DECISION

SmithKline Beecham Corporation and SmithKline Beecham plc v. Eric Kaiser

Claim Number: FA0305000157290

PARTIES

Complainant is SmithKline Beecham Corporation and SmithKline Beecham plc, King Of Prussia, PA (“Complainant”) represented by Laurence R. Hefter of Finnegan Henderson Farabow Garrett & Dunner L.L.P. Respondent is Eric Kaiser, Colorado Springs, CO (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <augmentin.net> registered with Go Daddy Software, Inc. and <buy-paxil-celexa-zoloft-prozac-remeron-fluoxetine-online.com> registered with Stargate.com, 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.

Sandra Franklin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on May 9, 2003; the Forum received a hard copy of the Complaint on May 12, 2003.

On May 14, 2003, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain name <augmentin.net> is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. 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 May 20, 2003, Stargate.com, Inc. confirmed by e-mail to the Forum that the domain name <buy-paxil-celexa-zoloft-prozac-remeron-fluoxetine-online.com> is registered with Stargate.com, Inc. and that Respondent is the current registrant of the name. Stargate.com, Inc. has verified that Respondent is bound by the Stargate.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the Policy.

On May 21, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 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@augmentin.net and postmaster@buy-paxil-celexa-zoloft-prozac-remeron-fluoxetine-online.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 June 17, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra Franklin 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 <augmentin.net> domain name be transferred from Respondent to Complainant and the <buy-paxil-celexa-zoloft-prozac-remeron-fluoxetine-online.com> domain name be cancelled.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <augmentin.net> domain name is identical to Complainant’s AUGMENTIN mark. Respondent’s <buy-paxil-celexa-zoloft-prozac-remeron-fluoxetine-online.com> domain name is confusingly similar to Complainant’s PAXIL mark.

2. Respondent does not have any rights or legitimate interests in the <augmentin.net> and <buy-paxil-celexa-zoloft-prozac-remeron-fluoxetine-online.com> domain names.

3. Respondent registered and used the <augmentin.net> and <buy-paxil-celexa-zoloft-prozac-remeron-fluoxetine-online.com> domain names in bad faith.

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

FINDINGS

Complainant holds a number of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the AUGMENTIN mark in relation to antibiotic preparations, including Reg. No. 1,144,669 (registered on December 30, 1980).

Complainant also holds several trademark registrations with the USPTO for the PAXIL mark (Reg. No. 1,821,952 registered on February 15, 1994) related to pharmaceuticals, namely, antidepressants.

Complainant maintains numerous websites that are used for the sale of its products, including <augmentin.com> and <paxil.com>.

Respondent registered the <augmentin.net> domain name on November 19, 2002. Respondent is using the disputed domain name to sell Complainant’s Augmentin prescription pharmaceutical, along with numerous other pharmaceuticals, without a prescription.

Respondent registered the <buy-paxil-celexa-zoloft-prozac-remeron-fluoxetine-online.com> domain name on February 21, 2002. Respondent is using the disputed domain name likewise to offer several pharmaceuticals, including Complainant’s Paxil prescription pharmaceutical without a prescription.

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 its rights in the AUGMENTIN and PAXIL marks through registration with the USPTO and continuous use in commerce.

Respondent’s <augmentin.net> domain name is identical to Complainant’s AUGMENTIN mark because the disputed domain name incorporates the entire mark and merely adds the generic top-level domain (“gTLD”) “.net” to the end of Complainant’s mark. The addition of a gTLD does not significantly differentiate a domain name from a mark because a gTLD is a requirement for a domain name on the Internet. See Nike, Inc. v. Coleman, D2000-1120 (WIPO Nov. 6, 2000) (finding that the domain name <nike.net> is identical to the Complainant’s famous NIKE mark); see also Kabushiki Kaisha Toshiba v. Shan Computers, D2000-0325 (WIPO June 27, 2000) (finding that the domain name <toshiba.net> is identical to the Complainant’s trademark TOSHIBA).

Respondent’s <buy-paxil-celexa-zoloft-prozac-remeron-fluoxetine-online.com> domain name is confusingly similar to Complainant’s PAXIL mark because the domain name appropriates Complainant’s mark and adds the generic term “buy” and “online,” and the names of competing pharmaceuticals. Neither the addition of the generic terms nor the names of other pharmaceuticals sufficiently distinguish the disputed domain name from Complainant’s mark because the addition of competing products does not defeat a confusingly similar claim with regard to Policy ¶ 4(a)(i). See G.D. Searle & Co. v. Fred Pelham, FA 117911 (Nat. Arb. Forum Sept. 19, 2002) (finding that the addition of other drug names does not create a distinct mark capable of overcoming a claim of confusing similarity, “it merely creates a domain name with severe potential to confuse Internet users as to the source, sponsorship and affiliation of the domain”); see also G.D. Searle & Co. v. Entm’t Hosting Servs., Inc., FA 110783 (Nat. Arb. Forum June 3, 2002) (“The Panel concludes that the <viagra-propecia-xenical-celebrex-claritin-prescriptions.com> domain name is confusingly similar to Complainant’s CELEBREX mark because the mere addition of related competing products’ names in the domain name does not defeat a confusing similarity claim”).

The Panel finds that Complainant has established Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent has neglected to respond to Complainant’s allegations. Thus, the Panel may accept all reasonable allegations and inferences in the Complaint as true. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertion in this regard”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence).

Furthermore, based on Respondent’s failure to contest the Complaint, the Panel may presume that Respondent lacks any rights to or legitimate interests in the disputed domain name for purposes of Policy ¶ 4(a)(ii). See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where Respondent fails to respond); see also 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).

Respondent is using both the <augmentin.net> domain name and the <buy-paxil-celexa-zoloft-prozac-remeron-fluoxetine-online.com> domain name to sell pharmaceuticals, including Complainant’s pharmaceuticals, without a license or authorization. Respondent’s use of confusingly similar domain names to sell Complainant’s goods does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See G.D. Searle & Co. v. Mahoney, FA 112559 (Nat. Arb. Forum June 12, 2002) (finding Respondent’s use of the disputed domain name to solicit pharmaceutical orders without a license or authorization from Complainant does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i)); see also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where Respondent attempted to profit using the Complainant’s mark by redirecting Internet traffic to its own website).

There is no evidence in the record and Respondent has presented no proof that it is commonly known by either <augmentin.net> or <buy-paxil-celexa-zoloft-prozac-remeron-fluoxetine-online.com>. Thus, Respondent has failed to establish that it has rights to or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii). See 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 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").

Accordingly, the Panel finds that Complainant has established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent is using the <augmentin.net> and <buy-paxil-celexa-zoloft-prozac-remeron-fluoxetine-online.com> domain names to sell Complainant’s and Complainant’s competitors products without a license or authorization. Respondent’s use of the disputed domain names demonstrates that Respondent is intentionally attempting to attract Internet users to Respondent’s websites for commercial gain by creating a likelihood of confusion with Complainant’s mark, which establishes bad faith registration and use under 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 G.D. Searle & Co. v. 24-7-Commerce.com, FA 114707 (Nat. Arb. Forum July 31, 2002) (finding that although Respondent failed to come forward and provide evidence of a planned use for the <celebrex-vioxx-ultram-super-blue-stuff.com> domain name, due to the fact that the domain name incorporates marks of competing pharmaceutical products, it can be inferred that Respondent registered the domain name for ultimate use as an online pharmacy).

Furthermore, Respondent’s incorporation of Complainant’s marks into Respondent’s domain names suggests that Respondent had actual or constructive notice of Complainant’s rights in its mark. The registration and use of a domain name confusingly similar to a registered trademark despite notice of the mark holder’s rights is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See 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); 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 registering the domain name because Complainant’s mark was a coined arbitrary term with no meaning apart from Complainant’s products).

The Panel finds that Policy ¶ 4(a)(iii) has been established.

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <augmentin.net> domain name be TRANSFERRED from Respondent to Complainant and the <buy-paxil-celexa-zoloft-prozac-remeron-fluoxetine-online.com> domain name be CANCELLED.

Sandra Franklin, Panelist

Dated:  July 1, 2003

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