Glaxo Group Limited, SmithKline Beecham
PLC, SmithKline Beecham Corp., BW USA, Inc. & SB Pharmco Puerto Rico Inc.
v. Pradeep Dadha
Claim
Number: FA0507000514979
Complainants are
Glaxo Group Limited, SmithKline
Beecham PLC, SmithKline Beecham Corp., BW USA, Inc. and SB Pharmco Puerto
Rico Inc. (collectively, “Complainant”), represented
by Maury M. Tepper, of Womble, Carlyle, Sandridge,
& Rice, PLLC, 150 Fayetteville Steet Mall, PO Box 831, Raleigh, NC 27602. Respondent is Pradeep Dadha (“Respondent”) 250 Lloyds Rd, Royapettah, Chennai
600014, India.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <buygenericzyban.com>, <buygenericadvair-diskus.com>,
<buygenericflonase.com>, <buygenericflovent.com>, <buygenericimitrex.com>,
<buygenericserevent.com>, <buygenericventolin.com>, <buygenericcoreg.com>,
<buygenericaugmentin.com>, <buygenericpaxil.com>, <buygenericwellbutrin.com>,
and <buygenericavandia.com>, registered with Go Daddy Software,
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.
John
J. Upchurch as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on July
13, 2005; the National Arbitration Forum received a hard copy of the Complaint
on July 14, 2005.
On
July 15, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain names <buygenericzyban.com>, <buygenericadvair-diskus.com>,
<buygenericflonase.com>, <buygenericflovent.com>, <buygenericimitrex.com>,
<buygenericserevent.com>, <buygenericventolin.com>, <buygenericcoreg.com>,
<buygenericaugmentin.com>, <buygenericpaxil.com>, <buygenericwellbutrin.com>,
and <buygenericavandia.com> are registered with Go Daddy Software,
Inc. and that Respondent is the current registrant of the names. Go Daddy Software, Inc. has verified that
Respondent is bound by the Go Daddy Software, Inc. 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
July 20, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
August 9, 2005 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@buygenericzyban.com, postmaster@buygenericadvair-diskus.com,
postmaster@buygenericflonase.com, postmaster@buygenericflovent.com, postmaster@buygenericimitrex.com,
postmaster@buygenericserevent.com, postmaster@buygenericventolin.com, postmaster@buygenericcoreg.com,
postmaster@buygenericaugmentin.com, postmaster@buygenericpaxil.com, postmaster@buygenericwellbutrin.com,
and postmaster@buygenericavandia.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
August 12, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed John J.
Upchurch as Panelist.
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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <buygenericzyban.com>,
<buygenericadvair-diskus.com>, <buygenericflonase.com>,
<buygenericflovent.com>, <buygenericimitrex.com>, <buygenericserevent.com>,
<buygenericventolin.com>, <buygenericcoreg.com>, <buygenericaugmentin.com>,
<buygenericpaxil.com>, <buygenericwellbutrin.com>,
and <buygenericavandia.com> domain names are confusingly similar
to Complainant’s ZYBAN, ADVAIR DISKUS, FLONASE, FLOVENT, IMITREX, SEREVENT,
VENTOLIN, COREG, AUGMENTIN, PAXIL, WELLBUTRIN, and AVANDIA marks.
2. Respondent does not have any rights or
legitimate interests in the <buygenericzyban.com>, <buygenericadvair-diskus.com>,
<buygenericflonase.com>, <buygenericflovent.com>, <buygenericimitrex.com>,
<buygenericserevent.com>, <buygenericventolin.com>, <buygenericcoreg.com>,
<buygenericaugmentin.com>, <buygenericpaxil.com>, <buygenericwellbutrin.com>,
and <buygenericavandia.com> domain names.
3. Respondent registered and used the <buygenericzyban.com>,
<buygenericadvair-diskus.com>, <buygenericflonase.com>,
<buygenericflovent.com>, <buygenericimitrex.com>, <buygenericserevent.com>,
<buygenericventolin.com>, <buygenericcoreg.com>, <buygenericaugmentin.com>,
<buygenericpaxil.com>, <buygenericwellbutrin.com>,
and <buygenericavandia.com> domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Glaxo Group
Limited, SmithKline Beecham PLC, SmithKline Beecham Corp., BW USA, Inc. and SB
Pharmco Puerto Rico Inc. are each wholly-owned subsidiaries of the
pharmaceutical company GlaxoSmithKline, PLC and have filed the Complaint
collectively. Complainant develops,
manufactures, and distributes medications for the treatment of a variety of
medical conditions. In association with
these medications, Complainant has registered numerous trademarks with the United
States Patent and Trademark Office (“USPTO”), including the ADVAIR DISKUS mark
(Reg. No. 2,505,137 issued November 6, 2001), the AVANDIA mark (Reg. No.
2,241,060 issued April 20, 1999), the AUGMENTIN mark (Reg. No. 2,841,466 issued
January 8, 2002), the COREG mark (Reg. No. 2,000,337 issued September 10,
1996), the FLONASE mark (Reg. No. 1,870,977 issued January 3, 1995), the
FLOVENT mark (Reg. No. 2,639,216 issued October 22, 2002), the IMITREX mark
(Reg. No. 1,787,324 issued August 10, 1993), the PAXIL mark (Reg. No. 1,821,952
issued February 15, 1994), the SEREVENT mark (Reg. No. 1,628,891 issued
December 25, 1990), the VENTOLIN mark (Reg. No. 2,013,681 issued November 5,
1996), the WELLBUTRIN mark (Reg. No. 2,826,347 issued March 23, 2004), and the
ZYBAN mark (Reg. No. 2,172,529 issued July 14, 1998).
Respondent
registered the <buygenericadvair-diskus.com>, <buygenericflonase.com>,
<buygenericflovent.com>, <buygenericimitrex.com>, <buygenericserevent.com>,
<buygenericventolin.com>, <buygenericcoreg.com>, <buygenericaugmentin.com>,
<buygenericpaxil.com>, <buygenericwellbutrin.com>,
and <buygenericavandia.com> domain names on July 29, 2004 and the <buygenericzyban.com>
domain name on November 9, 2004. Each
of the twelve domain names registered by Respondent resolve to websites
featuring Complainant’s trademarks that promote the sale of generic versions of
the corresponding medication in direct competition with Complainant.
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 has
established rights in the ZYBAN, ADVAIR DISKUS, FLONASE, FLOVENT, IMITREX,
SEREVENT, VENTOLIN, COREG, AUGMENTIN, PAXIL, WELLBUTRIN, and AVANDIA marks
through registration with the USPTO pursuant to Policy ¶ 4(a)(i). See Vivendi Universal Games v.
XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003)
(“Complainant's federal trademark registrations establish Complainant's rights
in the BLIZZARD mark.”); see also Men’s Wearhouse, Inc. v. Wick, FA
117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered
marks hold a presumption that they are inherently distinctive [or] have
acquired secondary meaning”).
Complainant
asserts that Respondent’s <buygenericzyban.com>, <buygenericadvair-diskus.com>,
<buygenericflonase.com>, <buygenericflovent.com>, <buygenericimitrex.com>,
<buygenericserevent.com>, <buygenericventolin.com>, <buygenericcoreg.com>,
<buygenericaugmentin.com>, <buygenericpaxil.com>, <buygenericwellbutrin.com>,
and <buygenericavandia.com> domain names are confusingly similar
to Complainant’s ZYBAN, ADVAIR DISKUS, FLONASE, FLOVENT, IMITREX, SEREVENT,
VENTOLIN, COREG, AUGMENTIN, PAXIL, WELLBUTRIN, and AVANDIA marks,
respectively. Each of Respondent’s
disputed domain names feature Complainant’s entire trademark, with the addition
of the terms “buy” and “generic.” The
addition of generic terms is insufficient to differentiate Respondent’s domain
name from Complainant’s trademark pursuant to Policy ¶ 4(a)(i). See Sony Kabushiki Kaisha v. Inja, Kil,
D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an
ordinary descriptive word . . . nor the suffix ‘.com’
detract from the overall impression of the dominant part of the name in each
case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see
also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026
(WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in
dispute contains the identical mark of the complainant combined with a generic
word or term).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant
asserts that Respondent lacks rights and legitimate interest in the disputed
domain names. Complainant’s assertion
creates a prima facie case under Policy ¶ 4(a)(ii) and, thus, shifts the
burden of proof onto Respondent. 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 Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (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”). Because Respondent failed to respond, the
Panel infers that no rights or legitimate interests exist pursuant to Policy ¶
4(a)(ii). See Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the
respondent has failed to invoke any circumstance which could demonstrate any
rights or legitimate interests in the domain name); see also Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure
to respond can be construed as an admission that they have no legitimate
interest in the domain names).
Respondent is
using the confusingly similar domain names, which feature Complainant’s mark,
to operate websites that allow Internet users to purchase competing
medications. Such diversionary and
competing use is neither a bona fide offering of goods or services under
Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶
4(c)(iii). See G.D. Searle & Co.
v. Pelham, FA 117911 (Nat. Arb. Forum Sept. 19, 2002) (finding that because
the respondent is using the infringing domain name to sell prescription drugs,
the panel could infer that the respondent is using the complainant’s mark to
attract Internet users to its website for commercial benefit); see also Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Nat. Arb. Forum Apr. 12, 2002) (“Respondent’s
use of the confusingly similar domain name [<hpmilenium.com>] to sell
counterfeit versions of Complainant’s [HP] products is not a bona fide offering
of goods or services pursuant to Policy ¶ 4(c)(i).”).
Furthermore, no
affirmative evidence has been set forth showing that Respondent is commonly
known by any of the disputed domain names.
Therefore, Respondent has failed to show evidence of rights or
legitimate interests pursuant to Policy ¶ 4(c)(ii). See Ian Schrager Hotels, L.L.C. v.
Taylor, FA 173369 (Nat. Arb. Forum Sept.
25, 2003) (finding that without demonstrable evidence to support the assertion
that a respondent is commonly known by a domain name, the assertion must be
rejected); 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 Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the <buygenericzyban.com>, <buygenericadvair-diskus.com>,
<buygenericflonase.com>, <buygenericflovent.com>, <buygenericimitrex.com>,
<buygenericserevent.com>, <buygenericventolin.com>, <buygenericcoreg.com>,
<buygenericaugmentin.com>, <buygenericpaxil.com>, <buygenericwellbutrin.com>,
and <buygenericavandia.com> domain names to operate websites that
directly compete with Complainant’s business.
Such use constitutes a disruption of Complainant’s business and is
evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See EBAY, Inc. v. MEOdesigns, D2000-1368 (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); see also Puckett,
Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the
respondent has diverted business from the complainant to a competitor’s website
in violation of Policy ¶ 4(b)(iii)).
Furthermore,
Respondent’s use of the disputed domain names, which contain Complainat’s
trademarks, for commercial gain will likely confuse Internet users as to
Complainants sponsorship of or affiliation with the resulting websites. Such commercial use is evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933
(Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and
used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the
respondent was using the confusingly similar domain name to attract Internet
users to its commercial website); see also Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb.
Forum Mar. 21, 2000) (finding bad faith where the respondent registered and
used a domain name confusingly similar to the complainant’s mark to attract
users to a website sponsored by the respondent).
Finally,
Respondent registered the disputed domain names with constructive or actual
knowledge of Complainant’s rights in the ZYBAN, ADVAIR DISKUS, FLONASE,
FLOVENT, IMITREX, SEREVENT, VENTOLIN, COREG, AUGMENTIN, PAXIL, WELLBUTRIN, and
AVANDIA marks. Due to Complainant’s
registration of the marks with the USPTO, constructive knowledge is conferred
onto Respondent. See Orange Glo
Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s
OXICLEAN mark is listed on the Principal Register of the USPTO, a status that
confers constructive notice on those seeking to register or use the mark or any
confusingly similar variation thereof.”); see also Victoria’s
Cyber Secret Ltd. v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a Principal
Register registration [of a trademark or service mark] is constructive notice
of a claim of ownership so as to eliminate any defense of good faith adoption”
pursuant to 15 U.S.C. § 1072).
Moreover, because of the similarity between the content of Respondent’s
websites and the business in which Complainant engages, the Panel infers that
Respondent had actual knowledge of Complainant’s rights in the marks. Registration of domain names that are
confusingly similar to another’s mark despite actual or constructive knowledge
of the mark holder’s rights is tantamount to bad faith registration and use
pursuant to Policy ¶ 4(a)(iii). See Digi
Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that
“there is a legal presumption of bad faith, when Respondent reasonably should
have been aware of Complainant’s trademarks, actually or constructively”); see
also Samsonite Corp. v. Colony
Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of
bad faith includes actual or constructive knowledge of a commonly known mark at
the time of registration).
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 <buygenericzyban.com>, <buygenericadvair-diskus.com>,
<buygenericflonase.com>, <buygenericflovent.com>, <buygenericimitrex.com>,
<buygenericserevent.com>, <buygenericventolin.com>, <buygenericcoreg.com>,
<buygenericaugmentin.com>, <buygenericpaxil.com>, <buygenericwellbutrin.com>,
and <buygenericavandia.com> domain names be TRANSFERRED from
Respondent to Complainant.
John
J. Upchurch, Panelist
Dated: August 24, 2005
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