The Complainants are SmithKline Beecham Limited and Glaxo Group Limited of Brentford and Greenford, United Kingdom of Great Britain and Northern Ireland (“United Kingdom” or “UK”), represented by Rouse Legal, United Kingdom.
The Respondents are GSKline Limited and Lloyd Hamilton of Cheadle and Manchester, United Kingdom. 2. The Domain Names and Registrars
The disputed domain names , , and are registered with Tucows Inc.
The disputed domain names and are registered with PlanetDomain Pty Ltd.
The disputed domain name is registered with Webfusion Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 11, 2013. On January 11, 2013, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On January 11, 15 and 16, 2013, the Registrars transmitted by email to the Center their verification responses confirming that the Respondent, Lloyd Hamilton was listed as the registrant of the disputed domain names , , , and ; that the Respondent GSKline was the registrant of the disputed domain name ; and that both Respondents were the registrants of the disputed domain name . The Registrars provided contact details for the Respondents. In relation to the disputed domain name, , the Respondent, Lloyd Hamilton, was registered as the registrant but now it is stated to be ‘Administrative Department’. This is as a result of certain initial attempts by the Complainants to bring about the transfer of that domain name which did not come to fruition. The domain name remains in the ownership of the Respondent, Lloyd Hamilton.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 Respondents of the Complaint, and the proceedings commenced on January 22, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 11, 2013. The Respondents submitted a request for an extension of the Response due date on February 13, 2013. As the Complainant agreed to the extension requested by the Respondents, the Center extended the due date for Response to February 20, 2013. The Response was filed with the Center on February 20, 2013.
The Center appointed Jon Lang as the sole panelist in this matter on February 26, 2013. 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.
In the Response filed on February, 20, 2013, it was said that “We will therefore attempt to provide some information to you today via email. The rest is contained in a bundle of documents that we are putting together and intend to send to the WIPO. …..We indicated that we would send a brief synopsis of our concerns and follow this up with our bundle of documents. Therefore we would suggest 7 to 10 days for their completion and delivery. This bundle will be very relevant to this case and would clarify many details with regards to this complex case.”
As a result of the Respondents e-mail, the Panel made two Procedural Orders which were relayed by the Center to the Respondents:
Procedural Order No. 1 - the Center wrote to the Respondents on February 27, 2013, in the following terms: “Further to the Notification of Panel Appointment, the Panel has reviewed the Respondent’s e-mail of February 20, 2013, in which the Respondent announced its intention to submit, late, by post, further documents. Without prejudice to any decision the Panel might make in relation to late filing of documents, the Panel, given the Rules and Supplemental Rules require electronic filing, requires any further filing by the Respondent to be in electronic form.”
Procedural Order No. 2 - the Center wrote further to the Respondents on March 1, 2013, in the following terms: “Further to the Center’s email communication of February 27, 2013, the Panel orders the Respondent to file any electronic documents it may have by Monday March 4, 2013 17.00 Geneva time. The Panel notes that consideration of any submitted documents will be in the Panel’s sole discretion. Any such submission should be sent to the Center by e-mail at domain.disputes@ and copied to the Complainant.” 4. Factual Background
The Complainants are part of the GlaxoSmithKline group of companies (‘GSK’). GSK was created in 2000 following the merger between GlaxoWellcome Plc and SmithKline Beecham Plc. GSK is one of the world’s leading research based pharmaceutical and healthcare organizations. It develops, manufactures and markets pharmaceutical, vaccines, over-the-counter medicines and consumer healthcare products.
The two Complainants have a common legal interest in the rights that are affected by the Respondents’ conduct: the First Complainant is the proprietor of the registered trade marks upon which this Complaint is based (‘the GSK Trade Marks’), whereas the Second Complainant carries on GSK’s business under and by reference to the names GSK and GLAXOSMITHKLINE/GlaxoSmithKline in the UK and, accordingly, is the owner of the goodwill and reputation in the GSK brand and the GSK Trade Marks. The GSK Trade Marks include the following:
GSK GlaxoSmithKline/GSK GLAXOSMITHKLINE, application date – June 14, 2000, Registration No. 2235933 (UK);
GlaxoSmithKline/GLAXOSMITHKLINE, application date – June 14, 2000, Registration No. 2236050 (UK);
GSK, application date – January 17, 2000, Registration No. 2219527 (UK).
GSK also operate a website at “”.
The Respondent, GSKline was incorporated in the UK on November 28, 2005 and appears to be a dormant company. The Respondent, Lloyd Hamilton is the sole director, shareholder and chief executive of GSKline. The Respondents, between them, own all of the disputed domain names (hereafter the Domain Names) which were registered as follows: - January 28, 2010, - January 8, 2003, - January 17, 2006, - January 28, 2010, - January 28, 2010, - March 13, 2009, - January 11, 2011. Earlier High Court proceedings
From January 2003, the Respondents applied to register a number of domain names incorporating the sign GSKline. As indicated above, these included some of the Domain Names. Moreover, between October 2006 and August 2010, the First Respondent applied for the following trade marks: GSKline, GSKLINE and gskline (the “Offending Marks”). Inevitably, this lead to a dispute between the parties and after a period of protracted correspondence (in an attempt to settle matters) between November 2009 and July 2010, the court proceedings were issued by the Complainants on May 6, 2010. These proceedings were issued against both Respondents in the English High Court, alleging trade mark infringement and passing off and sought inter alia invalidation of the Offending Marks and an order that the domain names incorporating GSKline which had been registered at that time, namely , , , , , and , (the GSKline Domain Names), be transferred to the Second Complainant. In the proceedings, the Complainants alleged that the sign GSKline was similar to one or more of the GSK Trade Marks and that there would be a likelihood of confusion on the part of the public between the two. The Complainants also said that the sign GSKline was similar to one or more of the GSK Trade Marks which have a reputation in the United Kingdom, and use of GSKline would take unfair advantage of the distinctive character or repute of the GSK Trade Marks and/or would be detrimental to the distinctive character or repute of the GSK Trade Marks. Furthermore, the Complainants alleged that the activities of the Respondents were calculated to confuse and deceive, with the result that the Respondents’ goods, services and business would be passed off as and for goods, services and business provided by GSK, or as connected or associated in the course of trade with GSK.
As to the GSKline Domain Names, the Complainants said that by placing them on the register of Internet domain names, the Respondents have misrepresented to persons who consult the register that their business is a part of, or is connected or associated in the course of trade with, GSK and that they operate as instruments of deception in the hands of anyone other than the Complainants or members of GSK.
The Complainants obtained summary judgment against the Respondents and an order was made (dated January 31, 2011) in which there were declarations that the GSKline Domain Names, which include all the Domain Names (the subject of these UDRP proceedings) except , operate as instruments of deception in the hands of the Respondents. Furthermore, the order required the Respondents to immediately take all such steps as lie within their power to transfer to the Second Complainant the GSKline Domain Names and any other domain names in their power, possession, custody or control, the use of which would breach the injunction (given in the order) restraining the Respondents from either offering and/or providing goods or services under or by reference to the Offending Marks, or infringing the GSK Trade Marks. The Respondents have failed to carry out any transfer. 5. Parties’ Contentions A. Complainant
The Complainants rely generally on the allegations made in the High Court proceedings.
While it is open to the Complainants to seek to enforce the order of the High Court dated January 31, 2011 by way of committal proceedings, they have chosen to file this Complaint on grounds of speed and cost.
Although the domain name was not expressly dealt with in the judgment (the only one of the Domain Names not to be), it would be covered by the order requiring the Respondents to immediately take steps to transfer to the Second Complainant any other domain names in their power, possession, custody or control, the use of which would breach the injunction restraining the Respondents from either offering and/or providing goods or services under or by reference to the Offending Marks, or infringing the GSK Trade Marks.
Until the GSKline Domain Names are successfully transferred, the Complainants are unable to prevent the damage which may be caused to the reputation and goodwill in the GSK Trade Marks.
The Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainants have rights
GSK has, at all times since the merger in 2000, carried on its business in the United Kingdom under and by reference to the name GLAXOSMITHKLINE/GlaxoSmithKline as well as the name GSK, being an abbreviation of GLAXOSMITHKLINE/GlaxoSmithKline and the name by which it is commonly known and referred. By way of example, GSK’s corporate website is located at “” and is frequently visited (with more than 19 million visitors between September 15, 2009 and August 14, 2010) and also forms the business email address of GSK’s employees.
Moreover, GSK markets many market-leading products including over-the-counter medicines (e.g. Panadol), dental products (e.g. Aquafresh and Sensodyne) and smoking control products (e.g. Nicorette/NiQuitin). Many or all of GSK’s products and promotional materials, bear and have at all material times borne upon them the marks GSK and/or GLAXSMITHKLINE/GlaxoSmithKline. As a result, there exists a substantial reputation and goodwill in the United Kingdom in the names GSK and GLAXOSMITHKLINE/GlaxoSmithKline. Accordingly, when members of the trade or public see or hear goods or services offered or sold in the United Kingdom under the names GSK and/or GLAXOSMITHKLINE/GlaxoSmithKline, they expect the goods or services to be provided by GSK and no other.
Each of the Domain Names contain the letters ”gsk” (an abbreviated version of GlaxoSmithKline) at the beginning, making them confusingly similar to both the GSK Trade Marks and the Complainants’ own domain name.
Because of the high degree of similarity between the GSK Trade Marks and the Domain Names, confusion and deception are inevitable, particularly because of the goodwill and reputation in the GSK Trade Marks. Members of the public are likely to believe that the Domain Names are somehow connected with the Complainants.
As an example of the high risk of confusion, the Complainants received a scam warning relating to emails received from the email address humanresources@GSK, which purports to originate from GSK’s headquarters.
The Respondents have no rights or legitimate interests in respect of the Domain Names
The Respondents have never provided any explanation as to the reason for choosing the name GSKline. The Respondents indicated, in correspondence with the Complainants in January 2010, that GSKline Limited “have no products and at present offer no services”, while in the same letter claiming that it would be sold as “a going concern”. However, as far as the Complainants can establish, and according to the Companies House database printout, GSKline Limited is a dormant company which does not appear to have traded and which has filed dormant accounts.
The Offending Marks have now all been invalidated at the UK Intellectual Property Office so the Respondents can no longer rely on them.
The Domain Names were registered and are being used in bad faith
The Respondents must have known about the Complainants and the GSK Trade Marks, including the GSK brand, prior to registering the Domain Names. The GSK brand is well known throughout the world and has regularly featured in the media since its launch in 2000. The merger between GlaxoWellcome Plc and SmithKline Beecham Plc was widely reported at the time.
The names GSK and GLAXOSMITHKLINE/GlaxoSmithKline are of tremendous importance to the Complainants’ business. The GlaxoSmithKline name was chosen specifically in order to build the reputation and goodwill already residing in the distinctive names “Glaxo Wellcome” and “SmithKline Beecham”, from which the name was derived.
The goodwill and reputation in the GSK brand has built up steadily since its launch in 2000, since when GSK has made widespread use of the names GLAXOSMITHKLINE/GlaxoSmithKline and its abbreviation “gsk” across all of its activities in the UK and worldwide. By way of example, most of GSK’s products bear (a) the marks GSK and GLAXOSMITHKLINE and (b) the legend, ”[product name] is a [registered] trade mark of the GlaxoSmithKline group of companies”.
The presence of the names GSK and GLAXOSMITHKLINE/GlaxoSmithKline on GSK’s products indicate to consumers and healthcare professionals that the product originates from the UK-based undertaking with a substantial reputation in improving the health of communities in the UK and worldwide, and consumers associate that product with the values that GSK has espoused since its creation. In 2005, 2006, 2007, 2008 and 2009, GSK spent GBP 697 million, GBP 759 million, GBP 744 million, GBP 805 million and GBP 923 million respectively on global advertising.
GSK is referred to in the UK media on a daily basis. For example, in 2005 in the three months prior to the incorporation of GSKline Limited, there was considerable media coverage of GSK as result of a number of high profile issues affecting its business, including GSK’s potential acquisition of Boots Healthcare International, attacks by animal rights extremists on a GSK executive, and Avian Flu and GSK’s response to the H1N1 pandemic. Given the level of press coverage surrounding the Complainants and their brand, particularly in the run-up to the formation of GSKline Limited, it is inconceivable that the Respondents could not have been aware of the Complainants or the GSK brand.
The inclusion of the GSKline name in the Domain Names would have undoubtedly provided the Respondents with a commercial advantage in the marketplace enabling the business to take a free ride on the reputation of the GSK Trade Marks had it wished to do so.
The Respondents have shown no reason for the choice of the name GSKline. However, given the substantial reputation attaching to the GSK Trade Marks, it seems unlikely that the name was chosen by the Respondents other than in bad faith, and in order to harness the reputation and goodwill in the GSK Trade Marks.
Furthermore, the Respondents do not appear to have made use of the Domain Names which have pointed to various ISP holding sites containing advertisements for, inter alia, dating and casino services. Neither of these types of services would ever be offered by the Complainants as they do not reflect the image or values with which the Complainants would wish to associate and would only serve to tarnish the GSK Trade Marks by their association. B. Respondent
Whilst the Respondents indicated in their Response of February 20, 2013, (submitted after being granted an extension of time), that they would be submitting further documents (which the Procedural Orders referred to earlier expressly provided for, on terms), they have not done so. The Response itself does not appear to address the matters raised by the Complaint or matters that could be of relevance in this UDRP proceeding, and accordingly there is little point in setting out what it said. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is
(i) identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
A complainant must prove each of these three elements. A. Preliminary Matter – the Relationship between Trade Mark Law and the UDRP
The Complainants, not surprisingly, rely heavily on the order dated January 31, 2011, made in the High Court proceedings in which there were declarations that the GSKline Domain Names, which include all the Domain Names except for , operate as instruments of deception in the hands of the Respondents and that the Respondents immediately take all such steps as lie within their power to transfer to the Second Complainant the GSKline Domain Names and any others that would breach the injunction given in the order.
Proceedings under the UDRP are not trade mark proceedings. UDRP panels are required to consider different matters to those which would be considered in trade mark proceedings, although there may well be some overlap. The position can perhaps best be illustrated by the UDRP decision in La Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Grozea Romica, WIPO Case No. D2008-1377, where the panel stated:
“[…] this Panel would suggest that the questions of trade mark infringement, passing off and other similar national laws are typically quite distinct from any assessment of bad faith under the Policy. They may overlap but are not the same. Therefore, even if it is correct that any conceivable use of a domain name would involve trade mark infringement, it does not necessarily follow that there is bad faith use under the Policy.
[…] This was, for example, the approach that was followed by the three-person panel in Mr. Talus Taylor, Mrs. Anette Tison v. Vicent George Warning/Fayalobi Interaction Management,WIPO Case No. D2008-0455. In that case the panel stated at paragraph 6.21 as follows:
[…] The Panel is not saying that all and any use of the Domain Name would necessarily involve some form of trade mark infringement. The issues of trade mark infringement and abusive registration, whilst they often overlap, are separate and one does not necessarily follow from the other (see for example, Delta Air Transport NV (trading as SN Brussels Airlines) v. Theodule [D]e Souza,WIPO Case No. D2003-0372; and 1066 Housing Association Ltd. v. Mr. D. Morgan,WIPO Case No. D2007-1461).”
The degree to which trade mark proceedings are of relevance to UDRP proceedings, or the ‘overlap’, will vary from case to case. In this case, given the order made in the High Court proceedings, the degree of overlap is considerable. However, whilst the Complainants have chosen to bring about the transfer of the Domain Names through UDRP proceedings as opposed to enforcing the order of the High Court through further High Court proceedings, it is not the role of UDRP panels to simply give effect to orders made in other proceedings. Each complaint brought under the Policy must be analyzed on its own merits by reference to the requirements of the Policy albeit, to varying degrees, other proceedings and the orders made therein may be of some relevance to that analysis. B. Identical or Confusingly Similar to a trade mark in which a complainant has rights
The Complainants clearly have rights in the GSK Trade Marks, GSK GlaxoSmithKline/GSK GLAXOSMITHKLINE, GlaxoSmithKline/GLAXOSMITHKLINE and GSK. The Domain Names all incorporate the sign GSKline.
Under the UDRP, the test for confusing similarity involves a comparison between the trade mark and the domain name to determine likelihood of Internet user confusion. Application of the confusing similarity test under the UDRP typically involves a comparison, on a visual or aural level, between the trade mark and the domain name. If the trade mark is readily recognisable within the domain name, that can be sufficient to establish confusing similarity. However, in some cases, even though a trade mark may not be readily recognisable on a visual or aural level within a domain name, there may still be a risk that Internet users may actually believe there to be a real connection between the domain name and the complainant and/or its goods and services. In these cases, panels would typically assess the risk of confusion having regard to, amongst other matters, the overall impression created by the domain name.
The trade mark GSK is clearly recognisable within the Domain Names and that is sufficient to establish confusing similarity for the purposes of the Policy. A complainant of course need only show one trade mark (in which it has rights) in respect of which a domain name is confusingly similar. However, for the sake of completeness, the Panel also finds that the GSK Trade Marks carrying the prefix GSK would also satisfy the test of confusing similarity - an important part of the trade mark (the prefix GSK) is readily recognisable within the Domain Names (as is the last word of the trade mark, ‘Kline’).
As to the marks, GlaxoSmithKline/GLAXOSMITHKLINE, given the fact that it is widely known that the GlaxoSmithKline group of companies use the acronym GSK, and that the word ‘Kline’ is readily apparent in the Domain Names, the Panel is of the view that the Domain Names are confusingly similar to these marks too, based on the overall impression created by the Domain Names.
Accordingly, the Panel finds, for the purposes of the Policy, that the Domain Names are confusingly similar to trade marks in which the Complainants have rights. C. Rights or Legitimate Interests
By its allegations in the Complaint, the Complainant has made out a strong prima facie case that the Respondents lack rights or legitimate interests in the Domain Names and, as such, the burden of production shifts to the Respondents to come forward with appropriate arguments or evidence demonstrating that they do in fact have such rights or legitimate interests. The Respondents, after suggesting that they would come forward with arguments in relation to the Complaint, have not done so. It might be that on reflection, the Respondents felt that in the light of the declarations made in the High Court proceedings in relation to all but one of the Domain Names (the domain name not specifically included in the proceedings but caught by other provisions of the order), that they operate as instruments of deception in the hands of the Respondents, it would be difficult to answer the case against them. In any event, the Respondents have not sought to provide an answer to the case against them. Despite this, it is perhaps appropriate to deal with rights and legitimate interests (or the absence thereof) in a little more detail, rather than simply by reference to the declarations made in the High Court proceedings. This is particularly so given that the name of one of the Respondents corresponds to the Domain Names i.e. GSKline Limited which, at first blush, may suggest there is an answer to the prima facie case of lack of rights or legitimate interests.
A respondent can show it has rights to or legitimate interests in a domain name in various ways even where, as is the case here, it is not licensed by or affiliated with the complainant. For instance, it can show that it 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. A respondent might also show it has rights to or legitimate interests in a domain name by demonstrating that it has been commonly known by the domain name (even if it has acquired no associated trade mark rights).
The Respondents appear to have made little use of the Domain Names. Except to have them point at some stage to various ISP holding sites containing advertisements for, inter alia, dating and casino services (which services would never be offered by the Complainants), nothing much seems to have been done with them. Accordingly, it does not appear that the Domain Names have been used in connection with a bona fide offering of goods or services or, (particularly given the order made in the High Court proceedings) that there is or has been legitimate noncommercial or fair use. However, the name of the Respondent, GSKline Limited, is more or less the same as the Domain Names. Could this be sufficient to establish rights or legitimate Interests?
Whether the Respondent GSKline Limited has been commonly known by the Domain Names, given that it appears to be dormant, is questionable, although the point becomes moot in circumstances where there is no explanation, let alone plausible explanation, as to why the name GSKline Limited was chosen in the first place. If ever there was a case that cried out for that basic explanation, this was it, particularly given the prominence of GSK and the GSK Marks at the time GSKline Limited was incorporated. A respondent cannot, without a proper explanation, legitimise its choice of domain name which it knows or should know is confusingly similar to another’s trade mark, by first incorporating a business with the same (or very similar) name to the domain name it subsequently registers, and then claim it is known by the domain name to defeat a complaint under the Policy. (The Panel notes that the domain name was registered on January 8, 2003 i.e. before the Respondent GSKline Limited was incorporated, making any argument based on the corporate Respondent being known by the domain name even more difficult).
In all the circumstances, the Panel finds that the Respondents lack rights or legitimate interests in the Domain Names for the purposes of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that evidence registration and use of a domain name in bad faith. The Policy requires that both registration and use must be demonstrated.
Given the very limited use made of the Domain Names by the Respondents, the question of use, a requirement under the Policy, must be considered, (even if registration in bad faith can be demonstrated).
Some of the examples in paragraph 4(b) of the Policy require a positive action by the respondent (such as use of the domain name to intentionally attempt to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the complainant's mark). But others do not, such as registration of 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 the respondent has engaged in a pattern of such conduct). Thus, it is clear that for the purposes of the Policy, inaction or a passive holding by a respondent of a domain name, can constitute bad faith use.
Given that paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances evidencing registration and use of a domain name in bad faith, panels do not need to make specific findings by reference to that list. What they must do is examine all the circumstances of a case to determine whether the respondent has registered the domain name and is using it (which includes a passive holding) in bad faith. In this case, the cumulative circumstances, including:
a) the very well-known trade marks of the Complainants that would or should have been known to the Respondents at all relevant times;
b) that it must have been or should have been obvious to the Respondents at the time of registration of the confusingly similar Domain Names that it would be difficult to use them without infringing the Complainants’ trade mark rights;
c) the order of the High Court making plain what must have been or should have been obvious in b) above; and
d) the lack of any meaningful response being provided by the Respondents despite indulgences being granted to enable them to submit a proper response;
lead the Panel to the conclusion that, for the purposes of the Policy, there is evidence of both registration and use of the Domain Names in bad faith. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names , , , , , and be transferred to the Complainants.
Jon Lang
Sole Panelist
Date: March 11, 2013
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