The Complainant is GW Research Limited, United Kingdom, represented by J A Kemp., United Kingdom.
The Respondent is Big Valdo, Cameroon.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 12, 2021. On July 12, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 12, 2021, 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 July 20, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 9, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 5, 2021.
The Center appointed Nicholas Weston as the sole panelist in this matter on September 8, 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 BackgroundThe Complainant is a United Kingdom based subsidiary of NASDAQ listed pharmaceutical company GW Pharmaceuticals PLC, founded in 1998, that operates a life sciences business in several countries with consolidated revenue in 2019 of more than USD 311 million. The Complainant holds registrations for the trademark EPIDIOLEX in a number of countries, which it uses to designate the first prescription pharmaceutical formulation of highly plant-derived cannabidiol (“CBD”) approved by the United States Food and Drug Administration (“FDA”) to treat two rare forms of epilepsy. United Kingdom registration No. 3013236, for example, has been registered in class 5 since October 11, 2013.
The Complainant owns the domain name
The Disputed Domain Name
The Complainant cites its trademark registrations for EPIDIOLEX in various countries as prima facie evidence of ownership.
The Complainant submits that the trademark EPIDIOLEX is comprised of an invented word and that its rights in that trademark predate the Respondent’s registration of the Disputed Domain Name
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it is being used to divert Internet users to “misleadingly divert consumers and potential consumers of the Complainant’s products and to tarnish the EPIDIOLEX brand and the Complainant’s business”. The Complainant also submits in its evidence “that EPIDIOLEX is a prescription-only medicine and accordingly its sale, distribution, marketing and promotion is tightly controlled. There are no indications that the Respondent is in any way aware of or able to meet the relevant applicable regulatory standards and requirements. This is further indication of Respondent’s lack of legitimate interest in the domain name: the Respondent is unable to lawfully offer for sale the Complainant’s EPIDIOLEX product.”
Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to the Policy and the Rules.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsUnder paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:
(i) that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) that the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly SimilarThe Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark EPIDIOLEX. The propriety of a domain name registration may be questioned by comparing it to a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree,
WIPO Case No. D2002-0358; WIPO Overview of WIPO Panel Views on Selected URDP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1).
Turning to whether the Disputed Domain Name is identical or confusingly similar to the EPIDIOLEX trademark, the Panel observes that the Disputed Domain Name comprises: (a) an exact reproduction of the Complainant’s EPIDIOLEX trademark; (b) followed the word “head”; (c) followed by the word “shop”; and (d) followed by the gTLD “.com”.
It is well-established that the gTLD used as technical part of a domain name may be disregarded (see Hoffmann-La Roche Inc. v. Andrew Miller,
WIPO Case No. D2008-1345). The relevant comparison to be made is with the second-level portion of the Disputed Domain Name, specifically: “epidiolexheadshop”.
It is also well-established that where a domain name incorporates a complainant’s trademark in its entirety, it may be confusingly similar to that mark despite the addition of a word or phrase such as, in this case, the term “head shop” (see Wal-Mart Stores, Inc. v. Kuchora, Kal,
WIPO Case No. D2006-0033). A Wikipedia entry for the term “head shop”, a copy of which was supplied in the Complainant’s evidence, states that “A head shop is a retail outlet specializing in paraphernalia used for consumption of cannabis and tobacco and items related to cannabis culture and related countercultures”. This Panel accepts that the addition of the term “headshop” does not preclude a finding of confusing similarity to the Complainant’s trademark.
The Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy lists the ways that the Respondent may demonstrate rights or legitimate interests in the Disputed Domain Name. The Policy also places the burden of proof on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the Disputed Domain Name. Because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production then shifts to the Respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles,
WIPO Case No. D2000-1306; WIPO Overview 3.0, section 2.1)
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it has not licensed, permitted or authorized the Respondent to use the Complainant’s trademark and for the reason that the Respondent is not making a bona fide offering of goods or services. The Complainant submits that because the EPIDIOLEX product is only available by prescription, “the Respondent is unable to lawfully offer for sale the Complainant’s EPIDIOLEX product.”
In Lilly ICOS LLC v. East Coast Webs, Sean Lowery,
WIPO Case No. D2004-1101, the Panel stated: “While mere resale of genuine branded products might give rise to a legitimate debate over whether the use of the mark was ‘nominative’, any such contention is undermined by Respondent’s sale of products directly competing with Complainant’s through the same website. This principle may have particular weight in the pharmaceutical context, where risks to the public may be enhanced by the lack of regulatory safeguards assuring the safety or efficacy of the purported ‘generic’ version of Complainant’s CIALIS brand product, thus further undermining any argument (had Respondent made such an argument, which it did not) that it was making a bona fide offering of goods. See Lilly ICOS LLC v. Dan Eccles,
WIPO Case No. D2004-0750.”
On any objective view, the Respondent is not an authorized reseller with a legitimate interest in a domain name incorporating a Complainant’s mark, and there is no disclaimer on the website at the Disputed Domain Name, therefore it cannot meet the tests set out in Oki Data Americas, Inc. v. ASD, Inc.,
WIPO Case No. D2001-0903. Nor, alternatively, is the Respondent commonly known by the Disputed Domain Name.
The composition of the Disputed Domain Name where, as here, it consists of the Complainant’s trademark and a term connoting some kind of affiliation with the Complainant with its plant derived CBD product, in this Panel’s view carries a “risk of implied affiliation” that other UDRP panels have not considered fair use as it “effectively impersonates or suggests sponsorship or endorsement by the trademark owner” (see WIPO Overview 3.0, section 2.5.1).
This Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it is engaging in an illegitimate commercial use of the Disputed Domain Name by pretending to be associated with the Complainant for the purpose of misleading consumers based on users seeking out the Complainant’s mark EPIDIOLEX and opportunistically using the Complainant’s trademark in order to divert Internet traffic to its web page.
The Panel finds for the Complainant on the second element of the Policy.
C. Registered and Used in Bad FaithThe third element of the Policy that a complainant must also demonstrate is that the disputed domain name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both.
The evidence that the Respondent has registered and used the Disputed Domain Name in bad faith is overwhelming. This Panel finds it most unlikely that the Respondent might have registered the Disputed Domain Name without knowing of the trademark (see GW Research Limited v. Susie Que,
WIPO Case No. D2019-1355, (“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.”).
Further, a gap of several years between registration of the Complainant’s trademark and the Respondent’s registration of the Disputed Domain Name (containing the trademark) can in certain circumstances be an indicator of bad faith. (See Asian World of Martial Arts Inc. v. Texas International Property Associates,
WIPO Case No. D2007-1415). In this case, the Complainant’s rights in its trademark predate any rights that could possibly flow from the Respondent’s registration by more than 7 years.
On the issue of use, the Panel notes that the Disputed Domain Name was used to resolve to an online website that purportedly offered EPIDIOLEX branded medication for sale and related CBD information. In line with prior UDRP panel decisions, the Panel finds that the obvious danger of online consumers being afforded inaccurate, incomplete or misleading information about medical products, services and applications and the probable diversion of actual sales reinforces the Respondent’s bad faith (see: Lilly ICOS LLC v. Tudor Burden, Burden Marketing,
WIPO Case No. D2004-0794; Roche Products Inc. v. Michael Robert,
WIPO Case No. D2008-1155; Parrot S.A. v. Whois Service, Belize Domain WHOIS Service,
WIPO Case No. D2007-0779; Serta Inc. v. Charles Dawson,
WIPO Case No. D2008-1474).
This Panel finds that the Respondent has taken the Complainant’s trademark EPIDIOLEX and incorporated it in the Disputed Domain Name without the Complainant’s consent or authorization, for the very purpose of capitalizing on the reputation of the trademark by diverting Internet users for commercial gain.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
7. DecisionFor 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
Nicholas Weston
Sole Panelist
Date: September 22, 2021