SmithKline Beecham Corporation v. John Tin
Claim Number: FA0708001070220
Complainant is SmithKline Beecham Corporation (“Complainant”), represented by Maury
M. Tepper, of Womble Carlyle Sandridge & Rice, PLLC,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <bridgestoacess.com>, registered with Moniker Online Services, Inc.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On September 4, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 24, 2007 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@bridgestoacess.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <bridgestoacess.com> domain name is confusingly similar to Complainant’s BRIDGES TO ACCESS mark.
2. Respondent does not have any rights or legitimate interests in the <bridgestoacess.com> domain name.
3. Respondent registered and used the <bridgestoacess.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, SmithKline Beecham Corporation, is a global
pharmaceutical company that discovers, develops, manufactures, markets and
distributes pharmaceutical and medicinal preparations for a variety of medical
conditions. Complainant, and its
affiliate company, GlaxoSmithKline, promote Complainant’s charitable
contributions of medicine to indigent people, as well as information regarding
pharmaceutical access and reimbursement programs. Complainant promotes these services under its
BRIDGES TO ACCESS service mark, which is registered with the United States
Patent and Trademark Office (“USPTO”) (Reg. No. 2,856,772 issued
Respondent registered the <bridgestoacess.com>
domain name on
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 Complainant's undisputed representations pursuant to paragraphs 5(e), 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant’s registration of the BRIDGES TO ACCESS mark with the USPTO sufficiently establishes Complainant’s rights in the mark under the requirements of Policy ¶ 4(a)(i). See Ameridream, Inc. v. Russell, FA 677782 (Nat. Arb. Forum May 24, 2006) (holding that with the complainant’s registration of the AMERIDREAM mark with the USPTO, the complainant had established rights in the mark pursuant to Policy ¶ 4(a)(i)); see also Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)).
Complainant contends that the <bridgestoacess.com>
domain name is confusingly similar to Complainant’s BRIDGES TO ACCESS mark
under Policy ¶ 4(a)(i) as the disputed domain name contains Complainant’s mark,
with the omission of the letter “c” from the last word of the mark. The Panel finds that this misspelled word, as
well as the addition of the generic top-level domain (“gTLD”) “.com,” do not
create a sufficiently distinct domain name under the parameters of Policy ¶ 4(a)(i). See Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb.
Forum
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Under Policy ¶ 4(a)(ii),
Complainant must establish a prima facie
case that Respondent lacks rights and legitimate interests in the <bridgestoacess.com> domain name
before the burden shifts to Respondent to put forth evidence of its rights or
legitimate interests. The Panel finds
Complainant has satisfied its burden, and accordingly, the burden is on
Respondent to demonstrate its rights or legitimate interests in the <bridgestoacess.com> domain
name. 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”); see also G.D. Searle v. Martin Mktg., FA
118277 (Nat. Arb. Forum
An examination of all evidence before the Panel indicates
that there is no evidence that Respondent is or has ever been known by the <bridgestoacess.com> domain name, or
that Respondent is authorized to use Complainant’s BRIDGES TO ACCESS mark. Thus, Respondent is not commonly known by the
disputed domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns, Inc. v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent is
not commonly known by the <cigaraficionada.com> domain name because the
WHOIS information lists the registrant of the domain name as as
“WORLDTRAVELERSONLINE.COM,” and no other evidence exists in the record
indicating that the respondent is known by the domain name);
see also Compagnie de Saint Gobain v.
Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or
legitimate interest where the respondent was not commonly known by the mark and
never applied for a license or permission from the complainant to use the
trademarked name).
The evidence in the record indicates that Respondent is
using the disputed domain name to redirect Internet users to a website that
displays hyperlinks to various third-party websites, some of which are in
direct competition with Complainant’s commercial pharmaceutical offerings, as
well as to Complainant’s own websites. In Jerry Damson, Inc. v.
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <bridgestoacess.com> domain name to display hyperlinks to various websites, both related and unrelated to Complainant. Such use is presumably for Respondent’s own commercial benefit through the earning of click-through fees when Internet users click on these hyperlinks. Moreover, as the <bridgestoacess.com> domain name is capable of creating confusion as to Complainant’s source, sponsorship and affiliation with the disputed domain name and corresponding website, the Panel finds evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Some of the hyperlinks that display on the website that resolves from the <bridgestoacess.com> domain name link to direct competitors of Complainant. Such a use is a disruption of Complainant’s business and thus is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bridgestoacess.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: October 10, 2007
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