WIPO Domain Name Decision D2004-0262 for discount-imitrex-pharmacy.com

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Glaxo Group Limited, SmithKlineBeecham Corporation d/b/a GlaxoSmithKline v. Michale Kelly

Case No. D2004-0262

 

1. The Parties

The Complainants are Glaxo Group Limited, Middlesex, United Kingdom of Great Britain and Northern Ireland, and SmithKlineBeecham Corporation d/b/a GlaxoSmithKline, North Carolina, United States of America. The Complainants are represented by Nelson Mullins Riley & Scarborough, L.L.P., North Carolina, United States of America.

The Respondent is Michale Kelly, San Diego, California, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name is registered with Go Daddy Software.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 8, 2004. On April 9, 2004, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On April 13, 2004, 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, billing, 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 April 15, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was May 5, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 6, 2004.

The Center appointed William R. Towns as the sole panelist in this matter on May 12, 2004. 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.

The language of the proceeding is English.

 

4. Factual Background

The Complainants assert rights in the trademark IMITREX and in several related marks that incorporate the IMITREX mark. The Complainants have submitted evidence of the registration of the IMITREX mark in a number of countries for use with a pharmaceutical medicine containing sumatriptan, which is used in the treatment of migraines and other headaches. The Complainant Glaxo Group Limited ("CGL") initially registered IMITREX as a trademark in the United States in 1993, and the registration was renewed in 2003. According to the Complainants, GCL and GlaxoSmithKline ("GSK") are commonly owned, and GSK is the United States licensee for the IMITREX mark. The pharmaceutical product marketed by the Complainants in the United States under the IMITREX brand is available only through a physician's prescription.

The prescription medicine sold under the IMITREX brand has been on the market for more than twelve (12) years, according to the Complainants. Information contained in the 2002 and 2003 annual reports for the GlaxoSmithKline group reflects U.S. sales of the IMITREX product in excess of $1.9 billion during this two-year period. The Complainants maintain that IMITREX is subject to extensive advertising in the United States, although no information is provided regarding amounts expended on such advertising. Nevertheless, sales of the product in the United States clearly are substantial, and Respondent's website asserts that "Imitrex is the most prescribed acute migraine headache prescription in the United States".

The Respondent registered the disputed domain name on July 18, 2003. The disputed domain name resolves to a website on which the Complainants' IMITREX brand medication as well as other prescription medications are offered for sale to the general public at discount prices. The products offered for sale include products of other pharmaceutical companies, some of which are marketed for the treatment of migraine headaches, and therefore compete with the Complainants' IMITREX products. The Respondent also appears to be doing business under the disputed domain name, as the script "Discount-Imitrex-P" is conspicuously displayed at the top of the website's home page as well as other pages, and the online pharmacy is referred to in the website as "Discount-Imitrex-P".

The Respondent's website does not provide any information concerning the relationship between the Respondent and the Complainants, even though the disputed domain name incorporates the Complainants' IMITREX mark in its entirety, and the website offers for sale IMITREX branded products as well as competing products. The website is silent whether the Respondent is an authorized distributor of the Complainants' pharmaceutical products or authorized to use the IMITREX mark. Nor is there any statement that the website is or is not affiliated with, sponsored or endorsed by the Complainants.

As noted above, the Complaint in this matter was filed on April 8, 2004. The Complaint is silent as to when the Complainants first became aware of the Respondent's registration and use of the disputed domain name, or whether the Complainants contacted or attempted to contact the Respondent prior to filing their Complaint. There is no indication in the record before the Panel that the Respondent has ever offered to sell or otherwise convey the disputed domain name to the Complainants, and nothing in the record indicating that the Complainants have registered or attempted to register any domain names consisting of or incorporating the IMITREX mark, or that they have been unable to do so because of the Respondent's registration of the disputed domain name.

 

5. Parties' Contentions

A. Complainants

The Complainants contend that they have marketed and sold their sumatriptan line of pharmaceutical products under the IMITREX mark in the United States and elsewhere for more than twelve (12) years, and that they have obtained registrations for IMITREX and related marks in the United States, Canada, and more than twenty (20) other countries around the world. Based on sales in the United States in 2002, and 2003, in excess of $1.9 billion, extensive advertisement and numerous national press reports, the Complainants contend that IMITREX is a famous or well-known mark in the United States. They note that the Respondent's website represents Imitrex to be the most prescribed acute migraine headache prescription in the United States.

The Complainants contend that the Respondent's domain name is identical or confusingly similar to the Complainants' IMITREX mark because the disputed domain name incorporates the Complainants' mark in its entirety. The Complainants further contend that the Respondent has no rights or legitimate interests in the disputed domain name because the Complainants have not licensed or otherwise authorized the Respondent to use the IMITREX mark, and because the Respondent is not using the disputed domain name in connection with any bona fide offer of goods or services.

Finally, the Complainant maintains that the Respondent registered and is using the disputed domain name in bad faith. The Complainant alleges that the primary reason for Respondent's registration of the disputed domain name is to trade on the well-known IMITREX mark, and to attract internet users to Respondent's website for commercial gain by creating a likelihood of confusion with the Complainants' mark as to the source, sponsorship, affiliation, and endorsement of the Respondent's website and Respondent's online discount pharmacy services. Further, the Complainant believes that the Respondents registration of the domain name , reflecting the Complainants' WELLBUTRIN mark, demonstrates a pattern of conduct establishing the Respondent's bad faith registration and use of the disputed domain name.

For these reasons, the Complainants seek to have the disputed domain name transferred.

B. Respondent

The Respondent did not reply to the Complainants' contentions.

 

6. Discussion and Findings

A. Scope of the Policy

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of "the abusive registration of domain names", also known as "cybersquatting." Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Report of the WIPO Internet Domain Name Process pages 169 & 170. Rule 15(a) provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.

Paragraph 4(a) of the Policy requires that the Complainants prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) The domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) The Respondent has no rights or legitimate interests with respect to the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

Cancellation or transfer of the domain name are the sole remedies provided to the Complainants under the Policy, as set forth in Paragraph 4(i).

Paragraph 4(b) sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) in turn identifies three means through which a Respondent may establish rights or legitimate interests in the domain name. Since Paragraph 4(a)(iii) requires the Complainants to prove that the domain name has been registered and is being used in bad faith, a number of Panels have concluded that Paragraph 4(c) shifts the burden to the Respondent to come forward with evidence of a right or legitimate interest in the domain name, once the Complainant has made a prima facie showing under Paragraph 4(a)(iii). See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No.D2000-0270.

B. Identical or Confusingly Similar

The Panel concludes that the Respondent's domain name is confusingly similar to Complainants' IMITREX mark for purposes of Paragraph 4(a)(i) of the Policy. The Complainants have established rights in the IMITREX mark, which is registered with the United States Patent and Trademark Office and thus is entitled to a presumption of validity. See EAuto, L.L.C. v. Triple S. Auto Parts, WIPO Case No. D2000-0047. Previous panels have held that, if a domain name incorporates a complainant's mark in its entirety, it is confusingly similar to that mark despite the addition of other words. It is well established that the addition of a generic term to a trademark does not necessarily eliminate a likelihood of confusion. Indeed, there are numerous examples of decisions holding a domain name to be confusingly similar to a registered trademark when it consists of the mark plus one or more generic terms. Minnesota Mining and Manufacturing Company v. Mark Overbey, WIPO Case No. D2001-0727. See, e.g., Hang Seng Bank Limited v. Websen Inc., WIPO Case No. D2000-0651 ("credit" added to mark HANG SENG in ); Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 ("parts" added to mark OKIDATA in ). See also Wal-Mart Stores, Inc. v. MacLeod, WIPO Case No. D2000-0662 (first element of Policy is satisfied where domain name wholly incorporates complainant's mark).

Accordingly, the Panel finds that the domain name registered by the Respondent is confusingly similar to the Complainants' IMITREX mark.

C. Rights or Legitimate Interests

The record reflects that the Complainants have not licensed or otherwise authorized the Respondent to use the IMITREX mark in connection with the conduct of the Respondent's business or as part of Respondent's domain name. In addition, the Complainants note that the Respondent has registered the domain name , which incorporates in its entirety the Complainants' WELLBUTRIN mark, although the Complainants have not licensed or authorized the Respondent to use this mark in connection with the conduct of the Respondent's business or as a part of Respondent's domain name. Unless rebutted by other evidence, this suffices to make a prima facie showing for purposes of Paragraph 4(a)(ii) that the Respondent lacks rights or legitimate interests in the disputed domain name. See Compagnie de Saint Gobain v. Com-Union Corp., WIPO Case No. D2000-0020.

Once a Complainant makes a prima facie showing that a Respondent lacks rights to the domain name at issue, the Respondent must come forward with proof that it has some legitimate interest in the domain name to rebut this presumption. Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270. Pursuant to Paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the Respondent's 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) the Respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the Respondent is 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.

While the Respondent has not provided a reply to the Complainants' contentions, the ultimate burden of proof on the legitimacy issue remains with the Complainants. Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270. Accordingly, the Panel considers it appropriate to examine the record in its entirety to determine whether any evidence exists supporting a claim by Respondent of rights or legitimate interests in the disputed domain name.

Regarding Paragraph 4(c)(ii), it does appear that the Respondent has done business as "Discount-Imitrex-P" since registering the domain name in July 2003. Hence, there is some evidence in the record that the Respondent has become known by the domain name. However, the Panel does not find this sufficient to demonstrate that the Respondent has rights or legitimate interests in the domain name under Paragraph 4(c)(ii) of the Policy. The Panel believes Paragraph 4(c)(ii) requires evidence that the Respondent had rights prior to and not only following from use of the domain name. Paula Ka v. Paula Korenek, WIPO Case No. D2003-0453. This is particularly so, where as here, the Respondent adopted someone else's mark, giving rise to a question whether her business became known under the domain name in good faith. See Palm, Inc. v. South China House of Technology Consultants Ltd., WIPO Case No. D2000-1492 ("While the words bona fide do not feature in this sub-paragraph, the Panel takes the view that they should be read into it and that a Respondent known by a name corresponding to the domain name should not be able to take advantage of this sub-paragraph if the name was adopted with mala fide intent.").

A question also exists whether the Respondent has rights or legitimate interests in the disputed domain name under Paragraph 4(c)(i), since there is no indication that the Respondent had notice of the dispute prior to the filing of the Complaint, and the Respondent unquestionably registered and began using the domain name in connection with the website as much as eight (8) months earlier. Thus, the record reflects that the Respondent was using the domain name in connection with the offering of goods or services before Respondent received notice of the dispute.

Nevertheless, the critical inquiry under Paragraph 4(c)(i) is whether the Respondent was using the domain name in connection with a bona fide offering of goods or services. In determining whether an offering of goods or services is bona fide under Paragraph 4(c)(i), the dispositive question is whether the use of the disputed domain name in connection with the offering otherwise constitutes bad faith registration or use of the mark under Paragraphs 4(a)(iii) and 4(b). See, e.g., First American Funds, Inc. v. Ult. Search, Inc, WIPO Case No. D2000-1840 (for offering under Paragraph 4(c)(i) to be considered bona fide, domain name use must be in good faith under Paragraph 4(a)(iii)).

In determining what constitutes a bona fide offering of goods or services, a number of panels have rejected out of hand any right on the part of a distributor or reseller to register a domain name consisting of or containing the manufacturer's trademark, at least in the absence of the trademark owner's consent. See, e.g., Motorola, Inc. v. New Gate Internet, Inc., WIPO Case No. D2000-0079 ("[T]he right to resell products does not create the right to use a mark more extensively than required to advertise and sell the product"); Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., WIPO Case No. D2000-0113 (retail seller of complainant's goods does not have enough legitimate interest in complainant's trademark "to confer the right to use these trademarks as domain names"); Gorstew Limited v. Caribbean Tours & Cruises, Case No. FA 94927 (NAF July 28, 2000) (use of trademark in a domain name is "classic trademark infringement, even if the ultimate result of same is that some revenue flows to the owner of the marks").

This line of decisions considers that any unauthorized registration and use of a manufacturer's mark in a distributor or reseller's domain name amounts to bad faith, which precludes any bona fide offering of goods or services under Paragraph 4(c)(i) of the Policy. See First American Funds, Inc. v. Ult. Search, Inc, WIPO Case No. D2000-1840 (for offering under Paragraph 4(c)(i) to be considered bona fide, domain name use must be in good faith under Paragraph 4(a)(iii)). See also Black & Decker Corp. v. Eric Savelle d/b/a Tools Plus, Inc., Case No. FA 96700 (NAF April 10, 2001) (Policy not intended to allow retailers to register and use as domain names variations of registered or unregistered trademarks or service marks).

Other panels have held that authorized distributors may have a legitimate interest in the nominative use of a trademark in a domain name in connection with the sale of the trademarked goods, under carefully circumscribed conditions. In Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, for example, the panel suggested that the following circumstances would be necessary for an offering of goods or services to be a bona fide offering for purposes Paragraph 4(c)(i):

- Respondent must actually be offering the goods or services at issue. e.g., World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306.

- Respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods. Nikon, Inc. v. Technilab, WIPO Case No. D2000-1774; Kanao v. J.W. Roberts Co., CPR Case No. 0109.

- The site must accurately disclose the registrant's relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents. e.g., Houghton Mifflin Co. v. The Weatherman, Inc., WIPO Case No. D2001-0211; R.T. Quaife Engineering v. Luton, WIPO Case No. D2000-1201; Easy Heat, Inc. v. Shelter Prods., WIPO Case No. D2001-0344.

- The Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name. Magnum Piering, Inc. v. Mudjackers, WIPO Case No. D2000-1525.

Another approach is found in the "context specific" analysis of Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774, which involved a non-exclusive distributor's use of a manufacturer's trademark in its domain name. The disputed domain name resolved to a web site on which the distributor advertised not only the goods of the manufacturer whose trademark was incorporated in the domain name, but also advertised goods of that manufacturer's competitors. The Milwaukee Tools panel concluded that the Respondent's registration and use of the disputed domain name was not abusive, and that the Respondent was using the domain name in connection with a bona fide offering under Paragraph 4(c)(i), based on the following "context specific" factors:

- The Complainant did not sell to consumer end-users, and had conducted its business by authorizing multiple non-exclusive distributors to advertise and sell its products under its mark.

- The typical practice of the Complainant's authorized distributors was to advertise the Complainant's trademarked products along side competing products of other trademark holders.

- The Respondent's website, in the nature of a virtual "hardware store", was consistent with this practice.

- The Respondent's website did not hold out that Respondent was in fact Complainant, or the exclusive provider of Complainant's products.

- The Respondent had registered and used the domain name for more than two years before receiving notice of dispute from the Complainant.

- Complainant's web site listed the Respondent as an authorized dealer.

Despite the divergence of the approaches taken by the panels in the decisions discussed above, in no case has an offering of goods or services been held bona fide under Paragraph 4(c)(i) where the disputed domain name was registered and used in bad faith under Paragraphs 4(a)(iii) and 4(b) of the Policy. While it is conceivable that the approaches of the Oki Data and Milwaukee Tools panels should be limited to cases involving authorized distributors of trademarked products, this Panel sees no need for a general rule limiting the scope of those decisions. See Philip Morris Inc. v. Alex Tsypkin, WIPO Case No. D2002-0946. For purposes of this case, the Panel concludes that under any relevant and appropriate analysis, the Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services, because the circumstances indicate Respondent's registration and use of the disputed domain name to be in bad faith under Paragraphs 4(a)(iii) and 4(b).

It is a clear inference from the record that Respondent knew at the time of the registration of the disputed domain name that the Complainants had established rights in the IMITREX mark, and that Complainants' pharmaceutical product sold under the IMITREX mark was the most prescribed medication in the United States for treatment of acute migraine headaches. The Complainants have made a substantial showing that the IMITREX mark is a well known or famous mark in the United States, but in any event the mark clearly is distinctive. The Panel cannot conclude that the Respondent's use of the IMITREX mark under the circumstances is merely nominative or descriptive of the products offered for sale on the website. See Chanel, Inc. v. Cologne Zone, WIPO Case No. D2000-1809, (finding no legitimate interest in use of CHANEL as part of domain name leading to web site selling various types of perfume).

Rather, the Panel concludes that the Respondent sought to trade on the good will and reputation of the Complainants by incorporating the entirety of the IMITREX mark into the disputed domain name, and by prominently featuring the disputed domain name in the website. As noted in Research In Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492, when a domain name is so obviously connected with a Complainant and its products, its very use by a registrant with no connection to the Complainant suggests "opportunistic bad faith". See also Paula Ka v. Paula Korenek, WIPO Case No. D2003-0453. In addition, no attempt has been made by the Respondent to accurately disclose the Respondent's relationship to the Complainants or to disclaim any affiliation, sponsorship or endorsement of the website by the Complainants. If anything, given the strength the IMITREX mark, the Respondent's use of the disputed domain name seems calculated to falsely suggest to internet users that the Complainants are affiliated with the website. See, e.g., Houghton Mifflin Co. V. Weatherman, Inc., WIPO Case No. D2001-0211.

The Panel concludes from the record that the Respondent's use of IMITREX to trade on Complainants' good will and reputation precludes any bona fide offering of goods or services under Paragraph 4(c)(iii) of the Policy. Philip Morris Inc. v. Alex Tsypkin, WIPO Case No. D2002-0946; Amphenol Corporation v. Applied Interconnect, Inc., WIPO Case No. D2001-0296. The Panel also concludes that the Respondent has not been commonly known by the domain name for purposes of Paragraph 4(c)(ii). Accordingly, the Panel finds that Respondent has no rights or legitimate interest in the disputed domain name for purposes of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of a domain name in bad faith:

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

(ii) circumstances indicating that the Respondent 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 the Respondent has engaged in a pattern of such conduct;

(iii) circumstances indicating that the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the Respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its 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 the Respondent's web site or location or of a product or service on its web site or location.

As noted above, the Panel has concluded that the Respondent had knowledge of the IMITREX mark at the time of registration of the disputed domain name, and knew that the IMITREX branded product was the leading prescription medication for acute migraine headaches in the United States. The Panel concludes that the Respondent's primary intent in registering and using the disputed domain name, which incorporates the IMITREX mark in its entirety, was to trade on the Complainants' good will and reputation by creating a likelihood of confusion with the Complainant's mark and the Respondent's website and online pharmacy.

Accordingly, the Panel finds from the circumstances that the Respondent registered and is using the disputed domain name in an attempt to attract, for commercial gain, internet users to its web site, by creating a likelihood of confusion with the Complainants' mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's web site. Pursuant to Paragraph 4(b)(iv), this constitutes evidence of bad faith registration and use of the disputed domain name for purposes of Paragraph 4(a)(iii). See Paula Ka v. Paula Korenek, WIPO Case No. D2003-0453; Bodegas Vega Sicilia, S.A. v. Serafín Rodrígues Rodrígues, WIPO Case No. D2001-1183; The Channel Tunnel Group Ltd. v. John Powell, WIPO Case No. D2000-0038; eBay Inc. v. Sunho Hong, WIPO Case D2000-1633; and, Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

 

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 name be transferred to the Complainants Glaxo Group Limited and SmithKlineBeecham Corporation d/b/a GlaxoSmithKline.

 

 

William R. Towns
Sole Panelist

Dated: May 17, 2004

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