WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

GW Pharma Limited v. Mike Smith

Case No. D2019-1738

1. The Parties

The Complainant is GW Pharma Limited, United Kingdom, represented by J A Kemp., United Kingdom.

The Respondent is Mike Smith, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <gwpharmedibles.com> (“the Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 22, 2019. On July 23, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 24, 2019, 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 26, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 15, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 16, 2019.

The Center appointed John Swinson as the sole panelist in this matter on August 22, 2019. 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 is GW Pharma Limited, a company incorporated in the United Kingdom. The Complainant was incorporated on January 29, 1999 and is a subsidiary of the GW Pharmaceuticals Group (“GW”). The Complainant is a biopharmaceutical company focused on discovering, developing and commercialising novel therapeutics in a broad range of disease areas, including plant-derived cannabinoid therapeutics. GW has operations in the United States and in the United Kingdom.

The Complainant is the owner of a number of registered trade marks for GW PHARMACEUTICALS, GW PHARMA, GWPHARM and GWPHARM.COM. The earliest trade mark registered for GWPHARM is United Kingdom registered trade mark number 3038722 registered on April 25, 2014 (the “Trade Mark”). The Complainant is also the owner of domain names which incorporate the Trade Mark, including <gwpharm.com>, <gwpharm.co.uk>, <gwpharma.co.uk> and <gwpharma.com>.

The Respondent is Mike Smith, an individual of the United States. No response was received from the Respondent and therefore little information is known about him. The Disputed Domain Name was registered on May 23, 2019. The Disputed Domain Name resolves to a parking page containing pay-per-click (“PPC”) links generated by the Registrar.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following submissions.

Identical or Confusingly Similar

The Complainant has rights in the terms GW PHARMACEUTICALS, GW PHARMA, GW PHARM, GWPHARM and GWPHARM.COM which form a family of GW trade marks. The Disputed Domain Name incorporates the United Kingdom Trade Mark GWPHARM, registration No. 3038722 registered on April 25, 2014, in its entirety and is also confusingly similar to the Complainant’s GW marks. The generic term in the form of a suffix does not diminish the recognisability or prominence of the Trade Mark within the Disputed Domain Name.

The addition of the descriptive term “Edibles” as a suffix reinforces the connection between the Disputed Domain Name and the Complainant’s business. The Complainant is famous for innovation in the field of cannabis-derived pharmaceutical products for the treatment of rare and debilitating diseases. The term “edibles” is now an accepted and known colloquialism used as a plural noun to signify edible cannabis-based products, and is therefore descriptive and non-distinctive.

The Disputed Domain Name is confusingly similar to the Complainant’s Trade Mark.

Rights or Legitimate Interests

The Respondent should be considered as having no rights or legitimate interests in the Disputed Domain Name for the following reasons:

- There has been no evidence of the 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. The Disputed Domain Name resolves to a parked page with pay-per-click (“PPC”) advertising promoting third party businesses and has not been set up for email use. No Internet search results were found for the Respondent in conjunction with the Disputed Domain Name.

- The Respondent is not commonly known by the Disputed Domain Name and has not acquired any trade mark or service mark 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 Respondent is using the Disputed Domain Name to divert consumers or to tarnish the Trade Mark at issue.

The Respondent is not authorised to use the Trade Mark and is not affiliated with or otherwise known to the Complainant. The Complainant’s marks are distinctive and have no secondary meaning. The Disputed Domain Name contains an inherent falsehood insofar as it suggests that the Complainant produces or offers, or licenses its name for, edibles or is otherwise associated with edibles. The Complainant does not do this.

Registered and Used in Bad Faith

The Disputed Domain Name should be considered as having been registered and used in bad faith by the Respondent for the following reasons:

- There are circumstances indicating that the Disputed Domain Name was registered in order to prevent the Complainant from reflecting the Trade Mark in a corresponding domain name.

- The Disputed Domain Name was registered primarily for the purpose of disrupting the business of the Complainant.

- By using the Disputed Domain Name, the Respondent intentionally attempted to attract for commercial gain, Internet users to the Respondent’s web site or other online location, by creating a likelihood of confusion with the Complainant’s Trade Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.

- By registering and using the Disputed Domain Name, the Respondent seeks to take unfair advantage of, abuse, or otherwise engage in behaviour detrimental to the Trade Mark.

The Respondent has no plausible connection or reason for registering a domain name containing the Trade Mark.

A strong and credible inference can be drawn that the Respondent has registered the Disputed Domain Name to capitalise on and misappropriate the Complainant’s investment in, and development of, its Trade Mark and products, for the profit of the Respondent or his employer, GCGX. GCGX is a pharmaceutical company and appears to intend to launch THC and CBD products, including edibles. GCGX is a direct competitor to the Complainant. Alternatively, the Disputed Domain Name was registered for the purpose of disrupting the business of the Complainant which, in terms of medical application of cannabis-based products, is a competitor.

The Disputed Domain Name suggests that edibles are a product manufactured by the Complainant and that the Respondent is somehow affiliated with the Complainant or authorised or licensed to produce edible products using the Complainant’s name when it is not.

Further and in the alternative, the Respondent’s registration and ownership of the Disputed Domain Name is passive holding. This does not prevent a finding of bad faith under the doctrine of passive holding. The Disputed Domain Name could be interpreted to communicate that the Complainant provides or manufactures edibles. This could cause the Complainant serious harm as it is renowned for the innovative production of treatments for children. If the Disputed Domain Name is used to sell unregulated and untested products, the harm to the Complainant’s reputation could be irreparable. A high degree of care must go into the production, offering and use of edibles. Unregulated use presents a high risk of harm to patients and the Complainant’s reputation.

The Respondent is actively benefiting from the registration through revenue earned via PPC advertising.

Given the Complainant’s reputation and the Respondent’s association of the Trade Mark with edibles (which the Complainant does not and has no plans to offer), there is no conceivable or plausible good faith use of the Disputed Domain Name by the Respondent.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:

(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii) the Disputed Domain Name has been registered and is being used in bad faith.

The onus of proving these elements is on the Complainant even though the Respondent failed to submit a response.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.

The Disputed Domain Name incorporates the entirety of the Trade Mark, with the additional element “edibles”. Where a domain name incorporates the entirety of a trade mark, it will normally be considered confusingly similar to that mark (see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). The Trade Mark is clearly recognisable within the Disputed Domain Name and the addition of the descriptive word “edibles” does not prevent a finding of confusing similarity under the first element (see section 1.8 of WIPO Overview 3.0).

The Top-Level Domain (“TLD”) is disregarded under this element (see section 1.11 of WIPO Overview 3.0).

The Disputed Domain Name is confusingly similar to the Trade Mark. The Complainant succeeds on the first element of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.

The Panel considers the Complainant has made out a prima facie case. This finding is based on the following:

- The Respondent is not using (and there is no evidence that the Respondent has demonstrable preparations to use) the Disputed Domain Name in connection with a bona fide offering of goods or services. The Complainant has provided evidence that the Disputed Domain Name resolves to a parking page with PPC links. This is not a bona fide offering of goods or services where such links compete with or capitalise on the reputation and goodwill of the Complainant’s mark or otherwise mislead Internet users (see section 2.9 of WIPO Overview 3.0). The Panel notes that the links on the parking page include “Marijuana Companies” and “Pharma Companies” and the Panel considers that these links either compete with or capitalise on the reputation and goodwill of the Complainant’s brand.

- The Panel accepts the Complainant’s evidence that the Complainant has not authorised or otherwise given the Respondent permission to use the Trade Mark in the Disputed Domain Name.

- There is no evidence that the Respondent has been commonly known by the Disputed Domain Name, or has rights in relation to this name.

- The Respondent has not been making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain. The Disputed Domain Name carries a high risk of implied affiliation (see section 2.5.1 of WIPO Overview 3.0) and the Complainant has provided evidence that the Respondent has used the Disputed Domain Name for PPC advertising, which presumably generates revenue (see section 2.5.3 of WIPO Overview 3.0).

The Respondent had the opportunity to demonstrate its rights or legitimate interests, but did not do so. As such, the prima facie case established by the Complainant has not been rebutted and the Complainant succeeds on the second element of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.

The Complainant has provided substantial evidence of its reputation both in the United States, where the Respondent is based, and in other jurisdictions. The Complainant has been in operation since 1999 and has received significant media attention in recent years in the field of cannabis therapeutics. The Panel considers that the Complainant has developed a significant reputation in the Trade Mark and it is widely-known.

The Complainant registered the Trade Mark on April 25, 2014. This predates the registration of the Disputed Domain Name by more than 5 years. The Complainant also has a registration for GW PHARMACEUTICALS, a closely related term, dating back to 2004 and has used the GW branding for over 20 years. The Complainant is also the owner of four domain names that incorporate the Trade Mark. UDRP Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names incorporating the trade mark plus a descriptive term) to a famous or widely-known Trade mark by an unaffiliated entity can by itself create a presumption of bad faith (see section 3.1.4 of the WIPO Overview 3.0).

The Panel also considers that the conjunction of “GW” and “Pharm” is not on obvious choice for a domain name and in the absence of any evidence to the contrary, the Panel accepts the Complainant’s submission that the acronym GW has no other significance or meaning in health, medical or pharmaceutical fields.

Based on the evidence provided by the Complainant, the Panel finds that the Respondent likely had knowledge of the Trade Mark and the Complainant at the time it registered the Disputed Domain Name.

The following additional factors also support a finding of bad faith registration and use:

- The Disputed Domain Name incorporates the Trade Mark plus the descriptive term “edibles”. The Panel accepts the Complainant’s contention that edibles refer to edible cannabis-based products. The Panel considers that edibles are within either the Complainant’s area of activity as a developer of plant-derived cannabinoid therapeutics, or the Complainant’s natural zone of expansion (see section 3.2.1 of WIPO Overview 3.0).

- The Respondent lacks rights and legitimate interests (for the reasons identified above) and there is no credible explanation for the Respondent’s choice of the Disputed Domain Name (see section 3.2.1 of WIPO Overview 3.0).

- The Panel accepts the Complainant’s submission that given the Complainant’s reputation and the Respondent’s association of the Trade Mark with edibles, there is no conceivable good faith use to which the Disputed Domain Name could be put (see section 3.1.4 of WIPO Overview 3.0).

- The Complainant has provided evidence that the Respondent has used the Disputed Domain Name for PPC advertising. As discussed above, in relation to the second element of the Policy, the links on the parking page include “Marijuana Companies” and “Pharma Companies”. The Panel considers that these links either compete with, or capitalise on, the reputation and goodwill of the Complainant’s brand. The Respondent cannot disclaim responsibility for these links, even if the Respondent did not directly profit from them (see section 3.5 of WIPO Overview 3.0 and Owens Corning v. NA, WIPO Case No. D2007-1143).

The Panel considers that the Complainant has proved that by using the Disputed Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s Trade Mark or otherwise to take advantage in some manner of the Complainant’s reputation and goodwill in the Trade Mark. This is evidence of registration and use in bad faith.

The Complainant further submits that the Respondent has registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor. This submission has been made on the basis that the Respondent is an employee of Global Consortium, Inc (“GCGX”), a pharmaceutical company and appears to intend to launch THC and CBD products, including edibles. The only evidence before the Panel that the Respondent Michael Smith is the Distribution Specialist for GCGX, is that both persons moved from Philadelphia to California. The Complainant relies on a WhitePages extract and the fact that the Respondent’s phone number features the Philadelphia area code. The name Michael Smith is a common name and there is not enough evidence for the Panel to find that these two Michael Smiths are one and the same. However, this does not negate the finding of bad faith registration and use set out above.

In light of the above, the Panel finds that the Complainant has succeeded on the third element 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 <gwpharmedibles.com> be transferred to the Complainant.

John Swinson
Sole Panelist
Date: September 4, 2019