WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Glaxo Group Limited v. Melissa S
Case No. D2014-0826
1. The Parties
The Complainant is Glaxo Group Limited of Brentford, Middlesex, United Kingdom of Great Britain and Northern Ireland ("U.K."), represented by Joanne Green, U.K.
The Respondent is Melissa S of Hong Kong, China.
2. The Domain Names and Registrar
The disputed domain names <frespiris.com>, <librespa.com> and <ristelta.com> are registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 19, 2014. On May 19, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 20, 2014, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on May 22, 2014. The Complainant filed a further amended Complaint on May 23, 2014.
The Center verified that the Complaint together with the amended Complaints 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 30, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 19, 2014. The sole communication from the Respondent was an email on May 23, 2014.
The Center appointed Nicholas Weston as the sole panelist in this matter on June 27, 2014. 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.
The language of this administrative proceeding is English, being the language of the registration agreement.
4. Factual Background
The Complainant operates a healthcare business with global sales in Q1 2014 totaling around GBP 5.6 Billion1. The Complainant holds registrations for the trade marks FRESPIRIS and LIBRESPA in the U.K. and the European Union ("E.U.") and has applications pending in in a number of other countries. Complainant also filed an application in the U.K. for the trade mark RISTELTA on October 18, 2013, withdrew the application and filed an application for that mark in the United States ("U.S.") on January 28, 2014 which it uses to designate certain pharmaceutical preparations in Class 5. Registration for the trade marks FRESPIRIS and LIBRESPA has been in effect in the U.K. since October 17 and 18, 2013, respectively. In summary, the U.K. trade marks also cover pharmaceutical preparations for the treatment of certain conditions in Class 5.
The disputed domain names <frespiris.com>, <librespa.com> and <ristelta.com> were registered on October 22, 2013.
5. Parties' Contentions
The Complainant cites its registrations of the trade marks FRESPIRIS and LIBRESPA in the U.K. and the E.U. and its pending application for the trade mark RISTELTA in the U.S. as prima facie evidence of ownership.
The Complainant submits that the trade marks FRESPIRIS, LIBRESPA and RISTELTA are distinctive and that its rights in these trade marks predate the Respondent's registration of the disputed domain names <frespiris.com>, <librespa.com> and <ristelta.com>. It submits that the disputed domain names are confusingly similar to its trade marks, because the disputed domain names incorporate in their entirety the FRESPIRIS, LIBRESPA and RISTELTA trade marks and that the similarity is not removed by the addition of the generic Top Level Domain ("gTLD") ".com".
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain names because the Respondent has no trade mark rights in or license to use the FRESPIRIS, LIBRESPA and RISTELTA trade marks (citing; Adamovske Strojirny v. Tatu Rautiainen, WIPO Case No. D2000-1394; Compagnie de Saint Gobain v. Com-Union Corp., WIPO Case No. D2000-0020).
Finally, the Complainant alleges that the registration and use of the disputed domain names were, and currently are, in bad faith, pursuant to the Policy, paragraphs 4(a)(iii) and 4(b) and the Rules, paragraph 3(b)(ix)(3). On the issue of registration, the Complainant contends that "the Complainant filed the trade marks at the UK Intellectual Property Office on 17 and 18 October 2013 and five days afterwards the respondent registered the domain names <frespiris.com>, <librespa.com>, (and) <ristelta.com> on 22 October 2013". On the issue of use, the Complainant invited the Panel to draw an adverse inference from the Respondent's offering the disputed domain names for sale for USD 750 each on GoDaddy Auctions. The submission appears to invite the finding that such use constitutes the kind of opportunistic bad faith that panelists in UDRP cases such as Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028 considered impermissible.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the complainant has the burden of proving the following:
(i) that the domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
A. Preliminary Issue - Identification of Respondent or Respondents
Paragraph 1 of the Rules defines "Respondent" as "the holder of a domain name registration against which a complaint is initiated". The Complainant has named and proceeded against "Melissa S" of Hong Kong, China.
Under paragraph 3(b)(v) of the Rules, the Complaint is required, inter alia, to provide the name of the respondent and contact information. The ICANN Registrar Accreditation Agreement (2001) at paragraph 188.8.131.52 requires that "The Registered Name Holder shall provide to Registrar accurate and reliable contact details and promptly correct and update them." In other words, the registrant and the registrar are required to keep in contact. Having regard also to the onerous obligations incumbent on a complainant, this Panel finds it is procedurally efficient, and equitable, to permit joinder of the party named as the Respondent as so named.
Finally, while the Center must attempt reasonably to contact the Respondent, it can do no better than to send communications to the contact information provided in the Complaint and the publicly available WhoIs record (or information provided by the Registrar). Proof of service is not required. Paragraph 2 of the Rules use the words "calculated to achieve actual notice", not "actually achieve actual notice". As no response was filed, the Panel has reviewed the record to ensure that the Complaint was properly notified to the Respondent. The Panel is satisfied that the Center has discharged this responsibility.
B. Identical or Confusingly Similar
The Complainant has produced sufficient evidence to demonstrate that it has registered trade mark rights in the trade marks FRESPIRIS and LIBRESPA in the U.K. pursuant to trade mark Registration No's. 3026715 (filed on October 17, 2013) and 3026789 (filed on October 18 , 2013) respectively in class 5 for pharmaceutical preparations and substances. In any event, the ownership of a domain name registration may be questioned by comparing it to a trade mark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358). The Panel finds that the Complainant has rights in the marks FRESPIRIS AND LIBRESPA.
The Panel notes that the Complainant has not yet not registered the RISTELTA trade mark. The Complainant applied for the trade mark RISTELTA in Class 5 in the U.K. on October 18, 2013, withdrew the application and filed an application for that mark in the U.S., on January 28, 2014. However, the Panel refers to paragraph 1.4 of the WIPO Overview of the WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), which states that registration of a domain name before a complainant acquires trade mark rights in a name does not prevent a finding of identical or confusing similarity under the first element of the UDRP. Whether the Complainant had rights in the trade mark RISTELTA at the time of registration of the disputed domain names may be relevant to the consideration of the second and third element, but it is not relevant for the purposes of determining whether the disputed domain name <ristelta.com> is confusingly similar to a trade mark in which the Complainant has rights. In this case, the Panel finds that despite the fact that the Complainant's U.S. trademark application has not yet matured, RISTELTA has become a distinctive identifier associated with the Complainant and/or its goods and services. The Panel is therefore satisfied that the Complainant has relevant trade mark rights in RISTELTA under the first element of the Policy.
Turning to whether the disputed domain names are identical or confusingly similar to the FRESPIRIS, LIBRESPA and RISTELTA trade marks, the Panel observes that the disputed domain names comprise (a) an exact reproduction of the Complainant's trade marks FRESPIRIS, LIBRESPA and RISTELTA; (b) followed by the gTLD extension ".com" all in one continuous domain name.
It is well-established that the gTLD ".com" used as part of a domain name may be disregarded: (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374). The relevant comparison to be made in this case is with the second-level portion of the disputed domain names "frespiris", "librespa" and "ristelta".
Accordingly, the Panel finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists the ways that the respondent may demonstrate rights or legitimate interests in the disputed domain names:
(i) before any notice of the dispute, respondent's use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if it has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Policy places the burden on the complainant to establish the absence of 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).
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain names because the Respondent has no trade mark rights in or license to use the FRESPIRIS, LIBRESPA and RISTELTA marks. In fact, the issue is not whether the Respondent has any rights or legitimate interests in the trade marks FRESPIRIS, LIBRESPA and RISTELTA. Rather, the issue is whether the Respondent has any rights or legitimate interests in the disputed domain names.
In this case, the Respondent is not commonly known by any of the disputed domain names. Nor, on any objective view, is the Respondent a reseller with a legitimate interest in a domain name incorporating a manufacturer's mark, such that it could meet the tests set out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. In light of (i) the fact that the Complainant has not licensed or otherwise permitted the Respondent to use any of its trade marks or to apply for or use any domain name incorporating any of those trade marks, and (ii) the fact that the words "frespiris", "librespa" and "ristelta" appear to be invented, and as such they are not one traders would legitimately choose unless seeking to create an impression of an association with the Complainant, this Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names.
The Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the disputed domain names that could amount to a legitimate noncommercial or fair use. This Panel therefore finds that the Respondent is making an illegitimate commercial use of the disputed domain names by deliberately and opportunistically targeting the Complainant.
The Panel finds for the Complainant on the second element of the Policy.
D. Registered and Used in Bad Faith
The third element of the Policy that the Complainant must also demonstrate is that the disputed domain names have been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both.
"b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith, (relevantly):
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."
The examples of bad faith registration and use in paragraph 4(b) are not exhaustive of all circumstances from which such bad faith may be found; (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). The objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trade mark of another (see Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230).
Paragraph 2 of the Policy clearly states: "It is your [domain-name holder's] responsibility to determine whether your domain name registration infringes or violates someone else's rights". The lack of any good faith attempt to ascertain whether or not it was registering and using someone else's trade mark, may support a finding of bad faith (see Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304; mVisible Technologies Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141). The fact that Respondent registered all three names within a few days of the Complainant's trade marks applications being made in October, 2013, while not sufficient to establish a pattern of conduct, is suggestive that Respondent knew of Complainant's trade marks (see Home Interiors & Gifts, Inc. v. Home Interiors, WIPO Case No. D2000-0010). The Respondent's use of the disputed domain names is apparently for domain name monetization unconnected with any bona fide supply of goods or services by Respondent. The business model in this case, is that the Respondent has observed what trade marks the Complainant is filing for then registers the corresponding domain name and offers each one for sale on GoDaddy Auctions at a price exceeding the registration price. The fact that the disputed domain names may have been registered before the Complainant had formally acquired trade mark rights in the relevant names that compose the disputed domain names does not prevent a finding of bad faith registration (see paragraph 3.1 of WIPO Overview 2.0 which reads in part "In certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found."). This Panel therefore finds that each of the disputed domain names was registered in bad faith.
On the question of whether the disputed domain names are being used in bad faith, there is no active use of the disputed domain names in the sense that they resolve to an active web site. Nevertheless in view of the circumstances of the registration of the disputed domain names in such close temporal proximity to the Complainant's U.K. trade mark applications and then offering them for auction with a starting bid minimum at USD 750.00 each, this Panel also finds that the Respondent has taken the Complainant's trade marks FRESPIRIS, LIBRESPA and RISTELTA and incorporated them in the disputed domain names without the Complainant's consent or authorization, for the very purpose of circumstances indicating that the disputed domain names were registered or acquired for the purpose of selling them for valuable consideration in excess of the documented out-of-pocket costs directly related to the registration or acquisition of the disputed domain names (contrary to paragraph 4(b)(i) of the Policy).
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
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 names <frespiris.com>, <librespa.com> and <ristelta.com> be transferred to the Complainant.
Date: July 11, 2014
1 According to "www.gsk.com".