WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Wellcome Foundation Limited, BW USA, Inc., SmithKline Beecham Corporation d/b/a GlaxoSmithKline v. Michale Kelly
Case No. D2004-0265
1. The Parties
The Complainants are The Wellcome Foundation Limited, a corporation organized under the laws of the United Kingdom, BW USA, Inc., a corporation organized under the laws of the State of Delaware, United States of American, and SmithKline Beecham Corporation d/b/a GlaxoSmithKline, a corporation organized under the laws of the State of Pennsylvania, United States of America (hereinafter sometimes referred to jointly and severally as "Complainant").
The Respondent is Michale Kelly, giving an address at San Diego, California, United States of America (hereinafter "Respondent").
2. The Domain Name and Registrar
The disputed domain name, <wellbutrin-discount-pharmacy.com> is registered with Go Daddy Software, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") electronically on April 9, 2004, and hardcopies of the Complaint were received on April 14, 2004. On April 13, 2004, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain name at issue. On April 13, 2004, 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 for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 16, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was May 6, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 7, 2004.
The Center appointed M. Scott Donahey as the sole panelist in this matter on May 14, 2004. 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 The Wellcome Foundation Limited is the holder of numerous registrations in countries around the world for the marks WELLBUTRIN and WELLBUTRIN SR and other related marks. Complaint, Annex 3. Complainant; BW USA, Inc. is the holder of registrations of the marks WELLBUTRIN, WELLBUTRIN SR, and WELLBUTRIN XL with the United States Patent and Trademark Office ("USPTO"). Complaint, Annexes 4 through 6. Complainant; SmithKline Beecham Corporation d/b/a GlaxoSmithKline claims to be the exclusive licensee of the USPTO registered trademarks in the United States and markets the medications in the United States. Complainant fails to attach any documentary evidence that SmithKline Beecham Corporation d/b/a GlaxoSmithKline holds exclusive licenses to the WELLBUTRIN family of trademarks in the United States, but produces excerpts from the annual report of that Complainant which show that SmithKline Beecham d/b/a GlaxoSmithKline derives revenues from the sales of such products. Complaint, Annexes 7 and 8. The three corporate entities are related through a common parent company, GlaxoSmithKline plc. The three titular complainants in effect petition the Panel to consolidate their claims against Respondent.
The WELLBUTRIN family of marks is used in conjunction with pharmaceutical medicines containing buproprion hydrochloride, which is used to treat depression and other disorders. WELLBUTRIN was first introduced in 1989 and is marketed under the WELLBUTRIN family of marks. In 2003, United States sales of the medications totaled US$1,563,000,000.00. Complaint, Annex 7. The medications are advertised extensively in the United States. Complaint, Annex 9.
Respondent registered the domain name at issue on July 18, 2003. Respondent is using the domain name to resolve to a website on which the WELLBUTRIN family of medications and pharmaceutical products manufactured by competitors of Complainant are offered for sale. Complaint, Annexes 10 through 14. Respondent features the WELLBUTRIN mark prominently on the website, frequently using it in such a way as to suggest that WELLBUTRIN is the owner and sponsor of the website. Complaint, Annexes 10 through 14.
5. Parties' Contentions
Complainant contends that the domain name at issue is confusingly similar to Complainant's family of marks, that Respondent has no rights or legitimate interests in respect of the domain name, and that the domain name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Complainant effectively petitions this Panel to consolidate their related claims pursuant to paragraph 4(f) of the Policy and paragraph 10(e) of the Rules. Because the Panel finds that the parties hold related and varying interests in respects of the marks asserted and because the three titular complainants share a common parent corporation, the Panel exercises its discretion to consolidate their claims and to recognize a tripartite Complainant in this matter.
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall 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."
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,
2) that the Respondent has no rights or legitimate interests in respect of the domain name; and,
3) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
It is the Panel's view that the better view is if the domain name includes the registered mark within the domain name, then the domain name at issue is confusingly similar to the registered mark. Wal-Mart Stores v. MacLeod, d/b/a For Sale, WIPO Case No. D2000-0662. In the present case, the mark WELLBUTRIN is contained in the domain name at issue, and the Panel finds that the domain name at issue is confusingly similar to Complainant's family of marks.
B. Rights or Legitimate Interests
Complainant has alleged that Respondent has no rights or legitimate interests in respect of the domain name at issue. Respondent has failed to respond. The Panel is entitled to infer that Respondent has no rights or legitimate interests in respect of the domain name at issue. Parfums Christian Dior v. QPR Corporation, WIPO Case No. D2000-0023.
C. Registered and Used in Bad Faith
Numerous Panel decisions have held that where a mark is used in a domain name to resolve to a website at which not only goods identified by the mark, but also goods of others are offered for sale that such conduct constitutes bad faith under the Policy. Philip Morris Inc. v. Alex Tsypkin, WIPO Case No. D2002-0946 (<discount-marlboro-cigarettes.com>); Black & Decker Corp. v. Eric Savelle d/b/a Tools Plus, Inc., NAF Case No. FA 96700 <dewalt-power-tools.com> and <dewalt-woodworking-tools.com>. In the present case Respondent is using the domain name at issue to resolve to a website where not only Complainant's products identified by the mark used in the domain name at issue are offered for sale, but also medications manufactured by competitors of Complainant. Moreover, Respondent's use of Complainant's mark on the website creates a likelihood of confusion as to the source or sponsorship of the website business. This falls within paragraph 4(b)(iv) of the Policy as evidence of bad faith. Accordingly, the Panel finds that Respondent has registered and is using the domain name at issue in bad faith.
For all the foregoing reasons, and because Complainant has specifically requested transfer as the remedy, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <wellbutrin-discount-parmacy.com> be transferred. However, Complainant has failed to specify to which of the three corporate entities the domain name at issue is to be transferred. Lacking any guidance from the Complainant, the Panel orders that the domain name at issue be transferred to complainant The Wellcome Foundation Limited.
M. Scott Donahey
Date: May 24, 2004