Hoffmann-La Roche Inc.
v. stepanov
Claim Number: FA0609000808671
PARTIES
Complainant is Hoffmann-La Roche Inc. (“Complainant”), represented by Gianfranco G. Mitrione, of Lathrop & Gage L.C., 230 Park Avenue, Suite 1847, New York, NY 10169. Respondent is stepanov (“Respondent”), New York, NY 65897542.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <buy-tamiflu.us>, registered with Direct Information Pvt Ltd d/b/a Publicdomainregistry.com.
.
PANEL
The undersigned certifies that hehas acted independently and
impartially and to the best of his knowledge has no known conflict in serving
as Panelist in this proceeding.
James A. Carmody, Esq., as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
(the “Forum”) electronically on September 28, 2006; the Forum received a hard
copy of the Complaint on September 29, 2006.
On October 3, 2006, Direct Information Pvt Ltd d/b/a Publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <buy-tamiflu.us> domain name is/ registered with Direct Information Pvt Ltd d/b/a Publicdomainregistry.com and that Respondent is the current registrant of the name. Direct Information Pvt Ltd d/b/a Publicdomainregistry.com has verified that Respondent is bound by the Direct Information Pvt Ltd d/b/a Publicdomainregistry.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On October 5, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of October 25, 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 Forum transmitted to
the parties a Notification of Respondent Default.
On November 1, 2006, pursuant to Complainant’s request to have the
dispute decided by a single-member Panel, the Forum appointed James A. Carmody,
Esq., as Panelist.
Having reviewed the communications records, the Administrative Panel
(the “Panel”) finds that the 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 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 <buy-tamiflu.us> domain name is confusingly similar to Complainant’s TAMIFLU mark.
2.
Respondent does not have any rights or legitimate
interests in the <buy-tamiflu.us> domain name.
3.
Respondent registered and used the <buy-tamiflu.us>
domain name in bad faith.
B. Respondent
Respondent failed to submit a
Response in this proceeding.
FINDINGS
Complainant, Hoffmann-La Roche Inc., is a manufacturer of pharmaceutical and diagnostic products. Complainant holds registrations with the United States Patent and Trademark Office (“USPTO”) for the TAMIFLU mark (Reg. No. 2,439,305 issued March 27, 2001). Complainant utilizes the TAMIFLU mark in connections with the production and marketing of an antiviral pharmaceutical product for the treatment and prevention of influenza. Complainant has registered the <tamiflu.com> domain name for use in marketing its product.
Respondent registered the <buy-tamiflu.us> domain name on October 21, 2005. Respondent is using the disputed domain name to operate a commercial website claiming to offer for sale a generic version of Complainant pharmaceutical product marketed under the TAMIFLU mark. Respondent’s website purports to offer Complainant’s product for sale over the web without a prescription or physical examination.
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.
The Panel finds that Complainant
has established rights pursuant to Policy ¶ 4(a)(i) in the TAMIFLU mark through
registration with the USPTO. See Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that
registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive."); 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.”).
Respondent’s <buy-tamiflu.us> domain name is confusingly similar to Complainant’s TAMIFLU mark. The disputed domain name includes Complainant’s mark in its entirety adding a hyphen, the term “buy” and the “.us” top-level domain name. The addition of a hypen and a top-level domain is not sufficient to distinguish the disputed domain name from Complainant’s mark. Further, the addition of the term “buy” does not make the disputed domain name distinct from Complainant’s mark because it is descriptive of commercial business operations, which could be connected to Complainant’s business. The Panel finds that the disputed domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks.”); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the UDRP); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business).
The Panel finds that Policy ¶
4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks rights or legitimate interests in the <buy-tamiflu.us> domain name. Complainant’s assertion creates a prima facie case pursuant to the Policy, shifting the burden to Respondent to demonstrate that it does have rights or legitimate interests. Submitting a Response is Respondent’s opportunity to demonstrate its rights or legitimate interests in the disputed domain name. Respondent’s failure to respond suggests that Respondent lacks those rights or legitimate interests. Despite Respondent’s failure to respond, the Panel will evaluate the available evidence to determine whether Respondent has rights or legitimate interests as contemplated by Policy ¶ 4(c). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that the respondent has no rights or legitimate interests in the domain name because the respondent never submitted a response or provided the panel with evidence to suggest otherwise).
Complainant has established its rights in the
TAMIFLU mark, and asserts without contradiction that Respondent is in no way
affiliated with the TAMIFLU mark. The
Panel finds that there is no available evidence that Respondent is the owner or
beneficiary of a trade or service mark that is identical to the <buy-tamiflu.us>
domain name
as required by Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no
evidence that the respondent was the owner or beneficiary of a mark that is
identical to the <persiankitty.com> domain name); see also Pepsico,
Inc. v. Becky, FA 117014 (Nat. Arb.
Forum Sept. 3, 2002) (holding that because the respondent did not own any
trademarks or service marks reflecting the <pepsicola.us> domain name, it
had no rights or legitimate interests pursuant to UDRP ¶ 4(c)(i)).
Respondent is using
the <buy-tamiflu.us> domain name to operate a commercial website
purporting to sell a generic version of the pharmaceutical product sold by
Complainant under the TAMIFLU mark.
Such use is not a bona fide offering of goods or services because
Respondent is not licensed or authorized to sell a generic version of
Complainant’s pharmaceutical product, and Respondent’s use of Complainant’s mark
precludes its use from being a bona fide offering of goods or
services. Further, because Respondent’s
website is a commercial website offering products for sale, it is not being
used in connection with a legitimate noncommercial or fair use. The Panel finds that Respondent is not using
the dispute domain name in a manner contemplated by Policy ¶ 4(c)(ii) or
(iv). See eBay Inc. v. Hong,
D2000-1633 (WIPO Jan. 18, 2001) (stating that the respondent’s use of the
complainant’s entire mark in domain names makes it difficult to infer a
legitimate use); see also G.D. Searle & Co. v. Mahony, FA
112559 (Nat. Arb. Forum June 12, 2002) (finding the respondent’s use of the
disputed domain name to solicit pharmaceutical orders without a license or
authorization from the complainant does not constitute a bona fide
offering of goods or services under Policy ¶ 4(c)(i)).
There is no
available evidence that Respondent is commonly known by the <buy-tamiflu.us>
domain name. Respondent’s WHOIS
information identifies Respondent as “stepanov,” a name with no obvious
relationship to the disputed domain name.
The Panel finds that Respondent is not commonly known by the disputed
domain name and thus, lacks rights or legitimate interests pursuant to Policy ¶
4(c)(iii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent
has registered the domain name under the name ‘Ilyoup Paik a/k/a David
Sanders.’ Given the WHOIS domain name
registration information, Respondent is not commonly known by the
[<awvacations.com>] domain name.”); see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information
for the disputed domain [name], one can infer that Respondent, Onlyne Corporate
Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
The Panel finds that
Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <buy-tamiflu.us>
domain name to redirect Internet users to its commercial website. Internet users seeking Complainant’s
genuine website at the <tamiflu.com> domain name may instead find
themselves at Respondent’s website.
Respondent’s website purports to sell generic versions of Complainant’s
product, offering to ship the pharmaceutical product without a prescription or
medical exam. Respondent’s use disrupts
Complainant’s business, not only by directly competing with Complainant, but
also by offering a potentially dangerous generic version of Complainant’s
product without the medical safeguards utilized by Complainant. This use has the ability to cause
irreparable harm to Complainant’s reputation and to the public goodwill in
Complainant’s product. The Panel finds
that Respondent’s use is evidence of bad faith registration and use pursuant to
Policy ¶ 4(b)(iii). See Fossil, Inc. v. NAS, FA 92525 (Nat. Arb.
Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from
the respondent, a watch dealer not otherwise authorized to sell the complainant’s
goods, to the complainant); see also 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 Policy ¶ 4(b)(iii).”).
Respondent’s <buy-tamiflu.us>
domain name is confusingly similar to Complainant’s TAMIFLU mark. The confusing similarity of the disputed
domain name, combined with Respondent’s commercial website purporting to offer
a generic version of Complainant’s product may cause Internet users to
mistakenly believe that Respondent’s website is sponsored by or affiliated with
Complainant. Respondent is presumably
profiting from this confusion from the business operated at its commercial
website. The Panel finds that
Respondent’s use evidences bad faith registration and use pursuant to 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 Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug.
29, 2000) (finding bad faith where the domain name in question is obviously
connected with the complainant’s well-known marks, thus creating a likelihood
of confusion strictly for commercial gain).
The Panel finds that Policy ¶
4(a)(iii) has been satisfied.
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is
Ordered that the <buy-tamiflu.us> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: November 14, 2006
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