Glaxo Group Limited, The Wellcome Foundation Limited, SmithKline & French Laboratories Limited and Beecham Group p.l.c. v. PL
Claim Number: FA0606000729663
Complainant is Glaxo Group Limited, The Wellcome Foundation Limited, SmithKline & French Laboratories Limited and Beecham Group p.l.c. (collectively, “Complainant”), represented by Maury M. Tepper, of Womble Carlyle Sandridge & Rice, PLLC, 150 Fayetteville Street Mall, P.O. Box 831, Raleigh, NC 27602. Respondent is PL (“Respondent”), Domain name for sale, Can, QC 90210, Canada.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <efcortelan.com>, <respontin.com>, <ventide.com>, <propaderm.com>, <cicatrin.com>, <otosporin.com>, <wellvone.com>, <liskonum.com> and <floxapen.com>, registered with Dynadot, Llc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her 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 June 9, 2006; the National Arbitration Forum received a hard copy of the Complaint on June 12, 2006.
On June 12, 2006, Dynadot, Llc confirmed by e-mail to the National Arbitration Forum that the <efcortelan.com>, <respontin.com>, <ventide.com>, <propaderm.com>, <cicatrin.com>, <otosporin.com>, <wellvone.com>, <liskonum.com> and <floxapen.com> domain names are registered with Dynadot, Llc and that Respondent is the current registrant of the names. Dynadot, Llc has verified that Respondent is bound by the Dynadot, Llc 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 16, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 6, 2006 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@efcortelan.com, postmaster@respontin.com, postmaster@ventide.com, postmaster@propaderm.com, postmaster@cicatrin.com, postmaster@otosporin.com, postmaster@wellvone.com, postmaster@liskonum.com and postmaster@floxapen.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 13, 2006, 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 <efcortelan.com>, <respontin.com>, <ventide.com>, <propaderm.com>, <cicatrin.com>, <otosporin.com>, <wellvone.com>, <liskonum.com> and <floxapen.com> domain names are identical to Complainant’s EFCORTELAN, RESPONTIN, VENTIDE, PROPADERM, CICATRIN, OTOSPORIN, WELLVONE, LISKONUM and FLOXAPEN marks, respectively.
2. Respondent does not have any rights or legitimate interests in the <efcortelan.com>, <respontin.com>, <ventide.com>, <propaderm.com>, <cicatrin.com>, <otosporin.com>, <wellvone.com>, <liskonum.com> and <floxapen.com> domain names.
3. Respondent registered and used the <efcortelan.com>, <respontin.com>, <ventide.com>, <propaderm.com>, <cicatrin.com>, <otosporin.com>, <wellvone.com>, <liskonum.com> and <floxapen.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is comprised of Glaxo Group Limited, The Wellcome Foundation Limited, SmithKline & French Laboratories Limited and Beecham Group p.l.c., wholly-owned subsidiaries of GlaxoSmithKline, PLC, a pharmaceutical company. In connection with the promotion and distribution of its pharmaceutical products, Complainant collectively holds numerous trademark registrations with the United Kindom Patent Office (“UKPO”), delineated as follows. Glaxo Group Limited holds the trademark registrations for the EFCORTELAN (Reg. No. 734,993 issued Sept. 13, 1954), RESPONTIN (Reg. No. 2,115,596 issued June 6, 1997), VENTIDE (Reg. No. 1,069,764 issued Oct. 22, 1976) and PROPADERM (Reg. No. 888,974 issued Jan. 7, 1966) marks. The Wellcome Foundation Limited holds the trademark registrations for the CICATRIN (Reg. No. 727,902 issued Mar. 12, 1954), OTOSPORIN (Reg. No. 764,120 issued Apr. 1, 1957) and WELLVONE (Reg. No. 1,534,442 issued Nov. 4, 1994) marks. SmithKline & French Laboratories Limited holds the trademark registration for the LISKONUM mark (Reg. No. 2,353,149 issued June 25, 2004). Finally, SmithKline & French Laboratories Limited and Beecham Group p.l.c. holds the trademark registration for the FLOXAPEN mark (Reg. No. 907,032 issued Mar. 21, 1967).
Respondent registered the disputed domain names on January 31, 2005 under the name, “PL, Domain name for sale.” The disputed domain names resolve to a website that displays a list of domain names that are for sale, including the domain names in dispute. After 30 seconds of inactivity at the resulting website, Internet users are automatically redirected to <drugdanger.com>, a website that criticizes the pharmaceutical industry through a variety of articles regarding medical errors.
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 aforementioned marks through registration with the UKPO. See The Royal Bank of Scotland Group plc v. TRB, FA 622345 (Nat. Arb. Forum Feb. 22, 2006) ("The Panel accepts Complainant's registration of the THE ROYAL BANK OF SCOTLAND mark with the United Kingdom Patent Office as evidence of Complainant's rights in the mark pursuant to Policy ¶ 4(a)(i)."); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
Complainant asserts that each of the disputed domain
names are identical to one of its aforementioned marks. Each of the disputed domain names contains
one of Complainant’s EFCORTELAN, RESPONTIN, VENTIDE, PROPADERM, CICATRIN,
OTOSPORIN, WELLVONE, LISKONUM and FLOXAPEN marks in its entirety and adds the
generic top-level domain (“gTLD”) “.com.”
Accordingly, the Panel finds that the disputed domain names are
identical to Complainant’s marks for the purposes of Policy ¶ 4(a)(i). See Blue Sky Software Corp. v. Digital
Sierra, Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name
<robohelp.com> is identical to the complainant’s registered ROBOHELP
trademark, and that the "addition of .com is not a distinguishing
difference"); see also Snow Fun, Inc. v. O'Connor, FA 96578 (Nat.
Arb. Forum Mar. 8, 2001) (finding that the domain name <termquote.com> is
identical to the complainant’s TERMQUOTE mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Pursuant to Policy ¶ 4(a)(ii), Complainant initially bears the burden of establishing that Respondent lacks rights and legitimate interests in the disputed domain names. Once Complainant sufficiently establishes a prima facie case, the burden shifts to Respondent to show that it has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). 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 Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist). The Panel finds that Complainant has established a prima facie case and will evaluate the record to determine if Respondent has rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c).
The disputed domain names resolve to a website that displays
a list of domain names that are for sale, including the domain names in
dispute. Such an offer to sell the
disputed domain names that are identical to Complainant’s marks suggests that
Respondent lacks rights and legitimate interests in the disputed domain names pursuant
to Policy ¶ 4(a)(ii). See
Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003)
(“Respondent’s lack of rights and legitimate interests in the domain name is
further evidenced by Respondent’s attempt to sell its domain name registration
to Complainant, the rightful holder of the RED CROSS mark.”); see also Hewlett-Packard Co. v. High Performance
Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights
or legitimate interests where the respondent registered the domain name with
the intention of selling its rights).
As further evidence that Respondent lacks rights and legitimate interests in the disputed domain names, the resulting website automatically redirects Internet users to <drugdanger.com>, a website that criticizes the pharmaceutical industry through a variety of articles regarding medical errors. The Panel holds that such use of the disputed domain names that are identical to Complainant’s marks demonstrates Respondent’s lack of rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (holding that the respondent’s showing that it “has a right to free speech and a legitimate interest in criticizing the activities of organizations like the Complainant . . . is a very different thing from having a right or legitimate interest in respect of [a domain name that is identical to Complainant’s mark]”); see also E. & J. Gallo Winery v. Hanna Law Firm, D2000-0615 (WIPO Aug. 3, 2000) (finding that establishing a legitimate free speech/complaint site does not give rights to use a famous mark in its entirety).
Additionally, according to the WHOIS database, the registrant of the disputed domain names is “PL, Domain name for sale.” Because there is no evidence in the record to suggest that Respondent is commonly known by any of the disputed domain names, Respondent has failed to demonstrate rights or legitimate interest in the disputed domain name pursuant to Policy ¶ 4(c). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003) (“Due to the fame of Complainant’s mark there must be strong evidence that Respondent is commonly known by the disputed domain name in order to find that Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). However, there is no evidence on record, and Respondent has not come forward with any proof to establish that it is commonly known as CELEBREXRX or <celebrexrx.com>.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The disputed domain names resolve to a website that offers the domain names for sale. Additionally, the registrant listed in the WHOIS database is “PL, Domain name for sale.” The Panel finds that Respondent’s registration and use of the disputed domain names that are identical to Complainant’s marks evidences bad faith pursuant to Policy ¶ 4(b)(i). See Parfums Christain Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding bad faith where the respondent’s WHOIS registration information contained the words, “This is [sic] domain name is for sale”); see also CBS Broad. Inc. v. Worldwide Webs, Inc., D2000-0834 (WIPO Sept. 4, 2000) (“There is nothing inherently wrongful in the offer or sale of domain names, without more, such as to justify a finding of bad faith under the Policy. However, the fact that domain name registrants may legitimately and in good faith sell domain names does not imply a right in such registrants to sell domain names that are identical or confusingly similar to trademarks or service marks of others without their consent.”).
Moreover, the resulting website automatically redirects
Internet users to a website that criticizes Complainant’s pharmaceutical
industry. The Panel finds that
Respondent’s registration and use of the identical domain names to redirect
Internet users to a website that opposes the industry that Complainant is
engaged in constitutes disruption and evidences bad faith pursuant to Policy ¶
4(a)(iii). See Compagnie Generale
des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001)
(stating that although the respondent’s complaint website did not compete with
the complainant or earn commercial gain, the respondent’s appropriation of the
complainant’s trademark with a view to cause “damage and disruption to
[Complainant] cannot be right, still less where the use of the Domain Name will
trick internet users intending to visit the trademark owner’s site into
visiting the registrant’s site” in holding that the disputed domain name was
registered in bad faith); see also Mission KwaSizabantu v. Rost, D2000-0279
(WIPO June 7, 2000) (finding that the respondent registered the domain names
<kwasizabantu.com>, <kwasizabantu.org>, and
<kwasizabantu.net> in bad faith where the respondent published negative
comments regarding the complainant’s organization on the confusingly similar
website); see also TM Acquisition Corp. v. S.E.A. Domains, FA 156800 (Nat. Arb. Forum June 12, 2003) (finding the
respondent's use of the complainant's mark to redirect Internet users to a
website dedicated to criticizing the complainant was evidence that the
respondent’s domain names were registered and used in bad faith).
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 <efcortelan.com>, <respontin.com>, <ventide.com>, <propaderm.com>, <cicatrin.com>, <otosporin.com>, <wellvone.com>, <liskonum.com> and <floxapen.com> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: July 27, 2006
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