Hoffmann-La Roche Inc. v. Kevin Morieson
d/b/a Rx Online Inc
Claim Number: FA0603000670183
PARTIES
Complainant is Hoffmann-La Roche
Inc. (“Complainant”), represented by Elizabeth
Atkins of Lathrop & Gage L.C., 230 Park Avenue, Suite 1847, New York, New
York 10169. Respondent is Kevin Morieson d/b/a Rx Online Inc (“Respondent”),
76 School Str., Cleveland, OH 44179.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <1-tamiflu.us>,
registered with Enom, Inc.
PANEL
The undersigned certifies that he has acted independently and
impartially and to the best of his knowledge has no known conflict in serving
as Panelist in this proceeding.
Louis E. Condon as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on March 30, 2006; the Forum received a hard copy of the
Complaint on March 31, 2006.
On March 31, 2006, Enom, Inc. confirmed by e-mail to the National
Arbitration Forum that the <1-tamiflu.us>
domain name is registered with Enom, Inc. and that Respondent is the
current registrant of the name. Enom,
Inc. has verified that Respondent is bound by the Enom, Inc. registration
agreement and has thereby agreed to resolve domain-name disputes brought by
third parties in accordance with the U. S. Department of Commerce’s usTLD
Dispute Resolution Policy (the “Policy”).
On April 6, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of April 26, 2006 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules
for usTLD Dispute Resolution Policy (the “Rules”).
Having received no Response from Respondent, the National Arbitration
Forum transmitted to the parties a Notification of Respondent Default.
On May 2, 2006, pursuant to Complainant’s request to have the dispute
decided by a single-member Panel, the National Arbitration Forum appointed Louis
E. Condon as Panelist.
Having reviewed the communications records, the Administrative Panel
(the “Panel”) finds that the National Arbitration Forum has discharged its
responsibility under Paragraph 2(a) of the Rules. Therefore, the Panel may issue its decision based on the
documents submitted and in accordance with the Policy, the Rules, the National
Arbitration Forum’s Supplemental Rules and any rules and principles of law that
the Panel deems applicable, without the benefit of any Response from Respondent.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Respondent’s <1-tamiflu.us> domain name is confusingly similar to Complainant’s TAMIFLU mark.
2.
Respondent does not have any rights or legitimate
interests in the <1-tamiflu.us> domain name.
3.
Respondent registered and used the <1-tamiflu.us>
domain name in bad faith.
FINDINGS
Complainant, Hoffmann-La Roche Inc., is one
of the leading manufacturers of pharmaceutical and diagnostic products. Complainant has registered its TAMIFLU mark
as an antiviral preparation with trademark authorities in a number of
countries, including the United States Patent and Trademark Office (“USPTO”)
(Reg. No. 2,439,305 issued March 27, 2001).
Respondent registered the <1-tamiflu.us>
domain name on December 7, 2004.
Respondent is using the disputed domain name to operate a pharmacy
website that offers Complainant’s TAMIFLU products without Complainant’s
authorization. The website also appears
to offer other medications.
DISCUSSION
Paragraph 15(a) of the Rules instructs this 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
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(f), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate pursuant to Paragraph 14(b) of
the Rules. The Panel is entitled
to accept all reasonable allegations and inferences set forth in the Complaint
as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing,
inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the
respondent’s failure to respond allows all reasonable inferences of fact in the
allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009
(WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to
accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that the Complainant must prove
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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution
Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent
as applicable in rendering its decision.
Complainant provides evidence of its
registration of the TAMIFLU mark with the USPTO. The Panel finds that Complainant’s federal registration is
sufficient to establish rights in the mark for purposes of Policy ¶
4(a)(i). See Vivendi
Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11,
2003) (“Complainant's federal trademark registrations establish Complainant's
rights in the BLIZZARD mark.”); see also Innomed
Techs., Inc. v. DRP Servs., FA 221171
(Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the
USPTO establishes Complainant's rights in the mark.”).
Furthermore, Complainant contends that the <1-tamiflu.us> domain name is confusingly similar to Complainant’s TAMIFLU mark, because the domain name incorporates Complainant’s entire mark and adds only the numeral “1” and a hyphen. The Panel finds that these slight changes to Complainant’s mark do not differentiate the domain name from the mark in a significant manner. See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Am. Online Inc. v. Chinese ICQ Network, D2000-0808 (WIPO Aug. 31, 2000) (finding that the addition of the numeral 4 in the domain name <4icq.com> does nothing to deflect the impact on the viewer of the mark ICQ and is therefore confusingly similar).
The Panel finds
that Complainant has satisfied the requirements of Policy ¶ 4(a)(i).
Complainant has the
initial burden of establishing a prima facie case that Respondent lacks
rights and legitimate interests in the <1-tamiflu.us> domain name
under Policy ¶ 4(a)(ii). Once
Complainant has satisfied its burden, the burden falls on Respondent to provide
evidence of its rights or legitimate interests under Policy ¶ 4(c). See Do The Hustle, LLC v. Tropic
Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant
asserts that the respondent has no rights or legitimate interests with respect
to the domain, the burden shifts to the respondent to provide “concrete
evidence that it has rights to or legitimate interests in the domain name at
issue”). Due to Respondent’s failure to
Respond, the Panel may presume that Respondent has failed to meet its burden. See Bank
of Am. Corp. v. McCall, FA 135012 (Nat.
Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in
its failure to meet its burden, but also will be viewed as evidence itself that
Respondent lacks rights and legitimate interests in the disputed domain
name.”). However, the Panel chooses to
evaluate whether the evidence provided supports a finding of Respondent’s
rights or legitimate interests under Policy ¶ 4(c).
Complainant contends that it has not licensed or authorized
Respondent to use its TAMIFLU mark in association with the disputed
domain name or for any other purpose.
The WHOIS information identifies Respondent as “Rx Online Inc” and
“Kevin Morieson” and does not include anything indicating that Respondent is
commonly known by the <1-tamiflu.us> domain name. Nothing in the record suggests that
Respondent is commonly known by the domain name or that Respondent is the owner
or beneficiary of a trade or service mark, which is identical to the domain
name. Therefore, the Panel finds that
Respondent has not established rights or legitimate interests in the disputed
domain name pursuant to Policy ¶ 4(c)(i) or (iii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb.
Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information
implies that Respondent is ‘commonly known by’ the disputed domain name” as one
factor in determining that UDRP ¶ 4(c)(ii) does not apply); see also RMO,
Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting
UDRP ¶ 4(c)(ii) "to require a showing that one has been commonly known by
the domain name prior to registration of the domain name to
prevail").
According to the Complaint, Respondent is using the <1-tamiflu.us>
domain name to operate a website that offers Complainant’s TAMIFLU product
without a prescription or an examination from a licensed medical
profession. The website also appears to
provide hyperlinks associated with other medications. The Panel finds no bona fide offering of goods or services
under Policy ¶ 4(c)(ii) where Respondent is using Complainant’s mark to sell
Complainant’s products without Complainant’s authorization. Furthermore, Respondent’s use of the
confusingly similar domain name to profit from Complainant’s goodwill is not a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iv). See G.D. Searle & Co. v.
Pelham, FA 117911 (Nat. Arb. Forum Sept. 19, 2002) (finding that because
the respondent is using the infringing domain name to sell prescription drugs,
the panel could infer that the respondent is using the complainant’s mark to
attract Internet users to its website for commercial benefit); see also Nike,
Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona
fide offering of goods or services where the respondent used the
complainant’s mark without authorization to attract Internet users to its
website, which offered both the complainant’s products and those of the
complainant’s competitors).
The Panel finds
that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
Complainant has provided evidence that Respondent is using the <1-tamiflu.us> domain name for the unauthorized sale of Complainant’s TAMIFLU products and other medications. Respondent’s registration and use of the disputed domain name for this purpose is evidence of disruption, which constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under UDRP ¶ 4(b)(iii).”); see also Hewlett Packard Co. v. Full Sys., FA 94637 (Nat. Arb. Forum May 22, 2000) (finding that the respondent registered and used the domain name primarily for the purpose of disrupting the business of the complainant by offering personal e-mail accounts under the domain name <openmail.com> which is identical to the complainant’s services under the OPENMAIL mark).
Furthermore, Respondent’s use of Complainant’s TAMIFLU mark in the <1-tamiflu.us> domain name to sell Complainant’s products without authorization as well as other medications suggests that Respondent is attempting to benefit from the goodwill associated with Complainant’s mark. Internet users who arrive at Respondent’s website searching for information regarding Complainant’s TAMIFLU products are likely to become confused as to Complainant’s affiliation with Respondent’s website. Respondent’s use of the confusingly similar domain name to profit from a likelihood of confusion is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to UDRP ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark); see also Fanuc Ltd v. Mach. Control Servs., FA 93667 (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent violated UDRP ¶ 4(b)(iv) by creating a likelihood of confusion with the complainant's mark by using a domain name identical to the complainant’s mark to sell the complainant’s products).
The Panel finds
that Complainant has satisfied the requirements of Policy ¶ 4(a)(iii).
DECISION
Complainant having established all three elements required under the
ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <1-tamiflu.us>
domain name be TRANSFERRED from
Respondent to Complainant.
Louis E. Condon, Panelist
Dated: May 15, 2006
Click Here to
return to the main Domain Decisions Page.
Click
Here to return to our Home Page