WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SmithKline Beecham Limited v. Whois Privacy, Private by Design, LLC / Yanping Huang
Case No. D2021-2621
1. The Parties
The Complainant is SmithKline Beecham Limited, United Kingdom, internally represented.
The Respondent is Whois Privacy, Private by Design, LLC, United States of America / Yanping Huang, United States of America.
2. The Domain Name and Registrar
The disputed domain name <gskpharm.com> (“Disputed Domain Name”) is registered with Porkbun LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 11, 2021. On August 12, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 12, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 13, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 13, 2021.
The Center verified that the Complaint together with the amended 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 August 19, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 8, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 14, 2021.
The Center appointed Nicholas Weston as the sole panelist in this matter on September 27, 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 Background
The Complainant is a subsidiary of United Kingdom based pharmaceutical company GlaxoSmithKline plc (GSK) that operates a multinational life sciences business with consolidated revenue in 2020 of more than GBP 34.1 billion1 . The Complainant holds registrations for the trademark GSK in numerous countries including, for example, International Registration No. 736230 registered since June 8, 2000, designating China, and United States Registration No. 2739470, registered since July 22, 2003.
The Complainant owns the domain name <gsk.com>, registered on August 6, 19982 .
The Disputed Domain Name <gskpharm.com> was registered on May 5, 2020, and resolved to a website where pharmaceuticals, and other products not produced by the Complainant, were offered for sale online.
5. Parties’ Contentions
The Complainant cites its trademark registrations for GSK in various countries as prima facie evidence of ownership.
The Complainant submits that the trademark GSK is a famous mark and that its rights in that trademark predate the Respondent’s registration of the Disputed Domain Name by some 19 years. It submits that the Disputed Domain Name is confusingly similar to its trademark, because the Disputed Domain Name incorporates in its entirety the GSK trademark and that the confusing similarity is not affected by the addition of the term “pharm”, and 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 Name and that “the inclusion of the GSK trade mark is intended to create a likelihood of confusion that the products being offered on the disputed domain page are being offered by a legitimate and world famous company known for developing and manufacturing high quality pharmaceutical products.”
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. It submits that “the website offers pharmaceutical products for sale through the payment of cryptocurrency, and seemingly without the required proof of a physical examination by a physician, or for a prescription, therefore constituting bad faith”, citing Aventis, Aventis Pharma SA v. VASHA Dukes, WIPO Case No. D2004-0276.
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 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 Similar
The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark GSK. 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 GSK trademark, the Panel observes that the Disputed Domain Name comprises: (a) an exact reproduction of the Complainant’s GSK trademark; (b) followed by the abbreviation “pharm”; and (c) 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: “gskpharm”.
It is also well established that in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing (see WIPO Overview 3.0, section 1.7).
This Panel accepts that the addition of the term “pharm” does not prevent a finding of confusing similarity to the Complainant’s trademark (see Rotta Research Laboratorium S.p.A. & Rottapharm S.r.l. v. Jacques Stade, WIPO Case No. D2003-0532; AstraZeneca AB v. Ventures, Inc. Asia, WIPO Case No. D2005-0264; Gilead Sciences, Inc. v. Ambrose Quin, WIPO Case No. D2021-2447).
The Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy.
B. 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 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 that reason the Respondent is not making a bona fide offering of goods or services. The Complainant submits that “the Respondent is not offering any GSK products; and as the Respondent is not selling the trade mark products, they are using the trade mark to ‘bait other internet users’.”
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.”
The Respondent is not an authorized reseller with legitimate interests 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 Panel accepts the Complainant’s uncontested submission that “there is no relationship between Complainant and Respondent giving rise to any license, permission, or other right by which Respondent could own or use any domain name incorporating Complainant's trade mark. Neither could the disputed domain name be a name or nickname of Respondent, or in any other way be identified with or related to any rights or legitimate interests of Respondent.”
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 and pharmaceutical products, 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 suggesting some association with the Complainant for the purpose of misleading consumers based on users seeking out the Complainant’s mark GSK and opportunistically using the Complainant’s trademark 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 Faith
The 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 SmithKline Beecham Limited and Glaxo Group Limited v. Administration Department, GSKline Limited and Lloyd Hamilton, WIPO Case No. DME2013-0003, (“the very well-known trade marks of the Complainants that would or should have been known to the Respondents at all relevant times.”) Previous panels have held that the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith (see: WIPO Overview 3.0, section 3.1.4).
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 some 19 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 pharmaceutical products for sale. 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).
This Panel finds that the Respondent has taken the Complainant’s trademark GSK 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.
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 <gskpharm.com> be transferred to the Complainant.
Date: October 8, 2021
1 According to its annual report, downloaded by the Panel on September 28, 2021, from the following link: “www.gsk.com/media/6662/annual-report-2020.pdf”. It has been accepted by numerous UDRP panels that that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.8).
2 According to WhoIs Domaintools, accessed September 28, 2021, at the following URL: “whois.domaintools.com/gsk.com”.