DECISION

Glaxo Group Limited v. WWW Zban c/o David Glenmore

Claim Number:  FA0310000203164

PARTIES

Complainant is Glaxo Group Limited (“Complainant”) is represented by Maury M. Tepper of Womble Carlyle Sandridge & Rice, PLL, 2100 First Union Capitol Canter, PO Box 831, Raleigh, NC 27602.  Respondent is David Glenmore c/o WWW Zban (“Respondent”), 101-1001 West Broadway, Unit 264, Vancouver, BC V6H 4B1.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <wwwzyban.com>, registered with Register.com.

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.

Judge Harold Kalina (Ret.) 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 14, 2003, Register.com confirmed by e-mail to the Forum that the domain name <wwwzyban.com> is registered with Register.com and that Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.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 October 21, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 10, 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@wwwzyban.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 20, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Judge Harold Kalina (Ret.) 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 name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <wwwzyban.com> domain name is confusingly similar to Complainant’s ZYBAN mark.

2. Respondent does not have any rights or legitimate interests in the <wwwzyban.com> domain name.

3. Respondent registered and used the <wwwzyban.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant is an international company that develops, markets, and sells prescription and non-prescription medicines.  Complainant owns the registration for the ZYBAN mark and related marks (Reg. No. 2144141 and Reg. No. 2172529, registered, respectively, on March 17 1998 and July 14, 1998, for pharmaceutical preparations and printed matter to quit smoking).  Complainant also owns the registration for the domain name <zyban.com>.

Respondent registered the domain name <wwwzyban.com> on January 17, 2002.  Entering the disputed domain name redirects the user to the ZYBAN page of <usaprescription.com>. 

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 has established rights in the ZYBAN mark through registration with the U.S. Patent and Trademark Office and subsequent continuous use of the mark in commerce.  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 Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing).

The disputed domain name, <wwwzyban.com>, is confusingly similar to Complainant’s ZYBAN mark.  Even though Respondent added “www” to Complainant’s mark, this difference is insufficient to differentiate Respondent’s <wwwzyban.com> domain name from Complainant’s ZYBAN mark.  Therefore, Complainant has established that the <wwwzyban.com> domain name is confusingly similar to Complainant’s ZYBAN mark.  See 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 alsoMarie 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).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent has failed to submit a Response in this proceeding.  Thus, the Panel is permitted to accept all reasonable allegations and inferences in the Complaint as true.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant 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”).

Respondent is not using the domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the trademark pursuant to Policy ¶ 4(c)(iii).  Complainant claims that Respondent is using the disputed domain name to redirect Internet users to a pharmaceuticals sales site.  The Panel infers that Respondent is taking advantage of Complainant’s mark by diverting Internet users to competing commercial site.  See Am. Online Inc. v. Shenzhen JZT Computer Software Co., D2000-0809 (WIPO Sept. 6, 2000) (finding that Respondent’s operation of website offering essentially the same services as Complainant and displaying Complainant’s mark was insufficient for a finding of bona fide offering of goods or services); see G.D. Searle & Co. v. Fred Pelham, FA 117911 (Nat. Arb. Forum Sept. 19, 2002) (finding that because Respondent is using the infringing domain name to sell prescription drugs it can be inferred that Respondent is opportunistically using Complainant’s mark in order to attract Internet users to its website).

Although Respondent’s WHOIS contact information is for WWW Zban, the fame of the ZYBAN mark prevents him from asserting a legitimate interest in it.  Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding that no person besides Complainant could claim a right or a legitimate interest with respect to the domain name <nike-shoes.com>); see also Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well-established use of the mark).  In addition, Complainant has not licensed or authorized Respondent to use the <wwwzyban.com> domain name.  Thus, it is reasonable for the Panel to infer that Policy ¶ 4(c)(ii) does not apply to Respondent.

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Because of the fanciful nature of the ZYBAN mark, the Panel can infer that Respondent knew of Complainant’s rights in the mark at registration.  See G.D. Searle & Co. v. 24-7-Commerce.com, FA 114707 (Nat. Arb. Forum July 31, 2002) (“It 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); see also Pfizer, Inc. v. Internet Gambiano Prods., D2002-0325 (WIPO June 20, 2002) (finding Respondent was aware of and had knowledge of Complainant’s mark when it registered the domain name because Complainant’s mark was a coined arbitrary term with no meaning apart from Complainant’s products).

Complainant is a manufacturer and  <usaprescription.com> is a vender of Complainant’s product.  Respondent’s use of Complainant’s mark to redirect users to Complainant’s vendor is not “competition” in a strict sense.  However, Respondent is using the confusingly similar domain name to create consumer confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the disputed domain name and the referral site, constituting bad faith use pursuant to Policy ¶ 4(b)(iv).  See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website); 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)).

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 <wwwzyban.com> domain name be TRANSFERRED from Respondent to Complainant.

Judge Harold Kalina (Ret.), Panelist

Dated:  December 1, 2003

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