DECISION

SmithKline Beecham Corporation et. al. v. NA a/k/a Duke, Inc.

Claim Number:  FA0312000215406

PARTIES

Complainant is SmithKline Beecham Corporation, Glaxo Group Limited, and BW USA, Inc (“Complainant”), represented by Lawrence R. Hefter, of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., 1300 I Street, NW, Washington, DC 20005-3315.  Respondent is NA a/k/a Duke, Inc. (“Respondent”), 17 North Chatsworth Ave., Apt. 4D, Larchmont, NY 10538.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <wwwaugmentin.com>, <wwwimitrex.net>, <wwwpaxil.net>, <wwwpaxilcr.net>, <wwwwellbutrin.net>, <wwwwellbutrinsr.com>, <wwwwellbutrinsr.net>, <wwwzyban.net>, <wellbutrinsr.net>, <wwwvaltrex.net>, <wwwpaxil.org> and <wwwpaxilcr.org>, registered with Enom, Inc.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

John J. Upchurch as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on December 4, 2003; the Forum received a hard copy of the Complaint on December 12, 2003.

On December 10, 2003, Enom, Inc. confirmed by e-mail to the Forum that the domain names <wwwaugmentin.com>, <wwwimitrex.net>, <wwwpaxil.net>, <wwwpaxilcr.net>, <wwwwellbutrin.net>, <wwwwellbutrinsr.com>, <wwwwellbutrinsr.net>, <wwwzyban.net>, <wellbutrinsr.net>, <wwwvaltrex.net>, <wwwpaxil.org> and <wwwpaxilcr.org> are registered with Enom, Inc. and that Respondent is the current registrant of the names. Enom, Inc.has verified that Respondent is bound by the Enom, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On December 17, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 6, 2004 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@wwwaugmentin.com, postmaster@wwwimitrex.net, postmaster@wwwpaxil.net, postmaster@wwwpaxilcr.net, postmaster@wwwwellbutrin.net, postmaster@wwwwellbutrinsr.com, postmaster@wwwwellbutrinsr.net, postmaster@wwwzyban.net, postmaster@wellbutrinsr.net, postmaster@wwwvaltrex.net, postmaster@wwwpaxil.org, and postmaster@wwwpaxilcr.org by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On January 12, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant’s parent company GlaxoSmithKline.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <wwwaugmentin.com>, <wwwimitrex.net>, <wwwpaxil.net>, <wwwpaxilcr.net>, <wwwwellbutrin.net>, <wwwwellbutrinsr.com>, <wwwwellbutrinsr.net>, <wwwzyban.net>, <wellbutrinsr.net>, <wwwvaltrex.net>, <wwwpaxil.org> and <wwwpaxilcr.org> domain names are confusingly similar to Complainant’s AUGMENTIN, IMITREX, PAXIL, PAXIL CR, VALTREX, WELLBUTRIN, WELLBUTRIN SR and ZYBAN marks.

2. Respondent does not have any rights or legitimate interests in the <wwwaugmentin.com>, <wwwimitrex.net>, <wwwpaxil.net>, <wwwpaxilcr.net>, <wwwwellbutrin.net>, <wwwwellbutrinsr.com>, <wwwwellbutrinsr.net>, <wwwzyban.net>, <wellbutrinsr.net>, <wwwvaltrex.net>, <wwwpaxil.org> and <wwwpaxilcr.org> domain names.

3. Respondent registered and used the <wwwaugmentin.com>, <wwwimitrex.net>, <wwwpaxil.net>, <wwwpaxilcr.net>, <wwwwellbutrin.net>, <wwwwellbutrinsr.com>, <wwwwellbutrinsr.net>, <wwwzyban.net>, <wellbutrinsr.net>, <wwwvaltrex.net>, <wwwpaxil.org> and <wwwpaxilcr.org> domain names in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainants SmithKline Beecham Corporation, Glaxo Group Limited, and BW USA, Inc. (“Complainant”) are wholly owned subsidiaries of GlaxoSmithKline plc.  Complainant is one of the world’s leading pharmaceutical and healthcare companies, with $31 billion in sales in 2002.  Complainant produces and markets its prescription medicines under numerous trademarks, including the marks AUGMENTIN, IMITREX, PAXIL, PAXIL CR, VALTREX, WELLBUTRIN, WELLBUTRIN SR and ZYBAN.  Complainant registered the following marks with the U.S. Patent and Trademark Office (“USPTO”): 

Mark	Registration Number	Filing Date	Registration Date
AUGMENTIN	1,144,669	December 4, 1978	December 30, 1980
IMITREX	1,787,324	July 25, 1990	August 10, 1993
PAXIL	1,821,952	July 12, 1991	February 15, 1994
PAXIL CR	2,726,889	July 10, 2002	June 17, 2003
VALTREX	1,879,098	August 12, 1993	February 14, 1995
WELLBUTRIN	1,160,590	November 19, 1979	July 14, 1981
WELLBUTRIN SR	2,051,603	November 6, 1995	April 8, 1997
ZYBAN	2,144,141	November 13, 1996	March 17, 1998

Respondent registered the <wwwaugmentin.com> domain name on August 23, 2003.  The remaining eleven (11) disputed domain names were registered on August 21, 2003.  The domain names redirect Internet users to <healthydrugs.com>, a pharmacy website.  The website advertises and sells Complainant’s products and products of Complainant’s competitors. 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

Complainant has established rights in the AUGMENTIN, IMITREX, PAXIL, PAXIL CR, VALTREX, WELLBUTRIN, WELLBUTRIN SR and ZYBAN marks through the marks’ registration with the USPTO.  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning”).

Each of Respondent’s domain names is confusingly similar to Complainant’s marks because each domain name incorporates one of Complainant’s marks and either adds the prefix “www” or a generic top-level domain or both.  Addition of the prefix “www” or a generic top-level domain is insufficient to distinguish the domain names from Complainant’s marks.  See Marie Claire Album v.  Blakely, D2002-1015 (WIPO Dec. 23, 2002) (holding that the letters "www" are not distinct in the "Internet world" and thus Respondent 's <wwwmarieclaire.com> domain name is confusingly similar to Complainant's MARIE CLAIRE trademark); see also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Nike, Inc. v. Coleman, D2000-1120 (WIPO Nov. 6, 2000) (finding that the domain name <nike.net> is identical to Complainant’s famous NIKE mark); see also Koninklijke Philips Elec. NV v. Goktas, D2000-1638 (WIPO Feb. 8, 2001) (finding that the domain name <philips.org> is identical to Complainant’s PHILIPS mark).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied. 

Rights or Legitimate Interests

Due to Respondent’s failure to contest the allegations of the Complaint, the Panel may infer that Respondent lacks rights and legitimate interests in the domain names.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).

Respondent’s use of the domain names to commercially benefit from Complainant’s goodwill and to redirect Internet users to websites selling Complainant’s products and products of Complainant’s competitors does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s appropriation of Complainant’s mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services); see also Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no “bona fide” offering of goods or services where Respondent used Complainant’s mark without authorization to attract Internet users to its website, which offered both Complainant’s products and those of Complainant’s competitors).

In addition, Respondent uses each of the domain names, with the exception of <wellbutrinsr.net>, to take advantage of Internet users who attempt to access Complainant’s websites but mistakenly omit the period after the “www” prefix.  Although Complainant has not registered a domain name for each corresponding mark, Respondent’s use of the eleven (11) domain names constitutes typosquatting because Respondent takes advantage of Internet users who attempt to contact Complainant online but assume that Complainant has a domain name for each of its corresponding marks. Respondent has engaged in typosquatting, which is evidence that Respondent lacks rights and legitimate interests in the domain names.  See Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s <wwwdinersclub.com> domain name, a typosquatted version of Complainant’s DINERS CLUB mark, was evidence in and of itself that Respondent lacks rights or legitimate interests in the disputed domain name vis á vis Complainant); see also Medline, Inc. v. Domain Active Pty. Ltd., FA 139718 (Nat. Arb. Forum Feb. 6, 2003) (“Considering the nonsensical nature of the [<wwwmedline.com>] domain name and its similarity to Complainant’s registered and distinctive [MEDLINE] mark, the Panel concludes that Policy ¶ 4(c)(ii) does not apply to Respondent”).

Furthermore, the record fails to establish that Respondent is commonly known by any of the domain names.  The record also fails to establish that Respondent is authorized or licensed to register or use domain names that incorporate Complainant’s marks.  Therefore, the Panel concludes that Respondent lacks rights and legitimate interests in the domain names pursuant to Policy ¶ 4(c)(ii).  See Great S. Wood Pres., Inc. v. TFA Assocs., FA 95169 (Nat. Arb. Forum Aug. 5, 2000) (finding that Respondent was not commonly known by the domain name <greatsouthernwood.com> where Respondent linked the domain name to <bestoftheweb.com>); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied. 

Registration and Use in Bad Faith

It may be inferred that Respondent had actual or constructive knowledge of Complainant’s rights in the marks because the marks are registered with the USPTO and are fanciful.  Registration of a domain name, despite knowledge of Complainant’s rights, is evidence of bad faith pursuant to Policy ¶ 4(a)(iii).  See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof”); see also G.D. Searle & Co. v. 24-7-Commerce.com, FA 114707 (Nat. Arb. Forum July 31, 2002) (finding that “[i]t is evident that Respondent knew of Complainant’s rights in the CELEBREX mark” since Complainant’s CELEBREX mark is a fanciful term, and Respondent uses the mark in conjunction with marks of Complainant’s competitors).

Furthermore, Respondent presumably commercially benefits through its use of the domain names by receiving commissions from Internet vendors.  Respondent’s use of the misleading domain names for commercial benefit and to disrupt Complainant’s business constitutes bad faith registration and use pursuant to Policy ¶¶ 4(b)(iii) and (iv).  See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that Respondent’s use of the <saflock.com> domain name to offer goods competing with Complainant’s illustrates Respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy 4(b)(iv)); see also Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from Respondent, a watch dealer not otherwise authorized to sell Complainant’s goods, to Complainant).

In addition, Respondent’s use of eleven of the domain names with the exception of <wellbutrinsr.net> constitutes typosquatting, which is evidence of bad faith pursuant to Policy ¶ 4(a)(iii).  See Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding the <wwwdewalt.com> domain name was registered to “ensnare those individuals who forget to type the period after the “www” portion of [a] web-address,” evidence that the domain name was registered and used in bad faith); see also Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting is the intentional misspelling of words with intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors.  Typosquatting is inherently parasitic and of itself evidence of bad faith”).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied. 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <wwwaugmentin.com>, <wwwimitrex.net>, <wwwpaxil.net>, <wwwpaxilcr.net>, <wwwwellbutrin.net>, <wwwwellbutrinsr.com>, <wwwwellbutrinsr.net>, <wwwzyban.net>, <wellbutrinsr.net>, <wwwvaltrex.net>, <wwwpaxil.org> and <wwwpaxilcr.org> domain names be TRANSFERRED from Respondent to Complainant’s parent company GlaxoSmithKline.

John J. Upchurch, Panelist

Dated:  January 26, 2004

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