SmithKline Beecham PLC v. Chen Bao Shui
Claim Number: FA0705000989685
Complainant is SmithKline Beecham PLC (“Complainant”), represented by Glenn
A Gundersen, of Dechert LLP, Cira Centre,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <infanrix.com>, registered with Enom, Inc.
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 May 17, 2007; the National Arbitration Forum received a hard copy of the Complaint on May 21, 2007.
On May 18, 2007, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <infanrix.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 May 23, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 12, 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@infanrix.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 19, 2007, 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <infanrix.com> domain name is identical to Complainant’s INFANRIX mark.
2. Respondent does not have any rights or legitimate interests in the <infanrix.com> domain name.
3. Respondent registered and used the <infanrix.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, SmithKline Beecham PLC, is a subsidiary of
GlaxoSmithKline PLC based in the
Complainant is currently one of the three licensed providers
in the
Respondent’s <infanrix.com> domain name, which it registered on August 31, 2005, resolves to a commercial web directory with links to other pharmaceutical companies, including unlicensed vaccine providers that sell prescription drugs without a valid prescription.
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.
Because Complainant has registered the INFANRIX mark with
the USPTO, the Panel finds that Complainant has sufficiently established its
rights in the mark pursuant to Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes,
FA 652743 (Nat. Arb. Forum Apr. 17, 2006)
(“Complainant has established rights in the MICROSOFT mark through registration
of the mark with the USPTO.”); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s
federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks
were adequate to establish its rights in the mark pursuant to Policy ¶
4(a)(i)).
Even though Complainant has not registered the INFANRIX mark
in
Respondent’s <infanrix.com> domain name is identical to Complainant’s INFANRIX mark. The disputed domain name contains the generic top-level domain (“gTLD”) “.com,” but this is the only difference. As all domain names require a gTLD, the Panel concludes that Respondent has failed to sufficiently distinguish its domain name from Complainant’s registered mark and as a result, the <infanrix.com> domain name is identical to the mark pursuant to Policy ¶ 4(a)(i). See W. Union Holdings, Inc. v. Topiwala, D2005-0945 (WIPO Oct. 20, 2005) (finding <wuib.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name WUIB is part of the Internet address and does not add source-identifying significance); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
In accordance with Policy ¶ 4(a)(ii),
Complainant bears the burden of making a prima
facie case that Respondent lacks rights and legitimate interests in the
contested domain name. The burden then
shifts to Respondent once Complainant has made out a prima facie case. See ALPITOUR
S.p.A. v. Albloushi, FA
888651 (Nat. Arb. Forum Feb. 26, 2007) (finding that Policy ¶ 4(a)(ii) requires that the complainant must show that the
respondent has no rights to or legitimate interests in the subject domain name
and that once the complainant makes this showing, the burden of production
shifts to the respondent to rebut the complainant’s allegations); see also
AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006)
(“Complainant must first make a prima facie showing that Respondent does not
have rights or legitimate interest in the subject domain names, which burden is
light. If Complainant satisfies its
burden, then the burden shifts to Respondent to show that it does have rights
or legitimate interests in the subject domain names.”). In
this case, the Panel finds that Complainant has established a prima facie case,
and thus the burden is now upon Respondent to show that it has rights or
legitimate interests pursuant to Policy ¶ 4(a)(ii).
Respondent has
failed to respond to this Complaint.
Consequently, the Panel presumes that Respondent lacks rights or
legitimate interests in the domain name in dispute. See Broadcom Corp. v.
Ibecom PLC, FA 361190 (Nat. Arb.
Forum Dec. 22, 2004) (“Respondent’s failure to respond to the
Complaint functions as an implicit admission that [Respondent] lacks rights and
legitimate interests in the disputed domain name. It also allows the Panel to accept all
reasonable allegations set forth…as true.”); 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). Nevertheless, the Panel will still examine
the evidence on record to determine if Respondent has rights or legitimate
interests pursuant to Policy ¶ 4(c).
Under Policy ¶ 4(c)(ii), a respondent can establish rights or legitimate
interests if it is commonly known by the contested domain name. The WHOIS information lists “Chen Bao Shui” as the registrant of the <infanrix.com> domain name, and
no other evidence suggests that Respondent is commonly known by the contested
domain name. Moreover, Complainant
alleges that it did not authorize or license Respondent to register a domain
name containing its INFANRIX mark.
Accordingly, the Panel holds that Respondent has failed to demonstrate
that it has rights or legitimate interests in the contested domain name
according to Policy ¶ 4(c)(ii). See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr.
18, 2007) (concluding that the respondent was not commonly known by the
<thirteen.com> domain name based on all evidence in the record, and the respondent
did not counter this argument in its response); see also Braun Corp. v. Loney,
FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was
not commonly known by the disputed domain names where the WHOIS information, as
well as all other information in the record, gave no indication that the
respondent was commonly known by the disputed domain names, and the complainant
had not authorized the respondent to register a domain name containing its
registered mark).
Under the remaining two
elements of Policy ¶ 4(c), a respondent can establish rights or legitimate
interests if it is making either a bona
fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii). Here,
Respondent is using the
disputed domain name to operate a commercial web directory that displays links
to third-party websites, some of which offer the pharmaceutical products of
Complainant and its competitors without Complainant’s authorization. Respondent is likely profiting from consumers
who click on these links. The Panel thus
concludes that Respondent is not using the <infanrix.com>
domain name in connection with a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Hoffman-La Roche Inc. v. Truskowski, FA 808287 (Nat. Arb. Forum Nov. 14, 2006) (finding
that the operation of a “parking page” redirecting Internet users to websites
selling the products of the complainant and its competitors in the
pharmaceutical industry did not constitute a bona fide offering of goods or services or a legitimate
noncommercial or fair use); see also G.D. Searle & Co. v. Mahony,
FA 112559 (Nat. Arb. Forum June 12, 2002) (finding the respondent’s use of the
disputed domain name to solicit pharmaceutical orders without a license or
authorization from the complainant does not constitute a bona fide
offering of goods or services under Policy ¶ 4(c)(i)).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
The links on Respondent’s website at the <infanrix.com> domain name
contain terms related to Complainant’s pharmaceutical products and resolve to
websites selling these goods without Complainant’s authorization, as well as
the products of Complainant’s competitors.
Respondent’s conduct indicates that it has registered and is using the
disputed domain name in order to disrupt Complainant’s business. The Panel accordingly finds bad faith
registration and use pursuant to Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke,
FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent
engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a
commercial search engine with links to the products of the complainant and to
complainant’s competitors, as well as by diverting Internet users to several
other domain names); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith
registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the
disputed domain name to operate a commercial search engine with links to the
complainant’s competitors).
Furthermore, the Panel presumes that Respondent earns click-through fees for each consumer it diverts to third-party websites. Respondent’s attempts to attract Internet users to its commercial website for commercial gain and then divert them to websites selling the goods of Complainant without its authorization represents bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See GMAC LLC v. WhoisGuard Protected, FA 924715 (Nat. Arb. Forum May 2, 2007) (“Under Paragraph 4(b) of the Policy, evidence that a domain name registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website by creating a likelihood of confusion with the complainant’s mark serves as evidence of bad faith.”); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <infanrix.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: June 28, 2007
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