Glaxo Group Limited v. Eric Kaiser
Claim
Number: FA0506000495487
Complainant is Glaxo Group Limited (“Complainant”), represented
by Glenn A. Gundersen of Dechert LLP, 4000
Bell Atlantic Tower, 1717 Arch Street, Philadelphia, PA 19103-2793. Respondent is Eric Kaiser (“Respondent”), 3508 Van Teylingen Dr., Apt. D,
Colorado Springs, CO 80917.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <zofran-online.com> and <buy-imitrex.com>,
registered with Go Daddy Software, Inc.
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.
James
A. Carmody, Esq., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on June
13, 2005; the National Arbitration Forum received a hard copy of the Complaint
on June 15, 2005.
On
June 14, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain names <zofran-online.com> and <buy-imitrex.com>
is registered with Go Daddy Software, Inc. and that Respondent is the current
registrant of the names. 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
June 20, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
July 11, 2005 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@zofran-online.com and postmaster@buy-imitrex.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 National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
July 19, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed James A.
Carmody, Esq., as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration 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 National Arbitration 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 <zofran-online.com>
and <buy-imitrex.com> domain names are confusingly similar to
Complainant’s ZOFRAN and IMITREX marks, respectively.
2. Respondent does not have any rights or
legitimate interests in the <zofran-online.com> and <buy-imitrex.com>
domain names.
3. Respondent registered and used the <zofran-online.com>
and <buy-imitrex.com> domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, Glaxo Group Limited, is a subsidiary of
GlaxoSmithKline plc, which is a world leading company in research-based
pharmaceuticals, headquartered in the United Kingdom. Complainant holds trademark registrations with the United States
Patent and Trademark Office (“USPTO”) for the ZOFRAN (Reg. No. 1,592,702 issued
April 24, 1990) and IMITREX (Reg. No. 1,787,324 issued August 10, 1993) marks. In addition, Complainant holds registrations
for the marks in numerous countries throughout the world. Furthermore, each term is coined and
inherently distinctive.
Since 1991, Complainant has used its ZOFRAN mark in connection with
antiemetic preparations that are useful in the treatment of post-operative
nausea and nausea related to chemotherapy and radiation treatment in the field
of oncology. Complainant has used its
IMITREX mark since 1993 in association with the treatment of migraine
headaches. In 2004, global sales of
ZOFRAN exceeded $1.8 billion, while sales of IMITREX reached more than $1
billion in the United States.
Respondent registered the <buy-imitrex.com> domain name on May 2, 2003 and the
<zofran-online.com> domain name on May 22, 2003, at least a decade
after Complainant started using the ZOFRAN and IMITREX marks. The domain names resolve to websites
purporting to offer both Complainant’s products and their generic equivalents. Both websites contain copyrighted materials
owned by Complainant for use by patients and healthcare professionals in the
administration and use of the pharmaceutical products. In addition, the <zofran-online.com>
domain name displays the GSK logo and GLAXOSMITHKLINE mark owned by
Complainant’s affiliate, SmithKline Beecham plc.
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. The Panel is entitled to
accept all reasonable allegations and inferences set forth in the Complaint as
true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing,
inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the
respondent’s failure to respond allows all reasonable inferences of fact in the
allegations of the complaint 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.”).
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 that it owns registrations for the ZOFRAN and IMITREX marks with
the USPTO. By registering its marks
with a federal authority, Complainant has made a prima facie case that
it has rights in the marks, which Respondent is entitled to refute. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5,
2002) (“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.”);
see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803
(Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations
establish Complainant's rights in the BLIZZARD mark.”). However, Respondent has not provided a
response, which means that Complainant’s presumption of rights has gone
unrebutted. The Panel, therefore, finds
that Complainant has established rights in the marks for the purposes of
fulfilling Policy ¶ 4(a)(i).
Each of the <zofran-online.com>
and <buy-imitrex.com> domain names was formed by adding a
hyphen and a generic term to either Complainant’s ZOFRAN or IMITREX mark. Such minor additions to Complainant’s
registered marks do not create domain names distinct from Complainant’s marks,
especially where each domain name incorporates one of Complainant’s marks in its
entirety. See Chernow
Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that
the use or absence of punctuation marks, such as hyphens, does not alter the
fact that a name is identical to a mark"); see also Quixtar
Inv., Inc. v. Smithberger, D2000-0138 (WIPO Apr. 19, 2000) (finding that
because the domain name <quixtar-sign-up.com> incorporates in its
entirety the complainant’s distinctive mark, QUIXTAR, the domain name is
confusingly similar). Therefore, the
Panel finds that each of the disputed domain names is confusingly similar to
either Complainant’s ZOFRAN or IMITREX mark.
The Panel finds
that Complainant has satisfied Policy ¶ 4(a)(i).
It has been
established under the Policy that the complainant has the initial burden of
proving that the respondent lacks rights and legitimate interests in the
disputed domain name. In Compagnie
Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May
14, 2001), the panel held:
Proving
that the Respondent has no rights or legitimate interests in respect of the
Domain Name requires the Complainant to prove a negative. For the purposes of
this sub paragraph, however, it is sufficient for the Complainant to show a
prima facie case and the burden of proof is then shifted on to the shoulders of
Respondent. In those circumstances, the
common approach is for respondents to seek to bring themselves within one of
the examples of paragraph 4(c) or put forward some other reason why they can
fairly be said to have a relevant right or legitimate interests in respect of
the domain name in question.
Id.; see also Do The Hustle, LLC
v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the
complainant has asserted that the respondent has no rights or legitimate
interests with respect to the domain name, it is incumbent on the respondent to
come forward with concrete evidence rebutting this assertion because this
information is “uniquely within the knowledge and control of the respondent”). Having found that Complainant has met its
initial burden in establishing a prima facie case, the Panel will now
conduct an analysis of whether Respondent has met its burden to establish
rights or legitimate interests in the disputed domain names under Policy ¶ 4(c).
Complainant
asserts that Respondent is not commonly known by the <zofran-online.com>
and <buy-imitrex.com> domain names. Furthermore, the WHOIS information for the disputed domain names
identifies Respondent as “Eric Kaiser” and indicates no affiliation between
Respondent and the disputed domain names aside from Respondent’s registration
of the domain names. The Panel has not
received a response from Respondent or any evidence that Respondent is commonly
known by the disputed domain names.
Thus, Respondent has failed to establish rights or legitimate interests
pursuant to Policy ¶ 4(c)(ii). See
Tercent Inc. v. Lee 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 Am.
W. Airlines, Inc. v. Paik, FA 206396 (Nat.
Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name
under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent
is not commonly known by the [<awvacations.com>] domain name.”); see
also Pavillion Agency, Inc. v.
Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the
respondents’ failure to respond can be construed as an admission that they have
no legitimate interest in the domain names).
Moreover,
Respondent is using the <zofran-online.com> and <buy-imitrex.com>
domain names to operate commercial websites that purport to sell both
Complainant’s pharmaceutical products sold under the ZOFRAN and IMITREX marks
and their generic equivalents. The
websites contain copyrighted materials owned by Complainant and display the
mark and logo of one of Complainant’s affilate companies. Such use of Complainant’s marks in domain
names to attract Complainant’s potential consumers to a website that sells
Complainant’s products and those of others for Respondent’s benefit is not a
use in connection with a bona fide offering of goods or services or a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) or
(iii). See G.D. Searle &
Co. v. Mahony, FA 112559 (Nat. Arb. Forum June 12, 2002) (finding the
respondent’s use of the disputed domain name to solicit pharmaceutical orders
without a license or authorization from the complainant does not constitute a bona
fide offering of goods or services under Policy ¶ 4(c)(i)); see also
Hewlett-Packard Co. v. Inversiones HP Milenium
C.A., FA 105775 (Nat. Arb. Forum Apr. 12,
2002) (“Respondent’s use of the confusingly similar domain name
[<hpmilenium.com>] to sell counterfeit versions of Complainant’s [HP]
products is not a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i).”); see also Nike, Inc. v. Dias, FA 135016 (Nat.
Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or
services where the respondent used the complainant’s mark without authorization
to attract Internet users to its website, which offered both the complainant’s
products and those of the complainant’s competitors). In addition, Respondent has not offered any arguments to contest
Complainant’s contentions that Respondent has not made a bona fide
offering of goods or services or a legitimate noncommercial or fair use of the
domain name, which leads the Panel to the conclusion that respondent has not
established rights or legitimate interests under Policy ¶ 4(c)(i) or
(iii). See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's
failure to respond not only results in its failure to meet its burden, but also
will be viewed as evidence itself that Respondent lacks rights and legitimate
interests in the disputed domain name.”).
The Panel finds
that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant’s
business involves selling pharmaceutical products, including those sold under
the ZOFRAN and IMITREX marks. Due to
Respondent’s use of the <zofran-online.com> and <buy-imitrex.com>
domain names to offer pharmaceutical products for sale to Internet users,
Respondent is acting as a competitor of Complainant. Thus, by using domain names that contain Complainant’s marks to
attract Internet users searching for Complainant’s products to Respondent’s
competing website, Respondent is disrupting Complainant’s business. This is evidence that Respondent registered
and used the disputed domain names in bad faith pursuant to Policy ¶
4(b)(iii). See Tribeca Film Ctr., Inc. v. Brusasco-Mackenzie, D2000-1772 (WIPO Apr. 10, 2001) (“[A]
respondent can ‘disrupt the business of a competitor’ only if it offers goods
or services that can compete with or rival the goods or services offered by the
trademark owner.”); see also Lambros
v. Brown, FA 198963 (Nat. Arb. Forum Nov.
19, 2003) (finding that the respondent registered a domain name primarily to
disrupt its competitor when it sold similar goods as those offered by the
complainant and “even included Complainant's personal name on the website,
leaving Internet users with the assumption that it was Complainant's business
they were doing business with”); see also S. Exposure v. S. Exposure, Inc., FA
94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad
faith by attracting Internet users to a website that competes with the
complainant’s business).
Respondent is
using the <zofran-online.com> and <buy-imitrex.com>
domain names, each of which contains either Complainant’s ZOFRAN or IMITREX
mark in its entirety, to divert Internet users searching for Complainant’s
pharmaceutical products to Respondent’s fraudulent websites, where Respondent
solicits orders for Complainant’s pharmaceutical products and their generic
equivalents. By using Complainant’s
marks in the domain names to create a likelihood of confusion, Respondent is attempting
to attract Internet users who are searching for Complainant’s products and
services to Respondent’s website for Respondent’s commercial benefit. Respondent’s activities are evidence of bad
faith registration and use under Policy ¶ 4(b)(iv). See Merrell Pharmaceuticals Inc. v. Fisher, FA 420655
(Nat. Arb. Forum Apr. 4, 2005) (finding bad faith under Policy ¶ 4(b)(iv) where
the respondent was using the <buy-allegra.us> mark to sell the
complainant’s ALLEGRA products); see also Fanuc Ltd v. Mach. Control Servs., FA 93667 (Nat. Arb. Forum Mar.
13, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by creating a
likelihood of confusion with the complainant's mark by using a domain name
identical to the complainant’s mark to sell the complainant’s products); see
also 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 the complainant’s well-known
marks, thus creating a likelihood of confusion strictly for commercial gain).
The Panel finds
that Complainant has satisfied Policy ¶ 4(a)(iii).
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <zofran-online.com> and <buy-imitrex.com>
domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: July 28, 2005
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