Glaxo Group Limited v. Cook Creative Domain Limited
Case No. D2011-1685
1. The Parties
The Complainant is Glaxo Group Limited of Middlesex, United Kingdom of Great Britain and Northern Ireland (“U.K.”) represented by GlaxoSmithKline, United States of America (“U.S.”).
The Respondent is Cook Creative Domain Limited of Raratonga, Cook Islands.
2. The Domain Name and Registrar
The disputed domain name <daraprim.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 4, 2011. On October 5, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On October 5, 2011, GoDaddy.com, Inc. 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 7, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 27, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 31, 2011.
The Center appointed Simon Minahan as the sole panelist in this matter on November 8, 2011. 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 member of the GlaxoSmithKline group of pharmaceutical companies and the owner of the trademark DARAPRIM which it has used worldwide since 1951 in connection with medicinal preparations for the treatment of malaria. It currently holds trademark registrations for the mark DARAPRIM in 89 different jurisdictions around the world.
The trademark DARAPRIM is a “fancy” mark, being an invented word with no inherent meaning in natural language that the Panel has been able to discover.
The disputed domain name was registered on February 21, 2003. The disputed domain name has been and is being used commercially by resolving to a website which hosts links to an on-line pharmaceutical supply source operating under the name CanPharm.com. The disputed domain name was registered and is being used without the consent of the Complainant.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical to its registered DARAPRIM trademark and that by reason of the long standing and wide use of that trademark for more than 50 years before the registration of the disputed domain name, the Respondent is presumed to have known of the Complainant’s rights in the mark and to have therefore registered the disputed domain name in bad faith. It cites PepsiCo, Inc. v. “null” aka Alexander Zhavoronkov,
WIPO Case No. D2002-0562, among others, in support of this contention.
The Complainant further contends that the blatant appropriation of its mark and the nature of its use in diverting web traffic for a commercial purpose and presumed profit (by way of “click-through” revenue ) support inference of knowledge of the Complainant’s rights in and use of the DARAPRIM trademark and consequently of bad faith registration and use of the disputed domain name. The Complainant cites Hilton Group plc v. Forum LLC,
WIPO Case No. D2005-0244; Nintendo of America v. Pokemonplanet.net, Jerry Radl, and Fusion Media Solutions, Inc.,
WIPO Case No. D2001-1020; and General Electric Company v. Momm Amed la,
WIPO Case No. D2000-1727, in support of these contentions.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Panel bases its findings and conclusions of the background facts set out above. In particular it finds that the Complainant has rights and interests in the trademark DARAPRIM and that the trademark is, by reason of its widespread and longstanding use, well known generally and known to the Respondent in particular.
A. Identical or Confusingly Similar
The Panel finds the disputed domain name is identical to the Complainant’s DARAPRIM trademark, no account being taken of the gTLD suffix “.com”. See, e.g., Morgan Freeman v. Mighty LLC,
WIPO Case No. D2005-0263.
B. Rights or Legitimate Interests
The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It accepts the Complainant’s contentions, particularly in view of the Complainant’s mark being a “fancy” word, that the circumstances of long and widespread use and registration of the DARAPRIM trademark before registration of the disputed domain name raise a presumption that the Respondent knew of and adopted the trademark purposefully and that in the face of those circumstances the Respondent bears a burden to establish its rights or legitimate interests in the disputed domain name. The Respondent has proffered nothing to discharge that burden. See, e.g., PepsiCo, Inc. v. Amilcar Perez Lista d/b/a Cybersor,
WIPO Case No. D2003-0174.
C. Registered and Used in Bad Faith
The Panel finds that in the circumstances where the Respondent has knowingly and illegitimately appropriated the whole of the Complainant’s mark in the disputed domain name and made use of it in connection with a commercial website, the disputed domain name has been registered and is being used in bad faith. See, e.g., PepsiCo Inc v. "null", aka Alexander Zhavoronkov,
WIPO Case No. D2002-0562; and General Electric Company v. Momm Amed la,
WIPO Case No. D2000-1727.
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 <daraprim.com> be transferred to the Complainant.
Simon Minahan Sole Panelist Dated: November 24, 2011
Stay updated! Get new cases and decisions by daily email.