DECISION

SmithKline Beecham Corp., SB Pharmco Puerto Rico Inc., Glaxo Group Ltd., and BW USA, Inc. v. John Barry d/b/a Apex Domain and NA a/k/a Domains No Bad

Claim Number:  FA0312000218920

PARTIES

Complainants are SmithKline Beecham Corp., SB Pharmco Puerto Rico Inc., Glaxo Group Ltd., and BW USA, Inc. (collectively, “Complainant”), represented by Laurence R. Hefter, of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., 1300 I Street, NW, Washington, D.C. 20005-3315.  Respondent is John Barry d/b/a Apex Domain and NA a/k/a Domains No Bad, 5444 Arlington Ave., #g14, Bronx, NY 10471 (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <wwwserevent.com>, <wwwwellbutrin.com>, <wwwamoxil.com>, <wwwavandia.com>, <wwwbactroban.com>, <wwwpaxilcr.com>, and <wwwzovirax.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.

James a. Crary as Panelist.

PROCEDURAL HISTORY

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 16, 2003, Enom, Inc. confirmed to the Forum that the domain names <wwwserevent.com>, <wwwwellbutrin.com>, <wwwamoxil.com>, <wwwavandia.com>, <wwwbactroban.com>, <wwwpaxilcr.com>, and <wwwzovirax.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 December 18, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 7, 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@wwwserevent.com, postmaster@wwwwellbutrin.com, postmaster@wwwamoxil.com, postmaster@wwwavandia.com, postmaster@wwwbactroban.com, postmaster@wwwpaxilcr.com, and postmaster@wwwzovirax.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 13, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James A. Crary 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 <wwwserevent.com>, <wwwwellbutrin.com>, <wwwamoxil.com>, <wwwavandia.com>, <wwwbactroban.com>, <wwwpaxilcr.com>, and <wwwzovirax.com> domain names are confusingly similar to Complainant’s SEREVENT, WELLBUTRIN, AMOXIL, AVANDIA, BACTROBAN, PAXIL, PAXIL CR, and ZOVIRAX marks.

2. Respondent does not have any rights or legitimate interests in the <wwwserevent.com>, <wwwwellbutrin.com>, <wwwamoxil.com>, <wwwavandia.com>, <wwwbactroban.com>, <wwwpaxilcr.com>, and <wwwzovirax.com> domain names.

3. Respondent registered and used the <wwwserevent.com>, <wwwwellbutrin.com>, <wwwamoxil.com>, <wwwavandia.com>, <wwwbactroban.com>, <wwwpaxilcr.com>, and <wwwzovirax.com> domain names in bad faith.

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

FINDINGS

            The individual Complainants in this dispute are each wholly owned subsidiaries of

GlaxoSmithKline plc, a company based out of the United Kingdom, and thus collectively have standing to bring the Complaint.  See Int’l Olympic Committee v. Boyden, FA 201977 (Nat. Arb. Forum  Dec. 19, 2003) (“it is permissible for two Complainants to submit a single Complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the Complaint as one entity”).

In addition, the registration information for each of the disputed domain names maintains the same mailing address, which is also the identical address of the notorious cybersquatter “John Barry.”  Therefore, the Panel finds that John Barry is the registrant of each of the disputed domain names, and that the Complaint complies with Rule 3(c).

Complainant is one of the world’s leading pharmaceutical and healthcare companies, with U.S. $31 billion in sales in 2002.  Complainant maintains a broad product line of prescriptive medicines, vaccinations, and other healthcare products.  Complainant owns registrations with the United States Patent and Trademark Office (“USPTO”) for each of the following marks: SEREVENT (Reg. No. 1628891), WELLBUTRIN (Reg. No. 1160590), AMOXIL (Reg. No. 958883), AVANDIA (Reg. No. 2241060), BACTROBAN (Reg. No. 1269595), PAXIL (Reg. No. 1821952), PAXIL CR (Reg. No. 2726889), ZOVIRAX (Reg. No. 1141502).

Each of Complainant’s marks was first used prior to Respondent’s registration of the disputed domain names.  Furthermore, every mark except PAXIL CR was registered with the USPTO prior to Respondent’s registration of the disputed domain names

Respondent registered the disputed domain names in 2002 and 2003.  Respondent uses the names to direct Internet users to pharmacy websites located at <prescriptions.org> and, in the case of <wwwzovirax.com>, to a web directory that lists links to pharmacies (collectively, the “Pharmacy Websites”).  Respondent presumably receives compensation in the form of commissions from the Pharmacy Websites for the Internet traffic generated to those sites.  The Pharmacy Websites advertise and sell Complainant’s pharmaceuticals and numerous other pharmaceuticals, including the products of Complainant’s competitors. 

Respondent has a lengthy history of registering and using trademark-related domain names in bad faith.  See e.g. Sears, Roebuck and Co. v. Barry, FA 105210 (Nat. Arb. Forum Apr. 1, 2002); Rochester Inst. of Tech. v Domain For Sale Inc. a/k/a Barry, FA 112475 (Nat. Arb. Forum June 3, 2002); Am. Nat’l Red Cross v Domains a/k/a Best Domains a/k/a Barry, FA 143684 (Nat. Arb. Forum Mar. 4, 2003).

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 SEREVENT, WELLBUTRIN, AMOXIL, AVANDIA, BACTROBAN, PAXIL, PAXIL CR, and ZOVIRAX marks through registration with the USPTO and continuous use.  See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that the 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 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”).

Each of the disputed domain names incorporates Complainant’s marks in their entirety while merely adding the “www” prefix to the marks in an attempt to capitalize on Internet user error.  See Oki Data Americas, Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001) (“the fact that a domain name incorporates a Complainant’s registered mark is sufficient to establish identical or confusing similarity for purposes of the Policy”); see also 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 also 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 Neiman Marcus Group, Inc. v. S1A, FA 128683 (Nat. Arb. Forum Dec. 6, 2002) (holding confusing similarity has been established because the prefix "www" does not sufficiently differentiate the <wwwneimanmarcus.com> domain name from Complainant's NEIMAN-MARCUS mark); see also Dana Corp. v. $$$ This Domain Name Is For Sale $$$, FA 117328 (Nat. Arb. Forum Nov. 19, 2002) (finding Respondent's <wwwdana.com> domain name confusingly similar to Complainant's registered DANA mark because Complainant's mark remains the dominant feature).

Policy ¶ 4(a)(i) is established.

Rights or Legitimate Interests

Respondent has not asserted any rights or legitimate interests in the domain names.  Therefore, the Panel may presume 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 Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where Respondent fails to respond).

No evidence has been advanced that Respondent is commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii), and the WHOIS registration information fails to imply that Respondent is commonly known by the names.  See Tercent Inc. v. 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 Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).

In addition, Respondent’s typosquatting of registered marks is not 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 Nat’l Ass’n of  Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting as a means of redirecting consumers against their will to another site, does not qualify as a bona fide offering of goods or services, whatever may be the goods or services offered at that site.”); see also 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).

Policy ¶ 4(a)(ii) is established.

Registration and Use in Bad Faith

Respondent has registered and used the disputed domain names in bad faith because Respondent has engaged in the manipulative practice of typosquatting, which evidences actual notice of Complainant’s marks.  See RE/MAX Int’l, Inc. v. Seocho, FA 142046 (Nat. Arb. Forum Feb. 25, 2003) (inferring that Respondent’s registration of the <wwwremax.com> domain name, incorporating Complainant’s entire mark, was done with actual notice of Complainant’s rights in the mark prior to registering the infringing domain name, evidencing bad faith); 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).

The disputed domain names were also registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent is attracting Internet users to sites that offer goods that are similar to those of Complainant.  See Computerized Sec. Sys., Inc. d/b/a SAFLOK 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 TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where Respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of Complainant); 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)).

Moreover, Respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent attracted Internet users to its website in the hopes of stealing Complainant’s customers by causing confusion with Complainant’s mark.  See 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 Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) where Respondent initially used the domain name at issue to resolve to a website offering similar services as Complainant and were offered to the same market).

Policy ¶ 4(a)(iii) is established.

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 <wwwserevent.com>, <wwwwellbutrin.com>, <wwwamoxil.com>, <wwwavandia.com>, <wwwbactroban.com>, <wwwpaxilcr.com>, and <wwwzovirax.com> domain names be TRANSFERRED from Respondent to GlaxoSmithKline plc.

James A> Crary, Panelist

Dated:  January 27, 2004

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