The Complainant is GW Research Limited, United Kingdom, represented by J A Kemp, United Kingdom.
The Respondent is Susie Que, United States of America (“United States”). 2. The Domain Names and Registrar
The disputed domain names , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , and (the “Domain Names”) are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 13, 2019. On June 14, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On June 14, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 20, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 10, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 11, 2019.
The Center appointed Nicholas Smith as the sole panelist in this matter on July 19, 2019. 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 Complainant is a United Kingdom-based pharmaceutical company that was incorporated in 1995 and is a subsidiary company within the GW Pharmaceuticals Group (“GW Group”). The Complainant and the broader GW Group focus on discovering, developing, and commercializing novel therapeutics in a broad range of areas. The Complainant and the GW Group have developed an oral formation of purified cannabidiol which it markets under the name Epidiolex. The Complainant sought United States Food and Drug Administration approval for Epidiolex in 2013, and following the grant of approval Epidiolex became commercially available in the United States from November 1, 2018.
The Complainant holds a registered trade mark for the word mark EPIDIOLEX (the “EPIDIOLEX Mark”) in the United Kingdom, where the EPIDIOLEX Mark was registered as a trade mark on October 11, 2013 (trade mark no. 3013236). The Complainant has also registered the EPIDIOLEX Mark as a trade mark in Australia, the European Union, New Zealand, and the United States.
Each of the Domain Names was registered on February 24, 2018, and each of the Domain Names redirects to a parking website operated by the Registrar. 5. Parties’ Contentions A. Complainant
The Complainant makes the following contentions:
(i) that the Domain Names are identical or confusingly similar to the Complainant’s EPIDIOLEX Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Names; and
(iii) that the Domain Names have been registered and are being used in bad faith.
The Complainant is the owner of the EPIDIOLEX Mark having registered the EPIDIOLEX Mark as a trade mark in various jurisdictions around the world (including the United States).
Each of the Domain Names incorporates the whole of the Complainant’s EPIDIOLEX Mark and a descriptive term, be it a generic word, geographic term, or acronym. These additional terms are not sufficient to distinguish the Domain Names from the EPIDIOLEX Mark.
There are no rights or legitimate interests held by the Respondent in respect of the Domain Names. The Respondent is not commonly known as any of the Domain Names, nor does the Respondent have any authorization or license from the Complainant to use the EPIDIOLEX Mark. The Domain Names are essentially inactive, as they resolve to a page operated by the Registrar.
The Respondent has registered and used the Domain Names in bad faith. The inherent nature of the Domain Names and the lack of active use shows that the Respondent intended to take advantage of the reputation associated with the EPIDIOLEX Mark, either by selling the Domain Names, disrupting the business of the Complainant, or attracting for commercial gain users to the Respondent’s websites or other locations. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
To prove this element the Complainant must have trade mark or service mark rights and each of the Domain Names must be identical or confusingly similar to the Complainant’s trade mark or service mark.
The Complainant is the owner of the EPIDIOLEX Mark, having registrations for the EPIDIOLEX Mark as a trade mark in various countries, including the United Kingdom and the United States.
Other UDRP panels “have repeatedly held that the addition of a generic word to a recognized mark creates a confusing similarity between the domain name and the mark of the [c]omplainant”. The Bank of Nova Scotia v. Whois Protection,WIPO Case No. D2007-0884. See also Valero Energy Corporation, Valero Marketing and Supply Company v. Domain Name Proxy, LLC, Navigation Catalyst Systems, Inc.,WIPO Case No. D2011-1227.
The Domain Names consist of the EPIDIOLEX Mark and various descriptive terms. None of the additional words or acronyms operate to distinguish the Domain Names from the EPIDIOLEX Mark in any significant way. The Panel finds that each of the Domain Names is confusingly similar to the Complainant’s EPIDIOLEX Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
To succeed on this element, a complainant may make out a prima facie case that the respondent lacks rights or interests in the disputed domain name. If such a prima facie case is made out, the respondent then has the burden of demonstrating rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you 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 organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or
(iii) you are making legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue”.
The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Names or to seek the registration of any domain name incorporating the EPIDIOLEX Mark or a mark similar to the EPIDIOLEX Mark. There is no evidence that the Respondent is commonly known by the Domain Names or any similar name.
There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Names in connection with a bona fide offering of goods or services or for a legitimate noncommercial use. Each of the Domain Names redirects to a parking page operated by the Registrar. Such use does not amount to a bona fide offering of goods or services in these circumstances.
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or interests in the Domain Names. The Respondent has chosen not to respond to the Complaint and thus has failed to provide any evidence of rights and legitimate interests in the Domain Names. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Domain Names registrations to the Complainant who is the owners of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Names; or
(ii) The Respondent has registered the Domain Names in order to prevent the owner of the trade mark or service mark from reflecting the mark in corresponding domain names, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) The Respondent has registered the Domain Names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location. (Policy, paragraph 4(b)).
The Panel finds that it is likely that the Respondent was aware of the Complainant and its reputation in the EPIDIOLEX Mark at the time each of the Domain Names was registered. It is improbable that a person would register 33 domain names that all incorporate the coined EPIDIOLEX Mark without having some awareness of the Complainant’s trade mark rights. Furthermore as some of the Domain Names combine the EPIDIOLEX Mark with terms commonly associated with pharmaceuticals; it is clear that the Respondent is aware that Epidiolex is a pharmaceutical product. In the circumstances, the registration of the Domain Names in awareness of the EPIDIOLEX Mark and in the absence of rights or legitimate interests amounts to registration in bad faith.
The Respondent has registered the Domain Names in order to prevent the owner of the trade mark or service mark from reflecting the mark in corresponding domain names. The registration of 33 Domain Names incorporating the EPIDIOLEX Mark is sufficient to show a pattern of conduct in registering domain names in order to prevent the Complainant from reflecting its mark in corresponding domain names, which amounts to registration and use of a domain name in bad faith under Policy, paragraph 4(b)(ii).
Accordingly, the Panel finds that the Respondent has registered and is using the each of the Domain Names in bad faith under paragraph 4(a)(iii) of the Policy. 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 Complainant.
Nicholas Smith
Sole Panelist
Date: July 21, 2019
Full & Egal Universal Law Academy