Monday, May 5, 2008

Addition of terms "easy" and "buy" to registered trademark increase likelihood of confusion

In F. Hoffmann-La Roche AG v. Julio Alvares, WIPO Case No. D2008-0254 (Andrea Jaeger-Lenz, April 18, 2008), the Panel compelled the transfer of to the Complainant, which owned the registered trademark VALIUM. In finding that the domain name was confusingly similar to the Complainant's trademark, the Panel emphasized that the addition of "easy" and "buy" to the Complainant's trademark increased the likelihood of confusion as to the source of the drugs offered by the Respondent. According to the Panel:

"With regard to the additional descriptive words 'easy' and 'buy', the Panel accepts the Complainant’s assertion that the mere addition of these generic terms does not necessarily avoid confusing similarity to the Complainant’s trademark...Furthermore, the generic terms are likely to create confusion as to the source of the offered products. Generally speaking, the use of a registered trademark in a domain name allows the registrant of the domain to capture traffic and divert it to its own website. Consumers tend to expect to find a company on the Internet at a domain name address comprised of the company’s name or trademark." (Emphasis added.)

Continuing, the Panel found that: "The Domain Name at issue may suggest, that the Respondent’s website is a location operated by the Complainant to purchase the Complainant’s products in a very easy and uncomplicated way. It is highly likely that the average customer will associate the domain of the Respondent as the source of products of the Complainant. But as matter of fact, the Respondent neither offers the Complainant’s product, nor has he any contractual relationship with the Complainant. Quite the contrary, the Respondent offers a generic product at his online pharmacy. It is also likely, that an average customer might expect the Respondent’s Domain Name – if not genuine from the Complainant – to be somewhat affiliated with the Complainant. To the average consumer, the Domain Name might give the impression that the Respondent’s website constitutes a subsidiary business of the Complainant, or that it is sponsored by the Complainant."

Based on those facts, it was easy to conclude that the domain name at issue was confusingly similar to the Complainant's trademark, and that a transfer of the domain was warranted.

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