DECISION

Glaxo Group Limited v. Dan Grigor

Claim Number:  FA0310000203165

PARTIES

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.

PANEL

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.

PROCEDURAL HISTORY

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.comand 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.

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

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.

FINDINGS

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. 

DISCUSSION

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.

Identical and/or Confusingly Similar

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. 

Rights or Legitimate Interests

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.

Registration and Use in Bad Faith

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.

DECISION

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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