SmithKline Beecham Corp., SB Pharmco
Puerto Rico Inc., Glaxo Group Ltd., and BW USA, Inc. v. John Barry d/b/a Apex
Domain and NA a/k/a Domains No Bad
Claim
Number: FA0312000218920
Complainants are SmithKline Beecham Corp., SB Pharmco
Puerto Rico Inc., Glaxo Group Ltd., and BW USA, Inc. (collectively,
“Complainant”), represented by Laurence
R. Hefter, of Finnegan, Henderson, Farabow, Garrett
& Dunner, L.L.P., 1300 I
Street, NW, Washington, D.C. 20005-3315. Respondent is John Barry d/b/a Apex Domain and NA a/k/a Domains No Bad, 5444 Arlington Ave.,
#g14, Bronx, NY 10471 (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <wwwserevent.com>, <wwwwellbutrin.com>,
<wwwamoxil.com>, <wwwavandia.com>, <wwwbactroban.com>,
<wwwpaxilcr.com>, and <wwwzovirax.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.
James a. Crary as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on December 12, 2003; the Forum received a hard copy of the
Complaint on December 12, 2003.
On
December 16, 2003, Enom, Inc. confirmed to the Forum that the domain names <wwwserevent.com>,
<wwwwellbutrin.com>, <wwwamoxil.com>, <wwwavandia.com>,
<wwwbactroban.com>, <wwwpaxilcr.com>, and <wwwzovirax.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
December 18, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of January 7, 2004 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@wwwserevent.com,
postmaster@wwwwellbutrin.com, postmaster@wwwamoxil.com,
postmaster@wwwavandia.com, postmaster@wwwbactroban.com,
postmaster@wwwpaxilcr.com, and postmaster@wwwzovirax.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
January 13, 2004, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed James A. Crary 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 <wwwserevent.com>,
<wwwwellbutrin.com>, <wwwamoxil.com>, <wwwavandia.com>,
<wwwbactroban.com>, <wwwpaxilcr.com>, and <wwwzovirax.com>
domain names are confusingly similar to Complainant’s SEREVENT, WELLBUTRIN,
AMOXIL, AVANDIA, BACTROBAN, PAXIL, PAXIL CR, and ZOVIRAX marks.
2. Respondent does not have any rights or
legitimate interests in the <wwwserevent.com>, <wwwwellbutrin.com>,
<wwwamoxil.com>, <wwwavandia.com>, <wwwbactroban.com>,
<wwwpaxilcr.com>, and <wwwzovirax.com> domain names.
3. Respondent registered and used the <wwwserevent.com>,
<wwwwellbutrin.com>, <wwwamoxil.com>, <wwwavandia.com>,
<wwwbactroban.com>, <wwwpaxilcr.com>, and <wwwzovirax.com>
domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
The individual Complainants in this
dispute are each wholly owned subsidiaries of
GlaxoSmithKline
plc, a company based out of the United Kingdom, and thus collectively have
standing to bring the Complaint. See
Int’l Olympic Committee v. Boyden,
FA 201977 (Nat. Arb. Forum Dec. 19, 2003) (“it is permissible for two Complainants to submit
a single Complaint if they can demonstrate a link between the two entities such
as a relationship involving a license, a partnership or an affiliation that
would establish the reason for the parties bringing the Complaint as one
entity”).
In addition, the
registration information for each of the disputed domain names maintains the
same mailing address, which is also the identical address of the notorious
cybersquatter “John Barry.” Therefore,
the Panel finds that John Barry is the registrant of each of the disputed
domain names, and that the Complaint complies with Rule 3(c).
Complainant is
one of the world’s leading pharmaceutical and healthcare companies, with U.S.
$31 billion in sales in 2002.
Complainant maintains a broad product line of prescriptive medicines,
vaccinations, and other healthcare products.
Complainant owns registrations with the United States Patent and
Trademark Office (“USPTO”) for each of the following marks: SEREVENT (Reg. No.
1628891), WELLBUTRIN (Reg. No. 1160590), AMOXIL (Reg. No. 958883), AVANDIA
(Reg. No. 2241060), BACTROBAN (Reg. No. 1269595), PAXIL (Reg. No. 1821952),
PAXIL CR (Reg. No. 2726889), ZOVIRAX (Reg. No. 1141502).
Each of
Complainant’s marks was first used prior to Respondent’s registration of the
disputed domain names. Furthermore,
every mark except PAXIL CR was registered with the USPTO prior to Respondent’s
registration of the disputed domain names
Respondent
registered the disputed domain names in 2002 and 2003. Respondent uses the names to direct Internet
users to pharmacy websites located at <prescriptions.org> and, in the
case of <wwwzovirax.com>, to a web directory that lists links to
pharmacies (collectively, the “Pharmacy Websites”). Respondent presumably receives compensation in the form of
commissions from the Pharmacy Websites for the Internet traffic generated to
those sites. The Pharmacy Websites
advertise and sell Complainant’s pharmaceuticals and numerous other
pharmaceuticals, including the products of Complainant’s competitors.
Respondent has a
lengthy history of registering and using trademark-related domain names in bad
faith. See e.g. Sears, Roebuck and
Co. v. Barry, FA 105210 (Nat. Arb. Forum Apr. 1, 2002); Rochester Inst.
of Tech. v Domain For Sale Inc. a/k/a Barry, FA 112475
(Nat. Arb. Forum June 3, 2002); Am. Nat’l Red Cross v Domains a/k/a Best Domains
a/k/a Barry,
FA 143684 (Nat. Arb. Forum
Mar. 4, 2003).
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 SEREVENT, WELLBUTRIN, AMOXIL, AVANDIA, BACTROBAN,
PAXIL, PAXIL CR, and ZOVIRAX marks through registration with the USPTO and
continuous use. See Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that the 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); see also 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”).
Each of the
disputed domain names incorporates Complainant’s marks in their entirety while
merely adding the “www” prefix to the marks in an attempt to capitalize on
Internet user error. See Oki Data
Americas, Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001) (“the fact that
a domain name incorporates a Complainant’s registered mark is sufficient to
establish identical or confusing similarity for purposes of the Policy”); see
also 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 also Marie 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); see also Neiman Marcus Group, Inc. v.
S1A, FA 128683 (Nat. Arb. Forum Dec. 6, 2002) (holding confusing similarity
has been established because the prefix "www" does not sufficiently
differentiate the <wwwneimanmarcus.com> domain name from Complainant's
NEIMAN-MARCUS mark); see also Dana Corp. v. $$$ This Domain Name Is For Sale
$$$, FA 117328 (Nat. Arb. Forum Nov. 19, 2002) (finding Respondent's
<wwwdana.com> domain name confusingly similar to Complainant's registered
DANA mark because Complainant's mark remains the dominant feature).
Policy ¶ 4(a)(i)
is established.
Respondent has
not asserted any rights or legitimate interests in the domain names. Therefore, the Panel may presume that
Respondent lacks rights and legitimate interests in the domain names. See 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); see
also Am. Online, Inc. v. AOL Int'l,
D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests
where Respondent fails to respond).
No evidence has
been advanced that Respondent is commonly known by the disputed domain names
pursuant to Policy ¶ 4(c)(ii), and the WHOIS registration information fails to
imply that Respondent is commonly known by the names. See Tercent Inc. v. Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (stating, “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly known by’ the disputed domain
name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan.
23, 2001) (finding that Respondent does not have rights in a domain name when
Respondent is not known by the mark).
In addition,
Respondent’s typosquatting of registered marks is not a bona fide offering of
goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial
or fair use pursuant to Policy ¶ 4(c)(iii).
See Nat’l Ass’n of Prof’l
Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003)
(“Typosquatting as a means of redirecting consumers against their will to
another site, does not qualify as a bona fide offering of goods or services,
whatever may be the goods or services offered at that site.”); see also
Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA
156839 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s <wwwdinersclub.com> domain name, a typosquatted version of
Complainant’s DINERS CLUB mark, was evidence in and of itself that Respondent
lacks rights or legitimate interests in the disputed domain name vis á vis
Complainant).
Policy ¶
4(a)(ii) is established.
Respondent has
registered and used the disputed domain names in bad faith because Respondent
has engaged in the manipulative practice of typosquatting, which evidences
actual notice of Complainant’s marks. See
RE/MAX Int’l, Inc. v. Seocho, FA 142046 (Nat. Arb. Forum Feb. 25, 2003)
(inferring that Respondent’s registration of the <wwwremax.com> domain
name, incorporating Complainant’s entire mark, was done with actual notice of
Complainant’s rights in the mark prior to registering the infringing domain
name, evidencing bad faith); see 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).
The disputed
domain names were also registered and used in bad faith pursuant to Policy ¶
4(b)(iv) because Respondent is attracting Internet users to sites that offer
goods that are similar to those of Complainant. See Computerized Sec. Sys., Inc. d/b/a SAFLOK 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,
evidence of bad faith registration and use pursuant to Policy 4(b)(iv)); see
also TM Acquisition Corp. v. Carroll,
FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where Respondent
used the domain name, for commercial gain, to intentionally attract users to a
direct competitor of Complainant); 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)).
Moreover, Respondent
registered and used the disputed domain names in bad faith pursuant to Policy ¶
4(b)(iv) because Respondent attracted Internet users to its website in the
hopes of stealing Complainant’s customers by causing confusion with
Complainant’s mark. 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 Complainant’s well-known marks, thus
creating a likelihood of confusion strictly for commercial gain); see also Scholastic Inc. v. Applied Software
Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under
Policy ¶ 4(b)(iv) where Respondent initially used the domain name at issue to
resolve to a website offering similar services as Complainant and were offered
to the same market).
Policy ¶
4(a)(iii) is established.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <wwwserevent.com>, <wwwwellbutrin.com>,
<wwwamoxil.com>, <wwwavandia.com>, <wwwbactroban.com>,
<wwwpaxilcr.com>, and <wwwzovirax.com> domain names
be TRANSFERRED from Respondent to GlaxoSmithKline plc.
James
A> Crary, Panelist
Dated:
January 27, 2004
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