DECISION

 

GlaxoSmithKline Biologicals S.A. v. David Pfeffer c/o JeMM Productions

Claim Number: FA0504000467340

 

PARTIES

Complainant is GlaxoSmithKline Biologicals S.A., (“Complainant”), represented by GlaxoSmithKline Biologicals S.A, c/o Corporate Intellectual Property, 980 Great West Road, Brentford, TW8 9GS, UK.  Respondent is David Pfeffer c/o JeMM Productions, (“Respondent”), P.O. Box 10023, Jerusalem, 91100, Israel.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <cervarix.us>, registered with Register.com.

 

PANEL

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.

 

Sandra Franklin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on April 26, 2005; the Forum received a hard copy of the Complaint on April 28, 2005.

 

On April 27, 2005, Register.com confirmed by e-mail to the Forum that the domain name <cervarix.us> is registered with Register.com and that Respondent is the current registrant of the name.  Register.com has verified that Respondent is bound by the Register.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).

 

On May 4, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 24, 2005 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).

 

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

 

On May 27, 2005, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Sandra Franklin as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules.  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

1.      The domain name registered by Respondent, <cervarix.us>, is identical to Complainant’s CERVARIX mark.

 

2.      Respondent does not have any rights or legitimate interests in the <cervarix.us> domain name.

 

3.      Respondent registered or used the <cervarix.us> domain name in bad faith.

 

B. Respondent failed to submit a response to this proceeding.

 

FINDINGS

Complainant is a wholly owned subsidiary of GlaxoSmithKline, a world leading research-based pharmaceutical company.  Complainant manufactures the CERVARIX vaccine for the prevention of cervical cancer.

 

Complainant holds several trademark registrations throughout the world for the CERVARIX mark, including Israel (Reg. No. 154,454 issued January 8, 2002), and has a pending application for the mark with the United States Patent and Trademark Office.

 

Respondent registered the <cervarix.us> domain name on November 29, 2004.  Respondent is using the disputed domain name to redirect Internet users to a pay-per-click website advertising sponsored links for numerous catgories of third-party products and services.

 

DISCUSSION

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 the Complainant's undisputed representations pursuant to Paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to Paragraph 14(b) of the Rules.

 

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; and

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered or is being used in bad faith.

 

Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.

 

Identical and/or Confusingly Similar

 

Complainant established with extrinsic proof in this proceeding that it has rights to the CERVARIX mark as evidenced by its registration of the mark in several countries throughout the world, including Israel.  See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  The respondent has the burden of refuting this assumption).  See also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the complainant has rights to the name when the mark is registered in a country even if the complainant has never traded in that country).

 

Respondent’s <cervarix.us> domain name is identical to the CERVARIX mark because the domain name fully incorporates the mark and merely adds the country-code “.us.”  See Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding that since the addition of the country-code “.us” fails to add any distinguishing characteristic to the domain name, the <tropar.us> domain name is identical to the complainant’s TROPAR mark); see also Shirmax Retail Ltd. v. CES Mktg Group Inc., AF-0104 (eResolution Mar. 20, 2000) (refusing to interpret Policy ¶ 4(a)(i) in the conjunctive rather than disjunctive sense in holding that “mere identicality of a domain name with a registered trademark is sufficient to meet the first element [of the UDRP], even if there is no likelihood of confusion whatsoever”).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent has no rights or legitimate interests in the <cervarix.us> domain name that contains Complainant’s CERVARIX mark.  The burden shifts to Respondent to show that it does have rights or legitimate interests once Complainant establishes a prima facie case pursuant to Policy ¶ 4(a)(ii).  Due to Respondent’s failure to respond to the Complaint, it is assumed that Respondent does not have rights or legitimate interests in the disputed domain name.  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding 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 credible evidence that substantiates its claim of rights and legitimate interests in the domain name); 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 rights or legitimate interests is sufficient to shift the burden of proof to the respondent to demonstrate that such rights or legitimate interests do exist); see also 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).

 

Because Respondent has not submitted a response, the Panel may accept all reasonable allegations and inferences in the Complaint as true.  See 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.”); see also Bayerische Motoren Werke AG v. Bavarian AG, FA 110830 (Nat. Arb. Forum June 17, 2002) (finding that in the absence of a response the panel is free to make inferences from the very failure to respond and assign greater weight to certain circumstances than it might otherwise do).

 

Furthermore, nothing in the record indicates that Respondent is either the owner or beneficiary of a trade or service mark that is identical to the <cervarix.us> domain name pursuant to Policy ¶ 4(c)(i) or commonly known by the domain name pursuant to Policy ¶ 4(c)(iii).  See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests 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); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights or legitimate interests in a domain name when the respondent is not known by the mark).

 

Additionally, the <cervarix.us> domain name is identical to Complainant’s CERVARIX mark and is used to redirect Internet users to a website advertising links for third-party services and products.  The Panel finds that Respondent’s use of the domain name, which is identical to Complainant’s mark, to divert Internet users to a website that links to third-party websites is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iv).  See Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names); see also Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Respondent intentionally registered a domain name that incorporates Complainant’s CERVARIX mark in its entirety for Respondent’s commercial gain.  Respondent registered and used the <cervarix.us> domain name in bad faith under Policy ¶ 4(b)(iv) because Respondent intentionally attempted to attract potential customers from Complainant to Respondent’s website by taking advantage of Internet users who are searching under Complainant’s CERVARIX mark and diverting them to Respondent’s commercial website.  See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the respondent intentionally attempted to attract Internet users to his website for commercial gain by creating a likelihood of confusion with the complainant’s mark and offering the same services as the complainant via his website); see also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding bad faith where the respondent attracted users to a website sponsored by the respondent and created confusion with the complainant’s mark as to the source, sponsorship, or affiliation of that website).

 

Additionally, Respondent registered the disputed domain names with actual or constructive knowledge of Complainant’s rights in the CERVARIX mark due to Complainant’s registration of the mark with trademark authorities in Respondent’s country of residence, i.e., Israel.  Additionally, Complainant’s mark is a fanciful mark, which is further evidence that Respondent had actual or constructive knowledge of Complainant’s rights in the CERVARIX mark.  Registration of a domain name that is identical to a mark, despite actual or constructive knowledge of another’s rights in the mark, is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See 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); see also 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 the respondent reasonably should have been aware of the complainant’s trademarks, actually or constructively”); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); see also Pfizer, Inc. v. Internet Gambiano Prods., D2002-0325 (WIPO June 20, 2002) (finding the respondent “was aware of and had knowledge of” the complainant’s mark when registering the domain name because the complainant’s mark was a coined arbitrary term with no meaning apart from the complainant’s products); see also G.D. Searle & Co. v. 24-7-Commerce.com, FA 114707 (Nat. Arb. Forum July 31, 2002) (finding that “[i]t is evident that Respondent knew of Complainant’s rights in the CELEBREX mark” since the complainant’s CELEBREX mark is a fanciful term, and the respondent uses the mark in conjunction with marks of the complainant’s competitors).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.  

 

DECISION

Complainant having established all three elements required under ICANN Policy, the Panel concludes that relief should be GRANTED.

 

Accordingly, it is Ordered that the <cervarix.us> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Sandra Franklin, Panelist

Dated: June 10, 2005

 

 

 

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