Roche Moves Through WIPO To Block Online Sales Of Tamiflu

Swiss pharmaceutical company Roche has won three domain name disputes at the World Intellectual Property Organization (WIPO) for website addresses that were found to use in bad faith the name of Roche’s trademark medicine, Tamiflu, touted as the best defense against avian influenza.

The domain names are: www.ordertamiflunow.com, registered with eNom by Cheaptamiflu.net, Web Admin, Kingston, Jamaica; www.tamiflu.net, by WhoisGuard, Westchester, California, United States; and www.tamiflu-vaccine.com, registered by Kevin Reed, C/O, SN Pepin, Woking Surrey, United Kingdom. Clicking on www.tamiflu.net leads immediately to: http://www.asian-flu-medications.com.

All three cases were referred to the WIPO Arbitration and Mediation Center in December, and in all three cases Roche argued that the disputed name was “confusingly similar” to its trademark Tamiflu since the name was incorporated in its entirety in the domain name.

Roche also argued that the respondents had “no rights or legitimate interests” in using the domain name, and that the domain names had been registered and were “used in bad faith” in violation of the WIPO Uniform Domain Name Dispute Resolution Policy (UDRP).

On the bad faith issue, WIPO emphasised the “extensive media reference to the product in 2005” as it is believed to be the best product in case of an outbreak of an avian flu pandemic in human beings (IPW, Public health, 8 November 2005), and that the respondents appeared to have used the name for commercial purposes.

For instance, www.ordertamiflunow.com highlights a picture of a smiling family posing for a group photo with the words, “Protect your loved ones from deadly bird flu!” It states that supplies are “very limited” and does not clearly state the price nor the source, but says assistance can be provided in obtaining the necessary prescription.

In all three cases, WIPO ordered that the respective domain names be transferred to Roche. A Roche spokesperson said that the company is “simply protecting Roche trademarks under the ICANN [Internet Corporation for Assigned Names and Numbers] UDRP rules at WIPO.”

Roche does not have plans to offer Tamiflu online or use these trade names for sales of Tamiflu, the spokesperson said. “As with any prescription medicine, Roche does not advocate purchase via the Internet,” she said, adding that patients “should always gain a diagnosis from a healthcare professional before obtaining Tamiflu, and ensure they obtain Tamiflue from a reliable source.”

The respondents for tamiflu-vaccine.com case and the ordertamiflu.com case did not reply to the complainant’s contentions. It should be noted that no Tamiflu vaccine currently exists on the market.

A contact for the respondent for the tamiflu.net case did reply. Roche registered Tamiflu.com on 28 June, 1999 and updated it on 5 May, 2005. In this case, the respondent registered tamiflu.net on 18 October, 2005, according to WIPO. In an email correspondence with WIPO, a “technical contact” for the respondent stated, “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 online and that the contact is not responsible for the site to which users are redirected.”

But the respondent did not file a response in these proceedings, WIPO said, adding that the respondent “has failed to respond to the complaint and has otherwise actively participated in these proceedings.”

WIPO Sees Record Number of Trademark Applications in 2005

Separately, WIPO also announced that a record 33,565 international trademark applications were received in 2005 under the Madrid system for the international registration of trademarks, a 13.9 percent increase over 2004. Germany led the list for the 13 consecutive year. Developing country applications rose 30.6 percent over 2004 with China on top, bumping Switzerland from the overall list as the most designated country in applications.

After Germany came France with 3,497 international applications (10.4%), the United States with 2,847 (8.5%), Benelux countries with 2,426 (7.2%), Italy with 2,340 (7.0%), Switzerland 2,235 (6.7%), the European Community 1,852 (5.5%) and China 1,334 (4.0%).