SmithKline Beecham Corporation and
SmithKline Beecham plc v. Eric Kaiser
Claim Number: FA0305000157290
Complainant is
SmithKline Beecham Corporation and SmithKline Beecham plc, King Of
Prussia, PA (“Complainant”) represented by Laurence R. Hefter of
Finnegan Henderson Farabow Garrett & Dunner L.L.P. Respondent is
Eric Kaiser, Colorado Springs, CO (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <augmentin.net> registered with Go
Daddy Software, Inc. and <buy-paxil-celexa-zoloft-prozac-remeron-fluoxetine-online.com>
registered with Stargate.com, 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.
Sandra
Franklin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on May 9, 2003; the Forum received a hard copy of the Complaint
on May 12, 2003.
On
May 14, 2003, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the
domain name <augmentin.net> is registered with Go Daddy Software,
Inc. and that Respondent is the current registrant of the name. 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
May 20, 2003, Stargate.com, Inc. confirmed by e-mail to the Forum that the
domain name <buy-paxil-celexa-zoloft-prozac-remeron-fluoxetine-online.com>
is registered with Stargate.com, Inc. and that Respondent is the current
registrant of the name. Stargate.com, Inc. has verified that Respondent is
bound by the Stargate.com, Inc. registration agreement and has thereby agreed
to resolve domain-name disputes brought by third parties in accordance with the
Policy.
On
May 21, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
June 10, 2003 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@augmentin.net and
postmaster@buy-paxil-celexa-zoloft-prozac-remeron-fluoxetine-online.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 Forum transmitted
to the parties a Notification of Respondent Default.
On
June 17, 2003, 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 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 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 <augmentin.net> domain name be transferred from
Respondent to Complainant and the <buy-paxil-celexa-zoloft-prozac-remeron-fluoxetine-online.com>
domain name be cancelled.
A. Complainant makes the following assertions:
1. Respondent’s <augmentin.net>
domain name is identical to Complainant’s AUGMENTIN mark. Respondent’s <buy-paxil-celexa-zoloft-prozac-remeron-fluoxetine-online.com>
domain name is confusingly similar to Complainant’s PAXIL mark.
2. Respondent does not have any rights or
legitimate interests in the <augmentin.net> and <buy-paxil-celexa-zoloft-prozac-remeron-fluoxetine-online.com>
domain names.
3. Respondent registered and used the <augmentin.net>
and <buy-paxil-celexa-zoloft-prozac-remeron-fluoxetine-online.com>
domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant
holds a number of trademark registrations with the United States Patent and
Trademark Office (“USPTO”) for the AUGMENTIN mark in relation to antibiotic
preparations, including Reg. No. 1,144,669 (registered on December 30, 1980).
Complainant also
holds several trademark registrations with the USPTO for the PAXIL mark (Reg.
No. 1,821,952 registered on February 15, 1994) related to pharmaceuticals,
namely, antidepressants.
Complainant
maintains numerous websites that are used for the sale of its products,
including <augmentin.com> and <paxil.com>.
Respondent
registered the <augmentin.net> domain name on November 19, 2002.
Respondent is using the disputed domain name to sell Complainant’s Augmentin
prescription pharmaceutical, along with numerous other pharmaceuticals, without
a prescription.
Respondent
registered the <buy-paxil-celexa-zoloft-prozac-remeron-fluoxetine-online.com>
domain name on February 21, 2002. Respondent is using the disputed domain
name likewise to offer several pharmaceuticals, including Complainant’s Paxil
prescription pharmaceutical without a 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.
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 its rights in the AUGMENTIN and PAXIL marks through registration
with the USPTO and continuous use in commerce.
Respondent’s <augmentin.net>
domain name is identical to Complainant’s AUGMENTIN mark because the disputed
domain name incorporates the entire mark and merely adds the generic top-level
domain (“gTLD”) “.net” to the end of Complainant’s mark. The addition of a gTLD
does not significantly differentiate a domain name from a mark because a gTLD
is a requirement for a domain name on the Internet. See Nike, Inc. v. Coleman, D2000-1120 (WIPO
Nov. 6, 2000) (finding that the domain name <nike.net> is identical to
the Complainant’s famous NIKE mark); see also Kabushiki Kaisha Toshiba v. Shan Computers, D2000-0325 (WIPO June
27, 2000) (finding that the domain name <toshiba.net> is identical to the
Complainant’s trademark TOSHIBA).
Respondent’s <buy-paxil-celexa-zoloft-prozac-remeron-fluoxetine-online.com>
domain name is confusingly similar to Complainant’s PAXIL mark because the
domain name appropriates Complainant’s mark and adds the generic term “buy” and
“online,” and the names of competing pharmaceuticals. Neither the addition of
the generic terms nor the names of other pharmaceuticals sufficiently
distinguish the disputed domain name from Complainant’s mark because the
addition of competing products does not defeat a confusingly similar claim with
regard to Policy ¶ 4(a)(i). See G.D. Searle & Co. v. Fred Pelham, FA
117911 (Nat. Arb. Forum Sept. 19, 2002) (finding that the addition of other
drug names does not create a distinct mark capable of overcoming a claim of
confusing similarity, “it merely creates a domain name with severe potential to
confuse Internet users as to the source, sponsorship and affiliation of the
domain”); see also G.D. Searle & Co. v. Entm’t Hosting Servs., Inc.,
FA 110783 (Nat. Arb. Forum June 3, 2002) (“The Panel concludes that the
<viagra-propecia-xenical-celebrex-claritin-prescriptions.com> domain name
is confusingly similar to Complainant’s CELEBREX mark because the mere addition
of related competing products’ names in the domain name does not defeat a
confusing similarity claim”).
The Panel finds
that Complainant has established Policy ¶ 4(a)(i).
Respondent has
neglected to respond to Complainant’s allegations. Thus, the Panel may accept
all reasonable allegations and inferences in the Complaint as true. See Do
the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of
a respondent to come forward to [contest complainant’s allegations] is
tantamount to admitting the truth of complainant’s assertion in this regard”); see
also Desotec N.V. v. Jacobi Carbons
AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows
a presumption that Complainant’s allegations are true unless clearly
contradicted by the evidence).
Furthermore,
based on Respondent’s failure to contest the Complaint, the Panel may presume
that Respondent lacks any rights to or legitimate interests in the disputed
domain name for purposes of Policy ¶ 4(a)(ii). See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000)
(finding no rights or legitimate interests where Respondent fails to respond); see
also Pavillion Agency, Inc. v.
Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that
Respondents’ failure to respond can be construed as an admission that they have
no legitimate interest in the domain names).
Respondent is
using both the <augmentin.net> domain name and the <buy-paxil-celexa-zoloft-prozac-remeron-fluoxetine-online.com>
domain name to sell pharmaceuticals, including Complainant’s pharmaceuticals,
without a license or authorization. Respondent’s use of confusingly similar
domain names to sell Complainant’s goods does not represent 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). See G.D. Searle & Co. v. Mahoney,
FA 112559 (Nat. Arb. Forum June 12, 2002) (finding Respondent’s use of the
disputed domain name to solicit pharmaceutical orders without a license or
authorization from Complainant does not constitute a bona fide offering of
goods or services under Policy ¶ 4(c)(i)); see also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000)
(finding no rights or legitimate interests in the famous MSNBC mark where
Respondent attempted to profit using the Complainant’s mark by redirecting
Internet traffic to its own website).
There is no
evidence in the record and Respondent has presented no proof that it is
commonly known by either <augmentin.net> or <buy-paxil-celexa-zoloft-prozac-remeron-fluoxetine-online.com>.
Thus, Respondent has failed to establish that it has rights to or legitimate
interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where
Respondent was not commonly known by the mark and never applied for a license
or permission from Complainant to use the trademarked name); see also RMO,
Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (Interpreting
Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known
by the domain name prior to registration of the domain name to prevail").
Accordingly, the
Panel finds that Complainant has established Policy ¶ 4(a)(ii).
Respondent is
using the <augmentin.net> and <buy-paxil-celexa-zoloft-prozac-remeron-fluoxetine-online.com>
domain names to sell Complainant’s and Complainant’s competitors products
without a license or authorization. Respondent’s use of the disputed domain
names demonstrates that Respondent is intentionally attempting to attract
Internet users to Respondent’s websites for commercial gain by creating a
likelihood of confusion with Complainant’s mark, which establishes bad faith registration
and use under Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex
Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that
Respondent registered and used the domain name in bad faith pursuant to Policy
¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to
attract Internet users to its commercial website); see also G.D. Searle
& Co. v. 24-7-Commerce.com, FA 114707 (Nat. Arb. Forum July 31, 2002)
(finding that although Respondent failed to come forward and provide evidence
of a planned use for the <celebrex-vioxx-ultram-super-blue-stuff.com>
domain name, due to the fact that the domain name incorporates marks of
competing pharmaceutical products, it can be inferred that Respondent
registered the domain name for ultimate use as an online pharmacy).
Furthermore,
Respondent’s incorporation of Complainant’s marks into Respondent’s domain
names suggests that Respondent had actual or constructive notice of
Complainant’s rights in its mark. The registration and use of a domain name
confusingly similar to a registered trademark despite notice of the mark
holder’s rights is evidence of bad faith registration and use pursuant to
Policy ¶ 4(a)(iii). See 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
Complainant’s CELEBREX mark is a fanciful term, and Respondent uses the mark in
conjunction with marks of Complainant’s competitors); see also Pfizer, Inc.
v. Internet Gambiano Prods., D2002-0325 (WIPO June 20, 2002) (finding
Respondent “was aware of and had knowledge of” Complainant’s mark when
registering the domain name because Complainant’s mark was a coined arbitrary
term with no meaning apart from Complainant’s products).
The
Panel finds that Policy ¶ 4(a)(iii) has been established.
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <augmentin.net> domain name be TRANSFERRED
from Respondent to Complainant and the <buy-paxil-celexa-zoloft-prozac-remeron-fluoxetine-online.com>
domain name be CANCELLED.
Sandra Franklin, Panelist
Dated:
July 1, 2003
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