Glaxo Group Limited v. WWW Zban c/o David
Glenmore
Claim Number: FA0310000203164
Complainant is Glaxo Group Limited (“Complainant”) is
represented by Maury M. Tepper of Womble Carlyle Sandridge & Rice, PLL,
2100 First Union Capitol Canter, PO Box 831, Raleigh, NC 27602. Respondent is David Glenmore c/o WWW Zban
(“Respondent”), 101-1001 West Broadway, Unit 264, Vancouver, BC V6H 4B1.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <wwwzyban.com>,
registered with Register.com.
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.
Judge
Harold Kalina (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on October 14, 2003; the Forum received a hard copy of the
Complaint on October 15, 2003.
On
October 14, 2003, Register.com confirmed by e-mail to the Forum that the domain
name <wwwzyban.com> 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 ICANN's Uniform Domain Name Dispute
Resolution Policy (the "Policy").
On
October 21, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of November 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@wwwzyban.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
November 20, 2003, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the Forum appointed Judge Harold Kalina
(Ret.) 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 domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <wwwzyban.com> domain name is confusingly similar to
Complainant’s ZYBAN mark.
2. Respondent does not have any rights or
legitimate interests in the <wwwzyban.com>
domain name.
3. Respondent registered and used the <wwwzyban.com> domain name in bad
faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant is
an international company that develops, markets, and sells prescription and
non-prescription medicines. Complainant
owns the registration for the ZYBAN mark and related marks (Reg. No. 2144141 and
Reg. No. 2172529, registered, respectively, on March 17 1998 and July 14, 1998,
for pharmaceutical preparations and printed matter to quit smoking). Complainant also owns the registration for
the domain name <zyban.com>.
Respondent
registered the domain name <wwwzyban.com>
on January 17, 2002. Entering the
disputed domain name redirects the user to the ZYBAN page of
<usaprescription.com>.
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 rights in the ZYBAN mark through registration with the U.S.
Patent and Trademark Office and subsequent continuous use of the mark in
commerce. See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept.
16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that
they are inherently distinctive and have acquired secondary meaning”); see also Tuxedos By Rose v. Nunez, FA
95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark
where its use was continuous and ongoing).
The disputed
domain name, <wwwzyban.com>,
is confusingly similar to Complainant’s ZYBAN mark. Even though Respondent added “www” to Complainant’s mark, this
difference is insufficient to differentiate Respondent’s <wwwzyban.com> domain name from
Complainant’s ZYBAN mark. Therefore,
Complainant has established that the <wwwzyban.com>
domain name is confusingly similar to Complainant’s ZYBAN mark. See
Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000)
(finding that Respondent’s domain name <wwwbankofamerica.com> is
confusingly similar to Complainant’s registered trademark BANK OF AMERICA
because it “takes advantage of a typing error (eliminating the period between
the www and the domain name) that users commonly make when searching on the
Internet”); see alsoMarie Claire Album v.
Blakely, D2002-1015 (WIPO Dec. 23, 2002) (holding that the letters
"www" are not distinct in the "Internet world" and thus
Respondent 's <wwwmarieclaire.com> domain name is confusingly similar to
Complainant's MARIE CLAIRE trademark).
Accordingly,
the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to submit a Response in this proceeding. Thus, the Panel is permitted to accept all reasonable allegations
and inferences in the Complaint as true.
See Vertical Solutions Mgmt., Inc.
v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000)
(failure to respond allows all reasonable inferences of fact in the allegations
of Complainant 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”).
Respondent is
not using the 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
of the trademark pursuant to Policy ¶ 4(c)(iii). Complainant claims that Respondent is using the disputed domain
name to redirect Internet users to a pharmaceuticals sales site. The Panel infers that Respondent is taking
advantage of Complainant’s mark by diverting Internet users to competing
commercial site. See Am. Online Inc. v. Shenzhen JZT Computer Software Co.,
D2000-0809 (WIPO Sept. 6, 2000) (finding that Respondent’s operation of website
offering essentially the same services as Complainant and displaying
Complainant’s mark was insufficient for a finding of bona fide offering of
goods or services); see G.D. Searle &
Co. v. Fred Pelham, FA 117911 (Nat. Arb. Forum Sept. 19, 2002) (finding
that because Respondent is using the infringing domain name to sell
prescription drugs it can be inferred that Respondent is opportunistically
using Complainant’s mark in order to attract Internet users to its website).
Although
Respondent’s WHOIS contact information is for WWW Zban, the fame of the ZYBAN
mark prevents him from asserting a legitimate interest in it. Nike,
Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding that no
person besides Complainant could claim a right or a legitimate interest with
respect to the domain name <nike-shoes.com>); see also Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb.
28, 2001) (finding sufficient proof that Respondent was not commonly known by a
domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because
of Complainant’s well-established use of the mark). In addition, Complainant has not licensed or authorized
Respondent to use the <wwwzyban.com>
domain name. Thus, it is reasonable for
the Panel to infer that Policy ¶ 4(c)(ii) does not apply to Respondent.
Accordingly,
the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Because
of the fanciful nature of the ZYBAN mark, the Panel can infer that Respondent
knew of Complainant’s rights in the mark at registration. See
G.D. Searle & Co. v. 24-7-Commerce.com, FA 114707 (Nat. Arb. Forum July
31, 2002) (“It 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 it
registered the domain name because Complainant’s mark was a coined arbitrary
term with no meaning apart from Complainant’s products).
Complainant is a
manufacturer and
<usaprescription.com> is a vender of Complainant’s product. Respondent’s use of Complainant’s mark to
redirect users to Complainant’s vendor is not “competition” in a strict
sense. However, Respondent is using the
confusingly similar domain name to create consumer confusion with the Complainant’s
mark as to the source, sponsorship, affiliation, or endorsement of the disputed
domain name and the referral site, constituting bad faith use pursuant to
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 Kmart v.
Kahn, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent
profits from its diversionary use of Complainant's mark when the domain name
resolves to commercial websites and Respondent fails to contest the Complaint,
it may be concluded that Respondent is using the domain name in bad faith
pursuant to Policy ¶ 4(b)(iv)).
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 <wwwzyban.com>
domain name be TRANSFERRED from
Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated:
December 1, 2003
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