Glaxo Group Limited v. Dan Grigor
Claim
Number: FA0310000203165
Complainant is Glaxo Group Limited (“Complainant”)
represented by Maury M. Tepper, III
of Womble Carlyle Sandridge & Rice, PLLC, 2100 First Union Capitol Canter, PO Box 831, Raleigh, NC, 27602. Respondent is Dan Grigor (“Respondent”),
17300 Grand Ave., Lake Elsinore, CA, 92530.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <wwwflonase.com> and <wwwimitrex.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.
Tyrus
R. Atkinson, Jr., 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 17, 2003, Enom, Inc. confirmed by e-mail to the Forum that the domain
names <wwwflonase.com> and <wwwimitrex.com> are
registered with Enom, Inc. and that Respondent is the current registrant of the
names. 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
October 17, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of November 6, 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@wwwflonase.com
and postmaster@wwwimitrex.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 12, 2003, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr.,
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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <wwwflonase.com> and
<wwwimitrex.com> domain names are confusingly similar to
Complainant’s FLONASE and IMITREX marks, respectively.
2. Respondent does not have any rights or
legitimate interests in the <wwwflonase.com> and <wwwimitrex.com>
domain names.
3. Respondent registered and used the <wwwflonase.com>
and <wwwimitrex.com> domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Glaxo Group Limited, discovers, develops, manufactures and markets leading
prescription and non-prescription medicines for humans. Among Complainant’s medications are IMITREX,
a prescription medication for the treatment or alleviation of migraine
headaches, and FLONASE, a prescription medication for the treatment of
allergies. Each of these products is
used by thousands of patients in the U.S. alone, and sales of each product are
in the hundreds of millions of dollars per year.
Complainant is
the holder of trademark registrations with the United States Patent and
Trademark Office (“USPTO”) for the IMITREX and FLONASE marks. Complainant holds USPTO Registration No.
1,787,324 (registered on August 10, 1993) and USPTO Registration No. 1,946,573
(registered on January 6, 1996) for the IMITREX mark. Complainant also holds USPTO Registration No. 1,870,977
(registered on January 3, 1995) for the FLONASE mark.
Complainant
provides information about its medication on the Internet. In particular, Complainant maintains
websites at the <imitrex.com> and the
<flonase.com> domain names, which provide patients and physicians with
specific information about IMITREX and FLONASE, respectively.
Respondent
registered the <wwwimitrex.com> domain name on April 25,
2003. Respondent also registered the <wwwflonase.com>
domain name on July 1, 2003. Both
domain names resolve to Internet pharmacy websites. Specifically, the <wwwimitrex.com> domain name
resolves to the website at <importeddrugs.com>, while the <wwwflonase.com>
domain name resolves to the website at <usaprescription.com>. Both of these websites dispense prescription
medications, including Complainant’s IMITREX and FLONASE medications, over the
Internet.
Respondent is
not connected or affiliated with Complainant.
In addition, Complainant has not given Respondent permission to use its
marks for any purpose.
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
registered the IMITREX and FLONASE marks with the USPTO. Accordingly, the Panel finds that
Complainant has established rights in both the IMITREX and FLONASE marks. 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 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. Respondent has the burden of refuting this
assumption).
When Respondent
registered the <wwwimitrex.com> domain name, it merely added the
top level domain “.com” to Complainant’s entire IMITREX mark. Respondent also added the prefix “www” to
Complainant’s IMITREX mark. Likewise,
Respondent added “www” and “.com” to Complainant’s FLONASE mark when it
registered the <wwwflonase.com> domain name. In the past, Panels have found that the addition
of a top level domain, such as “.com” does not sufficiently differentiate the
resulting domain name from the trademark wholly incorporated in the domain
name. Similarly, Panels have held that
the addition of the prefix “www” does not adequately distinguish the infringing
domain name from Complainant’s registered trademark. Furthermore, since both Complainant and Respondent operate within
the same industry, the likelihood of confusion is great. Thus, the Panel finds that Respondent’s <wwwflonase.com>
and <wwwimitrex.com> domain names are confusingly similar to
Complainant’s marks pursuant to Policy ¶ 4(a)(i). See Blue Sky
Software Corp. v. Digital Sierra Inc., D2000-0165 (WIPO Apr. 27, 2000)
(holding that the domain name <robohelp.com> is identical to
Complainant’s registered ROBOHELP trademark, and that the "addition of
.com is not a distinguishing difference"); see also Marie Claire Album
v. Geoffrey 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); see also Vivid Video, Inc.
v. Tennaro, FA 126646 (Nat. Arb. Forum Nov. 14, 2002) (finding that any
distinctiveness resulting from Respondent’s addition of a generic word to
Complainant’s mark in a domain name is less significant because Respondent and
Complainant operate in the same industry).
Accordingly, the
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
In this
proceeding, Respondent failed to submit a Response to the Panel. Thus, the Panel has not been presented with
any circumstances under which it can determine that Respondent has any rights
or legitimate interests in the <wwwflonase.com> and <wwwimitrex.com>
domain names. On the contrary, all
of the evidence before the Panel shows that Respondent lacks rights and
legitimate interests in the domain names.
Consequently, the Panel concludes that Respondent does not have any rights
or legitimate interests in the domain names.
See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct.
1, 2002) (holding that where Complainant has asserted that Respondent has no
rights or legitimate interests with respect to the domain name it is incumbent
on 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 Bayerische Motoren Werke AG v. Bavarian AG,
FA110830 (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);
see also Geocities v.
Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has
no rights or legitimate interests in the domain name because Respondent never
submitted a Response or provided the Panel with evidence to suggest otherwise).
There is no
evidence before the Panel demonstrating that Respondent is commonly known by
the domain names. In fact, the evidence
presented suggests that Respondent has no connection or affiliation with
Complainant, and Complainant has not consented to Respondent’s use of its
marks. Moreover, given the
distinctiveness of the <wwwflonase.com> and <wwwimitrex.com>
domain names and their similarity to Complainant’s unique marks, the Panel
would be hard-pressed to determine that Respondent is commonly known by the
domain names. Thus, the Panel finds
that Respondent is not commonly known by the <wwwflonase.com> and <wwwimitrex.com>
domain names under Policy ¶ 4(c)(ii).
See 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"); see also 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 Medline, Inc.
v. Domain Active Pty. Ltd., FA 139718 (Nat. Arb. Forum Feb. 6, 2003) (“Considering the
nonsensical nature of the [<wwwmedline.com>] domain name and its
similarity to Complainant’s registered and distinctive [MEDLINE] mark, the
Panel concludes that Policy ¶ 4(c)(ii) does not apply to Respondent”).
Respondent is
diverting Internet users who misspell Complainant’s domain names to Internet
pharmacy websites that compete directly with Complainant. Clearly, Respondent is profiting from
Internet users who inadvertently type either the <wwwflonase.com> or
<wwwimitrex.com> domain names by directing them to Respondent’s
website where it advertises and sells Complainant’s prescriptions, among
others, over the Internet in competition with Complainant. Appropriately, the Panel finds that
Respondent’s competing use of the disputed domain names does not constitute 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 Computerized Sec. Sys., Inc. v. Hu,
FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s
appropriation of Complainant’s mark to market products that compete with
Complainant’s goods does not constitute a bona fide offering of goods and
services); see also Ameritrade Holdings Corp. v. Polanski, FA 102715
(Nat. Arb. Forum Jan. 11, 2002) (finding that Respondent’s use of the disputed
domain name to redirect Internet users to a financial services website, which
competed with Complainant, was not a bona fide offering of goods or services).
Accordingly, the
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
registered the domain names with the intent to divert users seeking information
about Complainant’s products to its website.
It is likely that Internet users who are diverted to Respondent’s
competing website are confused as to the source, sponsorship, affiliation or
endorsement of the website and the products that it offers for sale. It can also be inferred that Respondent is
profiting by advertising and selling prescriptions offered by Complainant and
others, at its competing website. Thus,
the Panel finds that Respondent registered and used the <wwwflonase.com>
or <wwwimitrex.com> domain names in bad faith pursuant to
Policy ¶ 4(b)(iv).
See Computerized
Sec. Sys., Inc. v. Hu,
FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that Respondent’s use of the
<saflock.com> domain name to offer goods competing with Complainant’s
illustrates Respondent’s bad faith registration and use of the domain name
pursuant to Policy 4(b)(iv)); see also Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000)
(finding that Respondent acted in bad faith by registering the
<fossilwatch.com> domain name and using it to sell various watch brands
where Respondent was not authorized to sell Complainant’s goods).
Respondent has
registered the domain names with the expectation that Internet users seeking
Complainant’s websites will mistakenly omit the period in Complainant’s domain
names and will type either <wwwflonase.com>, instead of <www.imitrex.com>, or they will type <wwwimitrex.com>,
instead of <www.flonase.com>.
Respondent’s attempt to take advantage of such common typographical
errors is known as typosquatting, which is prima facie evidence of Respondent’s
bad faith intent. Therefore, the Panel
concludes that Respondent registered and used both domain names in bad faith
pursuant to Policy ¶ 4(a)(iii). See
Nat’l Ass’n of Prof’l Baseball Leagues
v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting is the
intentional misspelling of words with intent to intercept and siphon off
traffic from its intended destination, by preying on Internauts who make common
typing errors. Typosquatting is
inherently parasitic and of itself evidence of bad faith”); see also Black &
Decker Corp. v. Khan, FA 137223
(Nat. Arb. Forum Feb. 3, 2003) (finding the <wwwdewalt.com> domain name
was registered to “ensnare those individuals who forget to type the period
after the “www” portion of [a] web-address,” evidence that the domain name was
registered and used in bad faith).
Accordingly, 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 <wwwflonase.com> and <wwwimitrex.com>
domain names be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated:
November 21, 2003
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