The Complainant is GW Pharma Limited, United Kingdom, represented by J A Kemp LLP, United Kingdom.
The Respondent is Domain Admin, Privacy Protect, LLC, United States of America (“United States”) / MarshalTaylor, Gw -Pharmaceuticals.com, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 19, 2021. On February 19, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 20, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 22, 2021, providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. On February 27, 2021, the Complainant filed with the Center a suspension request for purposes of settlement discussions concerning the disputed domain name. On March 1, 2021, the Center suspended the administrative proceeding until March 31, 2021. On March 30, 2021, the Complainant requested the suspension to be extended. On March 30, 2021, the Center extended the suspension until April 29, 2021. On April 29, 2021, the Complainant requested the suspension to be extended. On April 30, 2021, the Center extended the suspension until May 30, 2021. On May 30, 2021, the Complainant filed with the Center its request to reinstate the proceedings. On May 31, 2021, the Center notified that the proceeding is reinstated. The Complainant filed an amended Complaint on June 2, 2021. The Center verified that the Complaint together with the amended 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 3, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 23, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Parties that it would proceed with the panel appointment process on June 24, 2021. The Center appointed Taras Kyslyy as the sole panelist in this matter on July 12, 2021. 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 was incorporated on January 29, 1999, and is a subsidiary company within the GW Pharmaceuticals Group having its operations in both the United States and the United Kingdom. The Complainant is a biopharmaceutical company focused on discovering, developing, and commercializing novel therapeutics in a broad range of disease areas. The Complainant owns numerous trademark registrations in various jurisdictions for its GW PHARMACEUTICALS trademark, including European Union Trade Mark registration No. 3477544 registered on August 16, 2005. The Complainant owns and operates, amongst others, websites located at “www.gwpharmaceuticals.com” and “www.gwpharmaceuticals.co.uk”. The disputed domain name was registered on June 8, 2020, and does not resolve to any active website. The Complainant provided evidence that the disputed domain name previously resolved to a website that closely resembled websites operated by the Complainant. 5. Parties’ Contentions A. Complainant The disputed domain name is identical or confusingly similar to the Complainant’s trademark. The generic Top-Level Domain (“gTLD”) “.com” is a standard registration requirement and shall be ignored for the confusing similarity test. The disputed domain name is almost identical to the Complainant’s trademark. The only difference is the presence of a hyphen between “gw” and “pharmaceuticals” in the disputed domain name, which does not reduce the similarity with the Complainant’s trademark. The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not authorized to use the Complainant’s trademark and is not affiliated with, or otherwise known to the Complainant. The Complainant has not authorized, licensed or otherwise permitted the Respondent to use the Complainant’s trademark in any way. The disputed domain name is not used for any bona fide public facing website but as a parked page with no content. There is also no evidence suggesting that the Respondent is commonly known by the disputed domain name or has acquired any trademark rights corresponding to the disputed domain name. The Respondent is not making legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain. The disputed domain name was registered and is being used in bad faith. The Respondent has registered and used the disputed domain name in bad faith as the Respondent has no plausible connection or reason whatsoever for registering a domain name containing the Complainant’s trademark, and there is no other obvious basis for using the term GW PHARMACEUTICALS in the disputed domain name except as a reference to the Complainant and its business. The non-use of the disputed domain name would not prevent a finding of bad faith under the doctrine of passive holding, particularly in circumstances where the disputed domain name is identical or confusingly similar with the Complainant’s trademark, the passive holding of the disputed domain name is treated as indicative of bad faith use and registration. The Complainant could suffer serious harm through misuse of the disputed domain name. Given the Complainant’s reputation in the highly-regulated field of pharmaceuticals, and the association by the Respondent of the Complainant’s trademark there is no conceivable or plausible good faith use to which the disputed domain name could be put by the Respondent. There has been targeting of the Complainant with the disputed domain name that has not been put to legitimate use since is registration and could be used to misleadingly harm and damage the reputation of the Complainant or otherwise disrupt the Complainant’s business or interfere with its own ability to use the disputed domain name for its own legitimate purposes. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar According to section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”) the applicable gTLD in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. Thus, the Panel disregards gTLD “.com” for the purposes of the confusing similarity test. According to section 1.7 of the WIPO Overview 3.0 in cases where a domain name incorporates the entirety of a trademark the domain name will normally be considered identical or confusingly similar to that mark for purposes of UDRP standing. The Panel finds that the disputed domain incorporates the entirety of the Complainant’s trademark. According to section 1.8 of the WIPO Overview 3.0 where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The Panel finds that addition of a hyphen does not prevent a finding of confusing similarity under the first element. Considering the above, the Panel finds the disputed domain name is identical to the Complainant’s trademark, therefore, the Complainant has established its case under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The Complainant has established prima facie that the Respondent has no rights or legitimate interests in the disputed domain name. Furthermore, the Respondent provided no evidence that it holds rights or legitimate interests in the disputed domain name. The Respondent is not commonly known by the disputed domain name, which could demonstrate its rights or legitimate interests (see, e.g., World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe,WIPO Case No. D2008-0642). While the Respondent has included reference to the disputed domain name in the registrant details for the disputed domain name, there is no evidence showing that the Respondent has trademark rights in the disputed domain name or is otherwise commonly known by the disputed domain name or a name corresponding to the disputed domain name within the meaning of the UDRP, paragraph 4(c)(ii) (see section 2.3 of the WIPO Overview 3.0 ). Furthermore, the nature of the disputed domain name, being identical the Complainant’s widely-known trademark, carries a high risk of implied affiliation (see section 2.5.1 of the WIPO Overview 3.0 ). The Complainant did not license or otherwise agree for use of its prior registered trademarks by the Respondent, thus no actual or contemplated bona fide or legitimate use of the disputed domain name could be reasonably claimed (see, e.g., Sportswear Company S.P.A. v. Tang Hong, WIPOCase No. D2014-1875). The Respondent has no rights or legitimate interests in the disputed domain name resolving to an inactive website (see, e.g., Philip Morris USA Inc. v. Daniele Tornatore,WIPO Case No. D2016-1302). Noting the high risk of implied affiliation between the disputed domain name and the identical reputed trademark of the Complainant, the Panel finds that there is no plausible fair use to which the disputed domain name could be put that would not have the effect of being somehow connected to the Complainant (see, e.g., Instagram, LLC v. Super Privacy Service LTD c/o Dynadot / Zayed,WIPO Case No. D2019-2897). Considering the above, the Panel finds the Respondent does not have rights or legitimate interests in the disputed domain name. Therefore, the Complainant has established its case under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith According to section 3.2.2 of the WIPO Overview 3.0 , “[n]oting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), UDRP panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark”. The Panel finds that registering the disputed domain name identical to the Complainant’s trademark having the term “gw” as its distinctive element confirm the Respondent knew and targeted the Complainant and its trademark when registering the disputed domain name, which is bad faith. According to section 3.1.4 of the WIPO Overview 3.0 , the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. The Panel is convinced that the Complainant’s trademark is well established through long and widespread use and the Complainant has acquired a significant reputation and level of goodwill in its trademark both in the United Kingdom and internationally. Thus, the Panel finds that the disputed domain name identical to the Complainant’s trademark was registered in bad faith. According to section 3.3 of the WIPO Overview 3.0 , from the inception of the Policy, UDRP panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. In this regard the Panel takes into account (i) the high degree of distinctiveness and reputation of the Complainant’s trademark, (ii) the failure of the Respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the Respondent’s concealing its identity while registering the disputed domain name, and (iv) the implausibility of any good faith use to which the disputed domain name may be put. Furthermore, the disputed domain name appears to have previously resolved to a website impersonating the Complainant, likely for phishing purposes; such prior use further affirms a finding of bad faith in these circumstances. Considering the above, the Panel finds the disputed domain name was registered and is being used in bad faith. Therefore, the Complainant has established its case 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 disputed domain name Taras Kyslyy
Sole Panelist
Date: July 19, 2021
Full & Egal Universal Law Academy