitude of countries. The Complainant uses his mark TAMIFLU to designate a product against flu.
The disputed domain name <tamiflu-kaufen.com> has been registered on November 15, 2009. The registrant used privacy registration services and the Registrar disclosed that the current registrant is Catch4 Technologies.
The Complainant contends the following:
The domain name <tamiflu-kaufen.com> is confusingly similar to the mark of the Complainant. The Respondent's domain name incorporates the Complainant's trademark in its entirety, and furthermore, it differs from the Complainant's domain name <tamiflu-kaufen.com> only through the addition of the generic term “kaufen” (to buy in German language), and the use of a hyphen, which do not sufficiently distinguish the disputed domain name from the Complainant's trademark.
The Complainant asserts that since the mark TAMIFLU has been referred to in many mass media in view of so called swine flu, the trademark's notoriety will increase the likelihood of confusion.
The Complainant's use and registration of the mark TAMIFLU predates the Respondent's registration of the domain name <tamiflu-kaufen.com>.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has exclusive rights for TAMIFLU and no licence/permission/authorization was granted to use TAMIFLU in the domain name. The Respondent's domain name directs to a webpage offering/selling, among others, the Complainant's products and the website includes a picture of the packaging. The Complainant relies upon the decision in Hoffman-La Roche AG. v. Viagra Propecia Xenical & More Online Pharmacy, WIPO Case No. D2003-0793 (<viagra-propecia-xenical.com>) to argue that it is evident that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. The Respondent's reason in registering and using the domain name <tamiflu-kaufen.com> is to benefit from the reputation of the mark TAMIFLU and illegitimately trade on its fame for commercial gain and profit.
The disputed domain name has been registered and used in bad faith.
The Respondent must have been aware of the trademark and product TAMIFLU when registering the domain name <tamiflu-kaufen.com> on November 15, 2009. The Complainant in this regard relies on the decision Hoffman-La Roche Inc. v. WhoisGuard, WIPO Case No. D2005-1288 (<tamiflu.net>).
The disputed domain name is used in bad faith since the Respondent is intentionally attempting to attract Internet users to the disputed domain name by creating a likelihood of confusion as to the source, affiliation and endorsement of the Respondent's website or the products or services posted on or linked to the Respondent's website. The Complainant relies in this regard on decision Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784 (<pfizerforwoman.com> <wwwpfizerforwemen.com>), which held that bad faith is established when the “Respondent is using the domain names as a forwarding address to for–profit on-line pharmacy”. The Respondent is intentionally misleading the consumers and confusing them so as to attract them to other websites making them believe the websites behind those links are associated or recommended by the Complainant. The Respondent may generate unjustified revenues and is illegitimately capitalizing on the TAMIFLU trademark.
The Complainant requests the domain name <tamiflu-kaufen.com> to be transferred to the Complainant.
The Respondent did not reply to the Complainant's contentions.
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
In view of the Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e),14(a) and 15(a) of the Rules and draw such inferences as it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a) of the Policy requires that the Complainant proves each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The Complainant has clearly established prior rights in the mark TAMIFLU by appending evidence of two International Registrations enjoying protection in numerous countries. The trademark TAMIFLU is registered for products in international class 5 (namely “antiviral pharmaceutical preparations”) and is used to designate a product against flu.
The disputed domain name incorporates the Complainant's mark TAMIFLU in its entirety and merely adds a descriptive term “kaufen” (to buy in German language) and a hyphen. The use of such a descriptive word does not affect the likelihood of confusion (see e.g. F.Hoffman-La Roche AG v. Mr. A.U., WIPO Case No. D2009-1590 <tamiflu-market.com>; F.Hoffman-La Roche AG v. Whois Protected, WIPO Case No. D2009-1569 <tamiflu-kaufen.org>; F.Hoffman-La Roche AG v. PrivacyProtect.org Domain Admin and Mark Sergijenko, WIPO Case No. D2007-1854 <xenicalbuy.com>; Aventis, Aventis Pharma SA v. VASHA Dukes, WIPO Case No. D2004-0276 <buy-aventis.com> holding that a domain name is confusingly similar to a mark where a common descriptive term has been added to the mark as part of the domain name).
The use of a hyphen does not affect the similarity. Hyphens are used in domain names for website referencing purposes, in order to distinguish each term in the domain name. In the present case, it will highlight the trademark TAMIFLU.
In general sense, the Panel notes additionally that the risk of confusion should be considered with even greater care since the products designated by the Complainant's mark are pharmaceuticals. Therefore, the likelihood of confusion could eventually lead to the sale of harmful or inappropriate products.
The generic tld “.com” cannot be taken into consideration when judging identity or confusing similarity (see e.g. Hay & Robertson International Licensing AG v. C.J. Lovik, WIPO Case No. D2002-0122).
The Panel finds that the disputed domain name is confusingly similar to the Complainant's trademark. The condition of the paragraph 4(a)(i) of the Policy has been satisfied.
As set forth by Paragraph 4 (c) of the Policy, any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you 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 (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 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 Respondent did not submit a Response to the Panel in this proceeding and has not provided any evidence or circumstances required to establish that he has rights or legitimate interests in the disputed domain name, according to Parapraph 4 (c) of the Policy.
There is no evidence that the Respondent makes non-commercial and fair use of the domain name in dispute without intention to divert consumers, as addressed under paragraph 4(c) of the Policy. On the opposite, the Respondent makes a commercial gain since the disputed domain name first resolves to a website offering to purchase TAMIFLU online without any prescription. To order TAMIFLU, one has to click on a link which resolves to the following URL ‘www.pillen-apotheke.org' and to another website offering for sale on line other products, such as VIAGRA.
Furthermore, there is no evidence that the Respondent has any connection of affiliation with the Complainant, and the latter asserts it has not consented to the Respondent's use of the trademark in the disputed domain name.
The evidence submitted by the Complainant adequately support his assertions and shows that the Respondent's only reason for registering the disputed domain name is to benefit from the worldwide popularity of the trademark TAMIFLU and to illegitimately trade on its reputation for commercial gain and profit.
Accordingly, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been satisfied.
The Respondent was perfectly aware of the rights on the prior trademark TAMIFLU when registering the disputed domain name. The trademark TAMIFLU is 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 the swine flu disease.
The Panel finds support in decision Hoffman-La Roche AG v. WhoisGuard, WIPO Case No. D2005-1288 (<tamiflu.net>), in which it was already held that “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”.
The Panel refers as well to the decision Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784 (<pfizerforwoman.com> <wwwpfizerforwemen.com>), which held that “the Respondent, in common with the public, is well aware of the vast and valuable goodwill and reputation represented and symbolised by the PFIZER and PFIZER FOR WOMEN trademarks (…)” and that he registered the disputed domain names “with the bad faith intent to profit from such registration”.
The Panel finds that the disputed domain name was registered intentionally to misdirect customers looking for the Complainant's websites relating to TAMIFLU. This constitutes bad faith registration.
The Complainant's evidence shows that the disputed domain name resolves to a webpage giving information about TAMIFLU, the swine flu and on the advantages of ordering TAMIFLU on-line, and redirects to an on-line pharmacy that offers and sells the Complainant's products such as notably TAMIFLU. The marketing argumentation used on the webpage – buying TAMIFLU products online does not require a prescription and also allows avoiding customs – as well as the redirection to a for-profit on-line pharmacy clearly show that the Respondent is intentionally using the disputed domain name to misleadingly divert customers for commercial gain. Thus it also creates confusion for consumers as to the Complainant's trademark as to the source, affiliation, or endorsement as addressed within the meaning of paragraph 4(b)(iv) of the Policy (see Sanofi-Aventis, Aventis Pharma S.A., Merrell Pharmaceuticals Inc. v. George Breboeuf, WIPO Case No. D2005-1345 <allegro-fexofenadine.info>).
The Panel finds support in decisions Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784 (<pfizerforwoman.com> <wwwpfizerforwemen.com>), which held that bad faith is established when “Respondent is using the domain names as a forwarding address to a for-profit on-line pharmacy”, and Aventis, Aventis Pharma SA v. VASHA Dukes, WIPO Case No. D2004-0276 (<buy-aventis.com>), in which it is held that “to a certain extent, Respondent is encouraging consumers to enter into an irresponsible pattern of conduct in the purchase of drugs and even to self-medication in respect to those that need prescription” and thus ruling that the Respondent's sale of the Complainant's pharmaceuticals without prescription using the Complainant's trademark as their domain name may lessen the reputation associated with the Complainant's trademarks.
This constitutes bad faith use within the meaning of paragraph 4(b)(iv) of the Policy.
For the foregoing reasons, the Panel finds that the Complainant has also established the finding of bad faith registration and use within the meaning of paragraph 4(a)(iii) of the Policy.
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 <tamiflu-kaufen.com> be transferred to the Complainant.
Marie-Emmanuelle Haas
Sole Panelist
Dated: February 12, 2010