Glaxo Group Limited v. New Gideon, Inc.
Claim Number: FA0206000114476
Complainant is Glaxo Group Limited, Greenford, Middlesex, UNITED KINGDOM (“Complainant”) represented by Maury M. Tepper, of Womble Carlyle Sandridge & Rice, PLLC. Respondent is New Gideon, Inc., Balto, MD, USA (“Respondent”) represented by Ari Goldberger, of ESQwire.com Law Firm.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lotronex-news.com>, registered with Intercosmos Media Group.
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.
R. Glen Ayers, served as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on June 5, 2002; the Forum received a hard copy of the Complaint on June 10, 2002.
On June 6, 2002, Intercosmos Media Group confirmed by e-mail to the Forum that the domain name <lotronex-news.com> is registered with Intercosmos Media Group and that the Respondent is the current registrant of the name. Intercosmos Media Group has verified that Respondent is bound by the Intercosmos Media Group 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 June 10, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 1, 2002 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 email@example.com by e-mail.
A timely Response was received and determined to be complete on July 8, 2002.
On July 22, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed R. Glen Ayers as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
The Complaint alleges that the Complainant owns the trademark “Lotronex.” The domain name in question is <lotronex-news.com>, a domain name registered by the Respondent. Complainant has clearly shown worldwide registration for the mark. Complainant asserts that the domain name, which was registered March 31, 2002, is either identical or confusingly similar. It asserts that the addition of the “-news” portion of the domain name is not legally sufficient to allow the use of the domain name in competition with the trademark.
After the domain name was registered, Complainant sent Respondent electronic and paper correspondence objecting to the use of the domain name. Respondent has never answered any mail.
Complainant asserts that Respondent has no legitimate rights or interests. It is not known by the domain name or mark and has no “legitimate interest” in the domain name. Also, since the trademark now points to another product manufactured by Complainant, Complainant says that the registration interferes with the operation of its business. Further, this is of course the crux of the matter, the Complainant says that the Respondent’s domain name now points to a hardcore pornography site, making it difficult for consumers to retrieve information concerning the drug Lotronex. (As set forth below, Lotronex has been withdrawn from the market place, because of allegations concerning its safety).
Complainant also asserts bad faith. Use of the domain name to point to pornography is asserted to be bad faith. Also, Complainant asserts bad faith because Respondent clearly knew of Complainant’s rights and trademark when Respondent registered the domain name. Complainant asserts that the mark is a “coined” word and that use by another of such a coined word would allow inference of bad faith.
Respondent asserts that there is no confusion or identity, “lotronex-news” being obviously different from the trademark “Lotronex. Respondent also points out that “Lotronex”, a prescription drug, has been withdrawn from the marked due to adverse affects. Respondent also asserts that there is a <lotronexnews.com> domain registered to a law firm that is handling lawsuits against Complainant.
Respondent asserts that it “is pointing the Disputed Domain to pornography to as a protest of the Lotronex drug and its adverse side affect.”
Respondent denies any bad faith.
Respondent says that it has “rights” to criticize the drug.
Respondent denies bad faith because it has no intent to sell the domain name although it admits that it generates some income. As to the bad faith issues, Respondent’s basic position is that the Complainant has not met its burden of proof because Complainant has not shown any of the elements set forth at the ICANN Policy ¶4(b). Respondent says that there is no evidence that it intends to sell the domain name, that it intends to prevent the owner of the mark from using a domain name, that it is trying to disrupt the business of a competitor, or that it is intentionally trying to attract, from commercial gain, internet users to its website or other online locations.
Clearly, Complainant has established that it holds a registered mark. Complainant has also clearly established that the mark and the domain name could be confusingly similar, the addition of the word “news” and a hyphen (-) not being a significant alteration or variation.
Complainant has clearly demonstrated that Respondent has no rights in the name. Respondent’s assertions that other entities may have also registered confusingly similar or identical domain names is irrelevant to the rights of Complainant as to this Respondent. If 100 other people had registered a mark such as “McDonald’s,” the McDonald’s Corporation would still have the right to go after each domain registration one at a time, electing to prosecute (or persecute) each domain name claim at its discretion.
However, Complainant has done little to show the elements of bad faith set forth at the Policy. But, Complainant and Respondent both stipulate that the domain name, which is confusingly similar to a mark, now points to a pornographic site, and Respondent admit that it derives income from that relationship.
Therefore, given the circumstances and although the specific provisions of ICANN Policy §4(b) are not specifically violated, I believe that Complainant has shown “bad faith.”
Incidentally, were this a site devoted to information about a recalled product, established to provide information, and so long as the domain name and the mark were not identical, this Panel would have no trouble finding “fair use.” In this context, however, I find that the registration and use were in bad faith.
Respondent is making no attempt to educate the public about the risk of the trademarked product but is rather using the trademarked product’s name to point to a pornography site which earn some income.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
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;
(2) the 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.
Identical and/or Confusingly Similar
The mark and domain name are “confusingly similar.” Addition of words like “news”, especially to a coined word, does not mean that the name and the mark are not still confusingly similar. See, e.g., Actelion Pharmaceuticals, Inc. v. Kumar Bhatt dba Bosetan.com, FA 99680 (Nat. Arb. Forum - Oct. 31, 2002).
Rights or Legitimate Interests
Respondent has no right or legitimate interest in the name. Respondent’s use of the domain name to point to a pornography site (as an alleged comment on Complainant’s product) is not “fair use,” and this situation is distinguished from non-commercial criticism of a product. Compare, Bridgestone Firestone, Inc. v. Myers, D2000-D190 (WIPO - July 6, 2000).
Registration and Use in Bad Faith
Respondent’s conduct is in “bad faith”. Pointing to a pornography site has been found to be bad faith. See Geocities v. Geociites.com, D2000-0326 (WIPO - June 19, 2000). Where coined words are involved, those marks, like truly famous marks, cannot be used by others without creating an impression of association. See Am.Online v. Fu, D2000-1374 (WIPO - Dec. 11, 2000).
Looking at the totality, there is “bad faith”in this use by this Respondent. See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum - May 18, 2000). Conversely, if the domain reached a site used to criticize the product or report on litigation about the product, there would be no “bad faith.”
The domain name shall be transferred
R. GLEN AYERS, Panelist
Dated: August 2, 2002
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