WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SmithKline Beecham Limited and Glaxo Group Limited v. Administration Department, GSKline Limited and Lloyd Hamilton
Case No. DME2013-0003
1. The Parties
The Complainants are SmithKline Beecham Limited of Brentford, Middlesex, United Kingdom of Great Britain and Northern Ireland (“United Kingdom” or “UK”) and Glaxo Group Limited of Greenford, Middlesex, United Kingdom, represented by Rouse Legal, United Kingdom.
The Respondents are Administration Department, GSKline Limited and Lloyd Hamilton and of Manchester, Lancashire, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <gskline.me> (the “Domain Name”) is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 28, 2013. On January 29, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 29, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrant of the Domain Name 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”) , approved by the doMEn d.o.o (“doMEn”) on April 30, 2008, the Rules for Uniform Domain Name Dispute Resolution Policy for .ME, approved by doMEn on October 1, 2012 (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 Respondents of the Complaint, and the proceedings commenced on February 1, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 21, 2013. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on February 22, 2013.
The Center appointed Jon Lang as the sole panelist in this matter on February 26, 2013. 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 Complainants are part of the GlaxoSmithKline group of companies (“GSK”). GSK was created in 2000 following the merger between GlaxoWellcome Plc and SmithKline Beecham Plc. GSK is one of the world’s leading research based pharmaceutical and healthcare organizations. It develops, manufactures and markets pharmaceutical, vaccines, over-the-counter medicines and consumer healthcare products.
The two Complainants have a common legal interest in the rights that are affected by the Respondents’ conduct: the First Complainant SmithKline Beecham Limited is the proprietor of the registered trade marks upon which this Complaint is based (the “GSK Trade Marks”), whereas the Second Complainant Glaxo Group Limited carries on GSK’s business under and by reference to the names GSK and GlaxoSmithKline in the UK and, accordingly, is the owner of the goodwill and reputation in the GSK brand and the GSK Trade Marks. The GSK Trade Marks include the following:
GSK GlaxoSmithKline / GSK GLAXOSMITHKLINE, application date – June 14 2000, Registration No. 2235933 (UK)
GlaxoSmithKline / GLAXOSMITHKLINE, application date – June 14 2000, Registration No. 2236050 (UK)
GSK, application date – January 17 2000, Registration No. 2219527 (UK).
GSK also operate a website at www.gsk.com.
The First Respondent, GSKline Limited was incorporated in the UK on November 28, 2005 and appears to be a dormant company. The Second Respondent, Lloyd Hamilton is the sole director, shareholder and chief executive of GSKline Limited.
The Domain Name <gskline.me> was registered on January 28, 2010.
Earlier High Court proceedings
From January 2003, the Respondents applied to register a number of domain names incorporating the sign GSKline, including the Domain Name. Moreover, between October 2006 and August 2010, the First Respondent applied for the following trade marks: GSKline, GSKLINE and gskline (the “Offending Marks”). Inevitably, this lead to a dispute between the parties and after a period of protracted correspondence (in an attempt to settle matters) between November 2009 and July 2010, the court proceedings were issued by the Complainants on May 6, 2010. These proceedings were issued against both Respondents in the English High Court, alleging trade mark infringement and passing off and sought inter alia invalidation of the Offending Marks and an order that the domain names incorporating GSKline which had been registered at that time, namely <gskline.com>, <gskline.org.uk>, <gskline.org>, <gskline.info>, <gskline.biz>, <gskline.net> and <gskline.mobi> (the “GSKline Domain Names”), be transferred to the Second Complainant. In the proceedings, the Complainants alleged that the sign GSKline was similar to one or more of the GSK Trade Marks and that there would be a likelihood of confusion on the part of the public between the two. The Complainants also said that the sign GSKline was similar to one or more of the GSK Trade Marks which have a reputation in the United Kingdom, and use of GSKline would take unfair advantage of the distinctive character or repute of the GSK Trade Marks and/or would be detrimental to the distinctive character or repute of the GSK Trade Marks. Furthermore, the Complainants alleged that the activities of the Respondents were calculated to confuse and deceive, with the result that the Respondents’ goods, services and business would be passed off as and for goods, services and business provided by GSK, or as connected or associated in the course of trade with GSK.
As to the GSKline Domain Names, the Complainants said that by placing them on the register of Internet domain names, the Respondents have misrepresented to persons who consult the register that their business is a part of, or is connected or associated in the course of trade with, GSK and that they operate as instruments of deception in the hands of anyone other than the Complainants or members of GSK.
The Complainants obtained summary judgment against the Respondents and an order was made (dated January 31, 2011) in which there were declarations that the GSKline Domain Names, (which did not specifically include the Domain Name, the subject of these UDRP proceedings) operate as instruments of deception in the hands of the Respondents. Furthermore, the order required the Respondents to immediately take all such steps as lie within their power to transfer to the Second Complainant the GSKline Domain Names and any other domain names in their power, possession, custody or control, the use of which would breach the injunction (given in the order) restraining the Respondents from either offering and/or providing goods or services under or by reference to the Offending Marks, or infringing the GSK Trade Marks. The Respondents have failed to carry out any transfer.
5. Parties’ Contentions
The Complainants rely generally on the allegations made in the High Court proceedings.
While it is open to the Complainants to seek to enforce the order of the High Court dated January 31, 2011 (the “Order”) by way of committal proceedings, they have chosen to file this Complaint on grounds of speed and cost.
Although the Domain Name <gskline.me> was not expressly dealt with in the Order, it would be covered by the Order requiring the Respondents to immediately take steps to transfer to the Second Complainant any other domain names in their power, possession, custody or control, the use of which would breach the injunction restraining the Respondents from either offering and/or providing goods or services under or by reference to the Offending Marks, or infringing the GSK Trade Marks.
Until the GSKline Domain Names are successfully transferred, the Complainants are unable to prevent the damage which may be caused to the reputation and goodwill in the GSK Trade Marks.
The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainants have rights
GSK has, at all times since the merger in 2000, carried on its business in the United Kingdom under and by reference to the name GLAXOSMITHKLINE/GlaxoSmithKline as well as the name GSK, being an abbreviation of GLAXOSMITHKLINE/GlaxoSmithKline and the name by which it is commonly known and referred. By way of example, GSK’s corporate website is located at “www.gsk.com” and is frequently visited (with more than 19 million visitors between September 15, 2009 and August 14, 2010) and also forms the business email address of GSK’s employees.
Moreover, GSK markets many market-leading products including over-the-counter medicines (e.g. Panadol), dental products (e.g. Aquafresh and Sensodyne) and smoking control products (e.g. Nicorette/NiQuitin). Many or all of GSK’s products and promotional materials, bear and have at all material times borne upon them the marks GSK and/or GLAXSMITHKLINE/GlaxoSmithKline. As a result, there exists a substantial reputation and goodwill in the United Kingdom in the names GSK and GLAXOSMITHKLINE/GlaxoSmithKline. Accordingly, when members of the trade or public see or hear goods or services offered or sold in the United Kingdom under the names GSK and/or GLAXOSMITHKLINE/GlaxoSmithKline, they expect the goods or services to be provided by GSK and no other.
The Domain Name contain the letters “gsk” (an abbreviated version of GlaxoSmithKline) at the beginning, making it confusingly similar to both the GSK Trade Marks and the Complainants’ own domain name.
Because of the high degree of similarity between the GSK Trade Marks and the Domain Name, confusion and deception are inevitable, particularly because of the goodwill and reputation in the GSK Trade Marks. Members of the public are likely to believe that the Domain Name is somehow connected with the Complainants.
As an example of the high risk of confusion, the Complainants received a scam warning relating to emails received from the email address email@example.com,uk”, which purports to originate from GSK’s headquarters.
The Respondents have no rights or legitimate interests in respect of the Domain Name
The Respondents have never provided any explanation as to the reason for choosing the name GSKline. The Respondents indicated, in correspondence with the Complainants in January 2010, that GSKline Limited “have no products and at present offer no services”, while in the same letter claiming that it would be sold as “a going concern”. However, as far as the Complainants can establish, and according to the Companies House database printout, GSKline Limited is a dormant company which does not appear to have traded and which has filed dormant accounts.
The Offending Marks have now all been invalidated at the UK Intellectual Property Office so the Respondents can no longer rely on them.
The Domain Name was registered and is being used in bad faith
The Respondents must have known about the Complainants and the GSK Trade Marks, including the GSK brand, prior to registering the Domain Name. The GSK brand is well-known throughout the world and has regularly featured in the media since its launch in 2000. The merger between GlaxoWellcome Plc and SmithKline Beecham Plc was widely reported at the time.
The names GSK and GLAXOSMITHKLINE/GlaxoSmithKline are of tremendous importance to the Complainants’ business. The GlaxoSmithKline name was chosen specifically in order to build the reputation and goodwill already residing in the distinctive names “Glaxo Wellcome” and “SmithKline Beecham”,from which the name was derived.
The goodwill and reputation in the GSK brand has built up steadily since its launch in 2000, since when GSK has made widespread use of the names GLAXOSMITHKLINE/GlaxoSmithKline and its abbreviation “gsk” across all of its activities in the UK and worldwide. By way of example, most of GSK’s products bear (a) the marks GSK and GLAXOSMITHKLINE and (b) the legend, “[product name] is a [registered] trade mark of the GlaxoSmithKline group of companies”.
The presence of the names GSK and GLAXOSMITHKLINE/GlaxoSmithKline on GSK’s products indicate to consumers and healthcare professionals that the product originates from the UK-based undertaking with a substantial reputation in improving the health of communities in the UK and worldwide, and consumers associate that product with the values that GSK has espoused since its creation. In 2005, 2006, 2007, 2008 and 2009, GSK spent GBP 697 million, GBP 759 million, GBP 744 million, GBP 805 million and GBP 923 million respectively on global advertising.
GSK is referred to in the UK media on a daily basis. For example, in 2005 in the three months prior to the incorporation of GSKline Limited, there was considerable media coverage of GSK as result of a number of high profile issues affecting its business, including GSK’s potential acquisition of Boots Healthcare International, attacks by animal rights extremists on a GSK executive, and Avian Flu and GSK’s response to the H1N1 pandemic. Given the level of press coverage surrounding the Complainants and their brand, particularly in the run-up to the formation of GSKline Limited, it is inconceivable that the Respondents could not have been aware of the Complainants or the GSK brand.
The inclusion of the GSKline name in the Domain Name would have undoubtedly provided the Respondents with a commercial advantage in the marketplace enabling the business to take a free ride on the reputation of the GSK Trade Marks had it wished to do so.
The Respondents have shown no reason for the choice of the name GSKline. However, given the substantial reputation attaching to the GSK Trade Marks, it seems unlikely that the name was chosen by the Respondents other than in bad faith, and in order to harness the reputation and goodwill in the GSK Trade Marks.
Furthermore, the Respondents do not appear to have made use of the Domain Name.
The Respondents did not reply to the Complainants’ contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires a complainant to prove that: a respondent has registered a domain name which is
(i) 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 complainant must prove each of these three elements.
A. Preliminary Matter – the Relationship between Trade Mark Law and the UDRP
The Complainants, not surprisingly, rely heavily on the order dated January 31, 2011, made in the High Court proceedings in which there were declarations that the GSKline Domain Names, which do not specifically include the Domain Name but which are identical except for the generic top-level domain (“gTLD”) suffixes, operate as instruments of deception in the hands of the Respondents and the Respondents were ordered to immediately take all such steps as lie within their power to transfer to the Second Complainant the GSKline Domain Names and any others that would breach the injunction given in the order.
Proceedings under the UDRP are not trade mark proceedings. UDRP panels are required to consider different matters to those which would be considered in trade mark proceedings, although there may well be some overlap. The position can perhaps best be illustrated by the UDRP decision in La Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Grozea Romica, WIPO Case No. D2008-1377, where the panel stated:
“[…] this Panel would suggest that the questions of trade mark infringement, passing off and other similar national laws are typically quite distinct from any assessment of bad faith under the Policy. They may overlap but are not the same. Therefore, even if it is correct that any conceivable use of a domain name would involve trade mark infringement, it does not necessarily follow that there is bad faith use under the Policy.
[…] This was, for example, the approach that was followed by the three-person panel in Mr. Talus Taylor, Mrs. Anette Tison v. Vicent George Warning/Fayalobi Interaction Management, WIPO Case No. D2008-0455. In that case the panel stated at paragraph 6.21 as follows:
‘[…] The Panel is not saying that all and any use of the Domain Name would necessarily involve some form of trade mark infringement. The issues of trade mark infringement and abusive registration, whilst they often overlap, are separate and one does not necessarily follow from the other (see for example, Delta Air Transport NV (trading as SN Brussels Airlines) v. Theodule [D]e Souza, WIPO Case No. D2003-0372; and 1066 Housing Association Ltd. v. Mr. D. Morgan, WIPO Case No. D2007-1461).’”
The degree to which trade mark proceedings are of relevance to UDRP proceedings, or the “overlap”, will vary from case to case. In this case, given the order made in the High Court proceedings, the degree of overlap is considerable. However, whilst the Complainants have chosen to bring about the transfer of the Domain Name through UDRP proceedings as opposed to enforcing the order of the High Court through further High Court proceedings, it is not the role of UDRP panels to simply give effect to orders made in other proceedings. Each complaint brought under the Policy must be analyzed on its own merits by reference to the requirements of the Policy albeit, to varying degrees, other proceedings and the orders made therein may be of some relevance to that analysis.
B. Identical or Confusingly Similar to a trade mark in which a complainant has rights
The Complainants clearly have rights in the GSK Trade Marks, GSK GlaxoSmithKline/GSK GLAXOSMITHKLINE, GlaxoSmithKline/GLAXOSMITHKLINE and GSK. The Domain Name incorporates the sign GSKline.
Under the UDRP, the test for confusing similarity involves a comparison between the trade mark and the domain name to determine likelihood of Internet user confusion. Application of the confusing similarity test under the UDRP typically involves a comparison, on a visual or aural level, between the trade mark and the domain name. If the trade mark is readily recognisable within the domain name, that can be sufficient to establish confusing similarity. However, in some cases, even though a trade mark may not be readily recognisable on a visual or aural level within a domain name, there may still be a risk that Internet users may actually believe there to be a real connection between the domain name and the complainant and/or its goods and services. In these cases, panels would typically assess the risk of confusion having regard to, amongst other matters, the overall impression created by the domain name.
The trade mark GSK is clearly recognisable within the Domain Name and that is sufficient to establish confusing similarity for the purposes of the Policy. A complainant of course need only show one trade mark (in which it has rights) in respect of which a domain name is confusingly similar. However, for the sake of completeness, the Panel also finds that the GSK Trade Marks carrying the prefix GSK would also satisfy the test of confusing similarity - an important part of the trade mark (the prefix “GSK”) is readily recognisable within the Domain Names (as is the last word of the trade mark, “Kline”).
As to the marks, GlaxoSmithKline/GLAXOSMITHKLINE, given the fact that it is widely known that the GlaxoSmithKline group of companies use the acronym GSK, and that the word “Kline” is readily apparent in the Domain Name, the Panel is of the view that the Domain Name is confusingly similar to these marks too, based on the overall impression created by the Domain Name.
Accordingly, the Panel finds, for the purposes of the Policy, that the Domain Name is confusingly similar to trade marks in which the Complainants have rights.
C. Rights or Legitimate Interests
By its allegations in the Complaint, the Complainant has made out a strong prima facie case that the Respondents lacks rights or legitimate interests in the Domain Name and, as such, the burden of production shifts to the Respondents to come forward with appropriate arguments or evidence demonstrating that they do in fact have such rights or legitimate interests. The Respondents have not done so. It might be that the Respondents felt that in the light of the declarations made in the High Court proceedings, it would be difficult to answer the case against them. Whatever their motivation for not participating in these proceedings, it is perhaps appropriate to deal with rights and legitimate interests (or the absence thereof) in a little more detail, rather than simply concluding the Respondents have no rights or legitimate interests because the prima facie case has not been answered. This is particularly so given that the name of one of the Respondents corresponds to the Domain Name i.e. GSKline Limited which, at first blush, may suggest there is an answer to the prima facie case of lack of rights or legitimate interests.
A respondent can show it has rights to or legitimate interests in a domain name in various ways even where, as is the case here, it is not licensed by or affiliated with the complainant. For instance, it can show that it is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue. A respondent might also show it has rights to or legitimate interests in a domain name by demonstrating that it has been commonly known by the domain name (even if it has acquired no associated trade mark rights).
The Respondents appear to have done nothing with the Domain Name. Accordingly, it does not appear that the Domain Name has been used in connection with a bona fide offering of goods or services or, (particularly given the order made in the High Court proceedings) that there is or has been legitimate noncommercial or fair use. However, the name of the Respondent, GSKline Limited, is more or less the same as the Domain Name. Could this be sufficient to establish rights or legitimate Interests?
Whether the Respondent GSKline Limited has been commonly known by the Domain Name, given that it appears to be dormant, is questionable, although the point becomes moot in circumstances where there is no explanation, let alone plausible explanation, as to why the name GSKline Limited was chosen in the first place. If ever there was a case that cried out for that basic explanation, this was it, particularly given the prominence of GSK and the GSK Marks at the time GSKline Limited was incorporated. A respondent cannot, without a proper explanation, legitimize its choice of domain name which it knows or should know is confusingly similar to another’s trade mark, by first incorporating a business with the same (or very similar) name to the domain name it subsequently registers, and then claim it is known by the domain name to defeat a complaint under the Policy.
In all the circumstances, the Panel finds that the Respondents lack rights or legitimate interests in the Domain Name for the purposes of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that evidence registration and use of a domain name in bad faith. The Policy requires that both registration and use must be demonstrated.
Given the absence of evidence of use of the Domain Name by the Respondents, the question of use, a requirement under the Policy, must be considered, (even if registration in bad faith can be demonstrated).
Some of the examples in paragraph 4(b) of the Policy require a positive action by the respondent (such as use of the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant's mark). But others do not, such as registration of 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 the respondent has engaged in a pattern of such conduct). Thus, it is clear that for the purposes of the Policy, inaction or a passive holding by a respondent of a domain name, can constitute bad faith use.
Given that paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances evidencing registration and use of a domain name in bad faith, panels do not need to make specific findings by reference to that list. What they must do is examine all the circumstances of a case to determine whether the respondent has registered the domain name and is using it (which includes a passive holding) in bad faith. In this case, the cumulative circumstances, including:
a) the very well-known trade marks of the Complainants that would or should have been known to the Respondents at all relevant times;
b) that it must have been or should have been obvious to the Respondents at the time of registration of the confusingly similar Domain Name that it would be difficult to use it without infringing the Complainants’ trade mark rights;
c) the order of the High Court making plain what must have been or should have been obvious in b) above; and
d) the lack of any Response by the Respondents;
lead the Panel to the conclusion that, for the purposes of the Policy, there is evidence of both registration and use of the Domain Name in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <gskline.me> be transferred to the Complainant.
Date: March 11, 2013