SmithKline Beecham Corporation v. Green
Domains
Claim
Number: FA0312000219165
Complainant is SmithKline Beecham Corporation (“Complainant”),
represented by Laurence R. Hefter, of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, 1300 I
Street, NW, Washington, DC 20005-3315.
Respondent is Green Domains (“Respondent”), 5444 Arlington Ave, Bronx, NY
10472.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <wwwvaltrex.com> and
<wwwavodart.com>, registered with Intercosmos Media Group, Inc. d/b/a
Directnic.Com.
The
undersigned certifies that he has acted independently and impartially and to
the best of his 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 (the "Forum")
electronically on December 12, 2003; the Forum received a hard copy of the
Complaint on December 12, 2003.
On
December 12, 2003, Intercosmos Media Group, Inc. d/b/a Directnic.Com confirmed
by e-mail to the Forum that the domain names <wwwvaltrex.com> and
<wwwavodart.com> are registered with Intercosmos Media Group, Inc.
d/b/a Directnic.Com and that Respondent is the current registrant of the names.
Intercosmos Media Group, Inc. d/b/a Directnic.Com has verified that Respondent
is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.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
December 15, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of January 5, 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@wwwvaltrex.com and postmaster@wwwavodart.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 12, 2004, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed John J. Upchurch 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’s
parent company GlaxoSmithKline.
A. Complainant makes the following assertions:
1. Respondent’s <wwwvaltrex.com> and
<wwwavodart.com> domain names are confusingly similar to
Complainant’s VALTREX and AVODART marks.
2. Respondent does not have any rights or
legitimate interests in the <wwwvaltrex.com> and
<wwwavodart.com> domain names.
3. Respondent registered and used the <wwwvaltrex.com>
and <wwwavodart.com> domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant is a
wholly owned subsidiary of GlaxoSmithKline plc. Complainant is one of the world’s leading pharmaceutical and
healthcare companies, with $31 billion in sales in 2002. Complainant produces and markets its
prescription medicines under numerous trademarks, including the marks VALTREX
and AVODART. Complainant registered and
uses the <valtrex.com> and <avodart.com> domain names in
conjunction with its business.
Complainant registered the VALTREX and AVODART marks with the U.S.
Patent and Trademark Office (“USPTO”) on February 14, 1995 and July 4, 2000
respectively (Reg. Nos. 1,879,098 and 2,364,700).
Respondent
registered the <wwwvaltrex.com> and <wwwavodart.com> domain
names on November 1, 2002 and April 21, 2002 respectively. The domain names redirect Internet users to
<americanpharmacy.com>, a pharmacy website. The website advertises and sells Complainant’s products and
products of Complainant’s competitors.
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 marks through its registration of the marks with the
USPTO. 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 Smart Design LLC v.
Hughes, D2000-0993 (WIPO Oct. 18, 2000) (holding that ICANN Policy ¶
4(a)(i) does not require Complainant to demonstrate ‘exclusive rights,’ but
only that Complainant has a bona fide basis for making the Complaint in the
first place).
Respondent’s
domain names are confusingly similar to Complainant’s marks because each domain
name incorporates one of Complainant’s marks and merely adds the prefix “www”
and the generic top-level domain “.com.”
See 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 Pomellato
S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding
<pomellato.com> identical to Complainant’s mark because the generic
top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Due to
Respondent’s failure to contest the allegations of the Complaint, the Panel may
infer 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 Parfums Christian Dior v. QTR
Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a
Response, Respondent has failed to invoke any circumstance which could demonstrate
any rights or legitimate interests in the domain name).
Respondent’s use
of the domain names to commercially benefit from Complainant’s goodwill and to
redirect Internet users to websites selling Complainant’s products and products
of Complainant’s competitors does not constitute 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
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 Nike, Inc. v. Dias, FA 135016
(Nat. Arb. Forum Jan. 7, 2002) (finding no “bona fide” offering of goods or
services where Respondent used Complainant’s mark without authorization to
attract Internet users to its website, which offered both Complainant’s
products and those of Complainant’s competitors).
In addition,
Respondent uses the domain names to take advantage of Internet users who
attempt to access Complainant’s websites but mistakenly omit the period after
the “www” prefix. Respondent has
engaged in typosquatting, which is evidence that Respondent lacks rights and
legitimate interests in the domain names.
See 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); 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”).
Furthermore, the
record fails to establish that Respondent is commonly known by either of the
domain names. The record also fails to
establish that Respondent is authorized or licensed to register or use domain
names that incorporate Complainant’s marks.
Therefore, the Panel concludes that Respondent lacks rights and
legitimate interests in the domain names pursuant to Policy ¶ 4(c)(ii). See Great S. Wood Pres., Inc. v. TFA
Assocs., FA 95169 (Nat. Arb.
Forum Aug. 5, 2000) (finding that Respondent was not commonly known by the
domain name <greatsouthernwood.com> where Respondent linked the domain
name to <bestoftheweb.com>); see also Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests
where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior
rights in the domain name precede Respondent’s registration; (3) Respondent is
not commonly known by the domain name in question).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
It may be
inferred that Respondent had actual or constructive knowledge of Complainant’s
rights in the marks because the marks are registered with the USPTO and are
fanciful. Registration of a domain
name, despite knowledge of Complainant’s rights, is evidence of bad faith
pursuant to Policy ¶ 4(a)(iii). See Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration); see also Orange Glo Int’l v. Blume, FA 118313
(Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the
Principal Register of the USPTO, a status that confers constructive notice on
those seeking to register or use the mark or any confusingly similar variation
thereof”); see also 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).
Furthermore,
Respondent presumably commercially benefits through its use of the domain names
by receiving commissions from Internet vendors. Respondent’s use of the misleading domain names for commercial
benefit and to disrupt Complainant’s business constitutes bad faith
registration and use pursuant to Policy ¶¶ 4(b)(iii) and (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,
evidence of bad faith registration and use pursuant to Policy 4(b)(iv)); see
also Fossil, Inc. v. NAS, FA
92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com>
domain name from Respondent, a watch dealer not otherwise authorized to sell
Complainant’s goods, to Complainant).
In addition,
Respondent has engaged in typosquatting, which constitutes bad faith pursuant
to Policy ¶ 4(a)(iii). 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); see also 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”).
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 <wwwvaltrex.com> and <wwwavodart.com>
domain names be TRANSFERRED from Respondent to Complainant’s parent
company GlaxoSmithKline.
John
J. Upchurch, Panelist
Dated: January 26, 2004
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