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Glaxo Group Limited and The Wellcome Foundation Limited v. Johnny Carpela [2005] GENDND 809 (6 May 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Glaxo Group Limited and The Wellcome Foundation Limited v. Johnny Carpela

Case No. D2005-0202

1. The Parties

The Complainants are Glaxo Group Limited and The Wellcome Foundation Limited, Brentford, Middlesex, United Kingdom of Great Britain and Northern Ireland, represented by Stephen Reid, Brentford, Middlesex, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Johnny Carpela, Sumas, Washington, United States of America.

2. The Domain Names and Registrar

The disputed domain names <advair.net>, <dermovate.com> and <leukeran.com> are registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 22, 2005. On February 22, 2005, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain names at issue. On February 23, 2005, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 28, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was March 20, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 5, 2005.

The Center appointed Staniforth Ricketson as the sole panelist in this matter on April 22, 2005. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainants are the Glaxo Group Ltd (“Glaxo”), a company registered under the laws of England and Wales with their registered office at Glaxo Wellcome House, Greenford, Middlesex, and The Wellcome Foundation Limited (“Wellcome”), another company under the laws of England and Wales with the same registered office address.

Both Complainants are wholly owned subsidiaries of GlaxoSmithKline (GSK), a world leading research-based pharmaceutical company, being the company formed from the 2000 merger of the Glaxo Wellcome and SmithKline Beecham groups of companies.

Glaxo owns the registered and unregistered trade marks ADVAIR and DERMOVATE while Wellcome owns the registered and unregistered trade mark LEUKERAN. Annex 3 to the Complaint indicates that each of these marks is registered in a wide number of countries, including the United Kingdom, United States and Canada, although this does not indicate the length of these registrations. There is also evidence of the volume of sales of pharmaceutical products under these marks in Appendix 5. In the case of ADVAIR, the volume of sales for 2004, in the United States, Puerto Rico and Canada is extremely high – some 1,543,308,000 pound sterling – while the global sales for DERMOVATE and LEUKERAN are significant (although there is no indication as to the territories in which these sales occurred.

The Respondent has been the registrant of the domain names <dermovate.com> (since June 2002), <leukeran.com> (since February 2002) and <advair.net> (since March 2003). It appears that when these domain names are used, they resolve to the website “www.CanadaPharmacy.com.”

5. Parties’ Contentions

A. Complainant

The Complainants submit that the requirements of paragraph 4(a) of the Policy are satisfied in that:

(i) They have rights in the respective trade marks through registration and use, while the domain names are identical.

(ii) The Respondent has no rights or legitimate interests in respect of the domain names, in that there is no evidence that the Respondent has been commonly known by these names and there is no legitimate non-commercial use to which the Respondent could put these names.

(iii) The domain names were registered and used in bad faith, pointing here to the way that the domain names resolve to the website “www.CanadaPharmacy.com.” They also point to the confusion that may arise with the GSK companies’ website “www.advair.com,” which provides advice about the product, principally directed at US residents. They note also that the GSK companies operate a number of websites containing product information with ‘.com’ domain names (see Annex 4) and point out that the Respondent’s registration of ‘dermovate’ prevents them hosting an information website for that product at “www.dermovate.com” which would be the first place that Internet users would look when searching for GSK’s information on this product. In addition, the Complainants suggest that there is some evidence of the Respondent exhibiting a pattern of acquiring blocking registrations, with at least 10 other gTLD domain names that consist solely of the names of other pharmaceutical companies, all of which resolve to “www.CanadaPharmacy.com” (see Annex 6).

B. Respondent

The Respondent did not reply to the Complainant’s contentions. Under paragraph 5(e) of the Rules, it is provided that if a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based on the Complaint. As no exceptional circumstances have been brought to the Panel’s attention, it proceeds to make the findings below on the basis of the material contained in the Complaint. Furthermore, under paragraph 14(b) of the Rules, when a party defaults in complying with any of the requirements of the Rules, in the absence of exceptional circumstances, the Panel is entitled to “draw such inferences therefrom as it considers appropriate”.

6. Discussion and Findings

In order for the Complainants to succeed, they must establish that each of the requirements outlined in paragraph 4(a) of the Policy are satisfied. These are cumulative, rather than alternative, conditions and each is considered in turn below.

A. That the Complainant has rights in a trade or service mark with which the Respondent’s domain name is identical or confusingly similar (paragraph 4(a)(i))

On the face of the Complaint as filed, the Complainants have satisfied the various requirements of this paragraph. They have provided evidence of the registration of the three marks in a number of countries, as well as relevant supporting evidence of use that would indicate the necessary reputation and goodwill in respect of unregistered trade mark rights in at least some of these countries. This material is sufficient to show that they have “rights” in trade marks for the purposes of paragraph 4(a)(i).

It is also clear that the second part of paragraph 4(a)(i) is satisfied in each instance, namely that the disputed domain names are identical to the above trade marks. For the purposes of this comparison, it is appropriate to disregard the ‘.com’ suffix in the disputed domain names: see further World Wrestling Federation Entertainment, Inc v. Michael Bosman, WIPO Case No. D1999-0001 (January 14, 2000) (<worldwrestlingfederation.com> and InfoSpace.com, Inc v. Registrar Administrator Lew Blank, WIPO Case No. D2000-0069 (April 3, 2000) (<wwwinfospaces.com>).

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out certain matters to which a respondent can point as demonstrating rights or legitimate interests in a disputed domain name for the purposes of paragraph 4(a)(ii). These include:

“(i) before any notice to you [the Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organisation) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

In the present proceeding, the Respondent has provided no evidence that relates to any of the above matters. In these circumstances, the Panel is prepared to infer that the Respondent has no rights or legitimate interests in the disputed domain names.

Accordingly, the Panel finds that the Complainant has satisfied this element of paragraph 4(a).

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists certain factors which, if found by the Panel to be present, shall be evidence of registration and use of a domain name in bad faith. This is not an exclusive list, and includes:

“(i) circumstances indicating that you [the Respondent] have registered or you have acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

It will be noted that, under paragraph 4(a)(iii), both registration and use of the domain name in bad faith are required. Of the factors listed in paragraph 4(b) above, (i)-(iii) relate specifically to registration (and acquisition) of the name, while (iv) relates to use following registration. However, in view of the fact that these factors are stated to be inclusive, it follows that there can be other factors that can be relied upon to point to bad faith, both in registration and in use. In this regard, it is worth noting an early decision of an administrative panel to the effect that registration in bad faith followed by a passive holding of a domain name can amount to use in bad faith when it appears that there is no way in which such name could ever be used legitimately in relation to a business or offering of goods or services and the identity of the Respondent remains unknown: Telstra Corporation Limited v. Nuclear Marshmallows WIPO Case No. D2000-0003 (February 18, 2000). In addition, it would be both mistaken and artificial to confine paragraphs (i)-(iii) solely to the time of registration: presumably, it would also be a use of a disputed domain name in bad faith to do so, after registration, with one of the purposes outlined in those paragraphs. Support for this view is to be found in several early panel decisions: see, for example, Estée Lauder Inc v. estelauder.com, estelauder.net and Jeff Hanna, WIPO Case No. D2000-0869 (September 25, 2000) (<estelauder.com>, <estelauder.net>) and E. & J. Gallo Winery v. Hanna Law Firm, WIPO Case No. D2000-0615 (August 3, 2000) (<bartlesandjaymes.com>, <bartlesandjaymes.net>).

Of the different circumstances referred to in paragraph 4(b), the first does not seem applicable to the present proceeding: there is no evidence that the domain names have been registered for the purposes of resale to the Complainants for valuable consideration exceeding out-of-pocket expenses, as, for example, might have been the case had there been communications and offers from the Respondent to sell or transfer the domain names to the Complainants for such a consideration. The same is true in the case of the third situation referred to in paragraph 4(b), in that there is no evidence, one way or the other, from which it can be inferred that the Respondent’s primary purpose for registration was to disrupt the business of a competitor.

However, the circumstances referred to in (ii) and (iv) do appear to exist:

(i) In the case of (ii), there is some evidence that indicates that the registrations of the domain names have been effected in order to prevent the Complainants from reflecting their marks in corresponding domain names. The Complainants have already registered a number of their product names as domain names in the ‘.com’ domain in order to provide product information to Internet users (see Annex 4), and are prevented from doing this here, at least in relation to DERMOVATE. The list of other domain name registrations for pharmaceutical products in the name of the Respondent exhibited in Annex 6 points to a “pattern of such conduct” (the making of “blocking registrations”) for the purposes of paragraph 4(b)(ii).

(ii) The circumstances referred to in paragraph 4(b)(iv) also appear to exist as each of the disputed domain names resolve to the same website, “www.CanadaPharmacy.com.” While it is unclear what connection the Respondent has with this website, there seems little doubt that this is potentially a diversion of Internet users for the purposes of commercial gain (for someone), given that the “www.CanadaPharmacy.com” website advertises for sale various pharmaceutical products. Users who key in any of the three disputed domain names are automatically led to this website which has nothing to do with the Complainants, and the same occurs with the other domain names registered by the Respondent that are listed in Annex 6.

Accordingly, the Panel concludes that there is sufficient evidence provided by the Complainants to show that the domain names in dispute were registered and used by the Respondent in bad faith.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, <advair.net>, <dermovate.com> and <leukeran.com> should be transferred to the Complainant.

Staniforth Ricketson
Sole Panelist

Dated: May 6, 2005