WIPO Domain Name Decision D2019-3050 for sativexcbd.com, sativexmed.com

WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION GW Pharma Limited v. Jordi Desumvila Case No. D2019-3050 1. The Parties

Complainant is GW Pharma Limited, United Kingdom, represented by J A Kemp LLP, United Kingdom.

Respondent is Jordi Desumvila, Spain. 2. The Domain Names and Registrar

The disputed domain names and (the “Domain Names”) are registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 6, 2019. On December 11, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On December 11, 2019, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on January 2, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 22, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 27, 2020.

The Center appointed Harrie R. Samaras as the sole panelist in this matter on February 4, 2020. 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

Complainant was incorporated in 1999 and is a subsidiary company within the GW Pharmaceuticals Group, which was founded in 1998 and has operations in the United States of America (“United States” or “U.S.”) and the United Kingdom (the “GW Group”). Complainant is a biopharmaceutical company that has become well known for its development of plant-derived cannabinoid therapeutics. It developed Sativex, the world’s first prescription medicine derived from the cannabis plant, which is now approved for the treatment of spasticity due to multiple sclerosis in over 25 countries outside of the U.S., including in Spain. Complainant has also developed an oral formation of purified cannabidiol (“CBD”), commonly referred to by its brand name EPIDIOLEX for use in the treatment of serious rare illnesses in children.

Complainant owns various trademarks for its SATIVEX Mark (or “the Mark”) including: United Kigndom Trade Mark Reg. No. 2,304,388 registered November 29, 2002; European Union Trade Mark Reg. No. 2,993,384 registered October 29, 2004; and U.S. Trade Mark Reg. No. 4,281,416 registered January 29, 2013.

Complainant owns and operates, amongst others, a website located at “www.gwpharm.com” (“the Website”). The Website references the SATIVEX Mark in a prominent way. It also owns the domain names and which were registered respectively on April 3, 2004 and January 22, 2002, predating Respondent’s registration of the Domain Names by more than 15 years.

Respondent registered the Domain Names respectively on April 8, 2018 and August 23, 2018. Neither of the Domain Names currently resolve to an active website, however, the Domain Name used to resolve to a parked page with click-through advertising promoting third-party businesses offering “CBD flowers” and information relating to “Cannabis Stocks” via third party retailers and service providers.

Before commencing this proceeding, Complainant contacted Respondent in an attempt to seek the voluntary transfer of the Domain Names, but Respondent has not responded to that request. 5. Parties’ Contentions A. Complainant

The Domain Names are confusingly similar to the SATIVEX Mark as they both incorporate the Mark in its entirety. Adding the “Med” and “CBD” terms does not diminish the recognizability of the SATIVEX Mark, rather, they serve to reinforce a connection between the Domain Names and the Mark because the terms are closely related to the pharmaceutical and/or medical fields and/or are descriptive of or closely related to Complainant and Complainant’s Sativex product and/or its uses. That is, “Med” is a common abbreviation for the words medical, medicine, medication, and “CBD” is an abbreviation for cannabidiol, a substance the GW Group pioneered in the medical field. The “.com” extension does not add to or alter the meaning of the terms “Sativex Med” and “Sativex CBD”.

In terms of recent business and medical highlights, on June 25, 2018, Epidiolex was approved by the U.S. Food and Drug Administration (“FDA”) for the treatment of seizures in epilepsy. That approval was a historic milestone and a major news-making event in the pharmaceutical industry, as Epidiolex was the first and remains the sole FDA-approved plant-derived cannabinoid medicine for distribution in the United States. Complainant’s reputation and that of its products, is exemplified by various third-party articles and reports from news publications made of record, which substantially predate the registration of the Domain Names.

SATIVEX is a strong and inherently distinctive mark given that it is a coined word. The term “Sativex” has no other significance or meaning in the health, medical or pharmaceutical fields, nor does it have any generic meaning, including in Spanish, the language of the country in which Respondent is based. A search using the Google search engine for “Sativex” produces results referring exclusively to Complainant and/or the SATIVEX brand product.

Complainant carefully controls the use of the SATIVEX Mark by third parties and has not authorized Respondent to use the Mark. Also, Respondent is not affiliated with or otherwise known to Complainant. Neither of the Domain Names currently resolves to a bona fide public facing website and notably, before filing this Complaint, the Domain Name was in use as a parked page with click-through advertising promoting third-party businesses offering “CBD flowers” and information relating to “Cannabis Stocks” via third party retailers and service providers. Also, there is no evidence showing “Jordi Desumvila” associated with: “Sativex”, “SativexMed”, “SativexMed.com”, “SativexCBD” or “SativexCBD.com”. Similarly, there is no evidence suggesting that Respondent is commonly known by the Domain Names or has acquired any trade mark rights corresponding to them.

Given the absence of any indication that Respondent is likely to have rights to or legitimate interests in the Domain Names, Respondent has clearly registered and used them in bad faith as Respondent has no plausible connection or reason whatsoever for registering domain names containing Complainant’s SATIVEX Mark in its entirety.

As a coined mark, the SATIVEX Mark is strong and inherently distinctive – it holds no other significance or meaning. The Mark is widely known and has a reputation as the world’s first prescription medicine derived from the cannabis plant. Not only has the Sativex product been approved for the treatment of spasticity due to multiple sclerosis in over 25 countries, it was launched and has been available in Spain since March 2011, a period of no less than 7 years before Respondent registered the first of the Domain Names.

In light of the registration dates, an inference can be drawn that Respondent has been monitoring developments relating to Complainant for some time as was registered in April 2018 around the time when Complainant’s Epidiolex brand product was awaiting FDA-approval and subsequently the second Domain Name was registered after that product gained historic FDA-approval leading immediately to speculation that Complainant would seek FDA-approval for its Sativex product (this was the subject of third-party publications).

Before commencing this proceeding, the Domain Name was being used as a parking page. It is clear from the landing page at the time, the Domain Name was being used for click-through advertising promoting third-party businesses, including offering “CBD flowers” and information about “Cannabis Stocks” via third-party retailers and service providers. There remains a notice that confirms that the site is being used for third-party advertising. Respondent was therefore actively benefiting from the registration of at least one of the Domain Names, or had enabled oneself to do so, through revenue earned via such advertising. Although the Domain Names now appear to be inactive, they have been set up with MX records which suggests that they may be actively used for email purposes. This is also indicative of bad faith registration and use because any email emanating from either Domain Name could not be used for any good faith purpose.

Respondent has registered the Domain Names with intent to target Complainant either for the purposes of misappropriating and unduly benefitting from unauthorized use of confusingly similar Domain Names or, alternatively, for the purpose of disrupting the business of Complainant. The term “competitor” is not restricted to commercial competitors but rather encompasses a person who acts in opposition to another. Respondent has done this by, inter alia, registering Domain Names that could be used for the purposes of impersonating, imitating, or holding itself out as Complainant, or misleadingly giving the impression that it has some kind of connection with Complainant, or preventing Complainant from reflecting its name in Top-Level domain registrations similar to its domain name. There is no plausible alternative use for the Domain Names as it is clear that any use by Respondent of the SATIVEX Mark would not be authorized and would infringe Complainant’s rights in its well-known SATIVEX Mark.

It should also be noted that the risk of misuse of the Domain Names is further exacerbated given Complainant being a growing business in the pharmaceutical industry that, in large part, develops medicine for the treatment of rare diseases in children. There are reputational risks to Complainant that are heightened by third-party abuse of its brands given Complainant’s specialization and industry. B. Respondent

Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar

The Panel finds that Complainant has trademark rights in the SATIVEX Mark by virtue of its trademark registrations around the world including those mentioned above.

The Panel also finds that the Domain Names and are confusingly similar to Complainant’s SATIVEX Mark. The Domain Names consist of Complainant’s SATIVEX Mark in its entirety along with the descriptive terms “CBD” and “Med” and the generic Top-Level domain (“gTLD”) “.com”. When a domain name incorporates a trademark in its entirety, there is sufficient similarity between the mark and the domain name to render it confusingly similar. See Eauto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047. And it is an accepted principle that the addition of a gTLD is not a distinguishing factor. Adding the descriptive terms “Med” and “CBD” to Complainant’s Mark does not distinguish the Domain Names from Complainant’s Mark and, therefore, does not dispel confusing similarity between Complainant’s Mark and each Domain Name. See Accolade Wines Australia Limited v. Kathi Vining,WIPO Case No. D2018-0041 (finding that the addition of the dictionary term “wine” to the HARDYS trademark did not distinguish the disputed domain names in any way, and therefore, did not dispel confusing similarity).

For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied. B. Rights or Legitimate Interests

Complainant maintains that it carefully controls the use of the SATIVEX Mark by third parties and has not authorized Respondent to use the Mark, nor is Respondent affiliated in any way with Complainant. Complainant argues that neither of the Domain Names currently resolves to a bona fide public facing website and it notes that before filing this Complaint, the Domain Name was in use as a parked page with click-through advertising promoting third-party businesses offering “CBD flowers” and information relating to “Cannabis Stocks” via third party retailers and service providers. Complainant also notes there is no evidence suggesting that Respondent is commonly known by the Domain Names or that it has acquired any trade mark rights corresponding to them. And, after having searched for Respondent “Jordi Desumvila” with the terms “Sativex”, “SativexMed”, “SativexMed.com”, “SativexCBD” and “SativexCBD.com”, Complainant reports there is no identifiable association between Respondent and the search terms. For these reasons, Complainant contends that Respondent has no rights or legitimate interests in the Domain Names.

Complainant has raised a prima facie presumption of Respondent’s lack of rights or legitimate interests, and Respondent has failed to rebut that presumption. The Panel is therefore satisfied that Complainant has carried its burden of proving that Respondent has no rights or legitimate interests in the Domain Names.

The Panel therefore holds that Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith

Respondent registered the Domain Names in 2018, a considerable time after Complainant received its trademark registrations for the SATIVEX Mark (e.g., United Kingdom Trade Mark Reg. No. 2,304,388 registered November 29, 2002). Respondent chose to register two domain names that adopt a coined term – SATIVEX – having no other significance or meaning in the health, medical or pharmaceutical fields and having no generic meaning. Indeed, the only evidence of record is that the SATIVEX Mark is exclusively associated with Complainant and/or the Sativex brand product. In addition to registering domain names that adopt the entirety of Complainant’s SATIVEX Mark, Respondent added the terms “CBD” and “Med” which clearly relate to Complainant or the field in which Complainant operates and they are closely connected to or otherwise descriptive of Complainant’s Sativex product (“CBD” being one of the key active ingredients in the product and “Med” being descriptive of the product’s intended use). Furthermore, before commencing this proceeding, Respondent was using the Domain Name as a parking page having click-through advertising promoting third-party businesses, including offering “CBD flowers” and information about “Cannabis Stocks” via third-party retailers and service providers. From this incontrovertible evidence the Panel concludes that Respondent registered the Domain Names in bad faith. UDRP panels have found bad faith registration and use when a domain name incorporates a complainant’s mark plus an additional term that corresponds to the complainant’s “area of activity”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 3.2.1; Velcro BVBA v. Willie N. Eskridge,WIPO Case No. D2019-0598.

With regard to bad faith use, Respondent was using the Domain Name that is confusingly similar to Complainant’s SATIVEX Mark, with the addition of a term that relates to Complainant’s business, without any legitimate rights in the Mark, to host a site featuring links promoting third-party businesses (click‑through advertising revenue), including offering “CBD flowers” and information about “Cannabis Stocks” via third-party retailers and service providers. Although the Domain Names currently resolve to blank pages, the circumstances further support a conclusion of bad faith use including: (i) the degree of distinctiveness and reputation of Complainant and the Mark, (ii) the failure of Respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, including failing to respond to Complainant’s letter requesting a transfer of the Domain Names, (iii) Respondent’s attempt to conceal its identity, and (iv) the implausibility of any good faith use to which the Domain Names may be put. WIPO Overview 3.0, section 3.3; see Christian Dior Couture v. Chanel Perfume/Whois Privacy Protection Service Inc.,WIPO Case No. D2007-0876. Furthermore, the fact that the Domain Names currently lead to a blank page is of no moment because Respondent may use the Domain Names at any time to revert to the previously infringing use. See Christian Dior Couture v. Chanel Perfume/Whois Privacy Protection Service Inc., supra.

For the foregoing reasons, the Panel finds that paragraph 4(a)(iii) of the Policy has been satisfied. 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 Complainant.

Harrie R. Samaras
Sole Panelist
Date: February 18, 2020

Full & Egal Universal Law Academy