SmithKline Beecham (
Claim Number: FA0704000956290
Complainant is SmithKline Beecham (Cork) Limited (“Complainant”), represented by Glenn
A. Gundersen, of Dechert LLP, Cira Centre, 2929 Arch
Street, Philadelphia, PA 19104-2808.
Respondent is Aarya Patel (“Respondent”), 1Ab Paribramha Society - 1,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <buytykerb.com>, registered with Go Daddy Software.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 6, 2007; the National Arbitration Forum received a hard copy of the Complaint on April 13, 2007.
On April 9, 2007, Go Daddy Software confirmed by e-mail to the National Arbitration Forum that the <buytykerb.com> domain name is registered with Go Daddy Software and that Respondent is the current registrant of the name. Go Daddy Software has verified that Respondent is bound by the Go Daddy Software 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 April 18, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 8, 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@buytykerb.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 14, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant is an Irish pharmaceutical company.
In connection with the provision of various pharmaceutical products, Complainant has registered the TYKERB trademark (Reg. No. 2,895,608, issued October 19, 2004) with the United States Patent and Trademark Office (“USPTO”).
The TYKERB mark was registered in relation to a not-yet-released pharmaceutical product to assist patients with advanced or metastatic breast cancer.
Respondent is not authorized by Complainant to use the TYKERB mark in any way.
Respondent registered the <buytykerb.com> domain name on October 8, 2006.
The disputed domain name resolves to a website that provides information on Complainant’s product.
Respondent’s website uses Complainant’s corporate name, falsely implying that the site is sponsored or affiliated with Complainant.
Respondent’s website invites Internet users to purchase the TYKERB pharmaceutical product without a valid prescription from a medical professional.
Respondent’s <buytykerb.com> domain name is confusingly similar to Complainant’s TYKERB mark.
Respondent does not have any rights to or legitimate interests in the <buytykerb.com> domain name.
Respondent registered and uses the <buytykerb.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant’s timely registration of the TYKERB trademark with the USPTO establishes its rights in the mark pursuant to Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also 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.”).
Respondent’s domain name contains Complainant’s mark in its entirety and merely adds the generic term “buy” as well as the generic top-level domain (“gTLD”) “.com.” The addition of a generic term, along with a gTLD, to an otherwise identical mark fails sufficiently to distinguish the domain name from the mark pursuant to Policy ¶ 4(a)(i). See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to a complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Am. Online Inc. v. Neticq.com Ltd., D2000-1606 (WIPO Feb. 12, 2001) (finding that the addition of the generic word “Net” to a complainant’s ICQ mark, makes the <neticq.com> domain name confusingly similar to the mark).
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks rights and legitimate interests in the <buytykerb.com> domain name. Once Complainant makes out a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does possess rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001):
Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.
See also Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that, absent evidence of preparation to use a domain name for a legitimate purpose, the burden of proof lies with a respondent to demonstrate that it has rights or legitimate interests).
On the record before us, it is undisputed that Respondent’s
domain name resolves to a website featuring information on Complainant’s
product. Such use of the disputed domain
name is neither a bona fide offering
of goods or services pursuant to Policy ¶ 4(c)(i) nor
a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free
Cmty. Access, FA 180704 (Nat.
Arb. Forum Sept. 30, 2003)
(“Respondent's demonstrated intent to divert Internet users seeking
Complainant's website to a website of Respondent and for Respondent's benefit
is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use
under Policy ¶ 4(c)(iii).”); see also Am. Online, Inc. v. Advanced Membership
Servs., Inc., FA 180703 (Nat. Arb. Forum Sept. 26, 2003) (“Respondent's
registration and use of the <gayaol.com> domain name with the intent to
divert Internet users to Respondent's website suggests that Respondent has no
rights to or legitimate interests in the disputed domain name pursuant to
Policy Paragraph 4(a)(ii).”).
A review of Respondent’s WHOIS information reveals that the registrant of the <buytykerb.com> domain name is “Aarya Patel.” Lacking evidence to the contrary, we conclude that Respondent is not commonly known by the disputed domain name within the meaning of Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent does not deny that, presumably for its financial
benefit, it has intentionally diverted unsuspecting Internet users to its own commercial
website by means of the disputed domain name.
Respondent’s use of the domain name in this way amounts to an attraction
for commercial gain, which evinces registration and use in bad faith pursuant
to Policy ¶ 4(b)(iv).
See H-D Michigan, Inc. v. Petersons Auto.,
FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that a disputed domain
name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through a respondent’s registration and use of an
infringing domain name intentionally to attempt to attract Internet users to
its website by using a complainant’s famous marks and likeness); see also Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a
domain name that incorporates another's mark with the intent to deceive Internet
users in regard to the source or affiliation of the domain name is evidence of
bad faith.”)
It is
particularly egregious that Respondent should use its domain name to market a
new pharmaceutical product directly to an unsuspecting public who may be tempted
to avail themselves of its advertised qualities without the benefit of a
medical prescription, a prospect which Respondent does not deny.
For these reasons, the Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <buytykerb.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: May 23, 2007
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