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
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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.
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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 – predate 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.
6.
B.
Respondent
5.9
Respondent has failed to respond to the Complaint and has not otherwise
actively participated in these proceedings.
Discussion and Findings
6.1 The Policy as affected by the Rules and the Supplemental Rules provides
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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
(c)
the domain name has been registered and is being used in bad faith.
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. D20000047 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
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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 noncommercial 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
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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
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