WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

GW Pharma Limited and Greenwich Biosciences, Inc. v. Name Redacted

Case No. D2019-2944

1. The Parties

The Complainant is GW Pharma Limited, United Kingdom and Greenwich Biosciences, Inc., United States of America, represented by J A Kemp LLP, United Kingdom.

The Respondent is Name Redacted.¹

2. The Domain Name and Registrar

The disputed domain name <gwichbio.com> is registered with NetEarth One Inc. d/b/a NetEarth (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 29, 2019. On November 29, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 2, 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 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 December 5, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 25, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 27, 2019.

The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on January 15, 2020. 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 GW Pharmaceuticals Group, founded in 1998, focused on discovering, developing and commercializing novel therapeutics and in the development of plant-derived cannabinoid therapeutics.

The First Complainant is the owner, amongst others, of the following trademark registrations (Annex 2 – Exhibit AXN3):

- Benelux Trademark registration No. 1402024 for GWICH BIO in classes 5, 31, 42, and 44 filed on September 11, 2019 and registered on September 12, 2019; and

- United States of America Trademark registration No. 5598310 for GREENWICH BIOSCIENCES in class 5 filed on May 26, 2016 and registered on July 4, 2017.

The First Complainant is also the owner of the domain name <greenwichbiosciences.com> registered on May 24, 2016.

The disputed domain name <gwichbio.com> was registered on July 2, 2019 and currently does not resolve to an active website.

5. Parties’ Contentions

A. Complainants

The Complainants assert to be part of a biopharmaceutical group that became well known as a world-leader in the development of plant-derived cannabinoid therapeutics for use in the treatment of serious rare illnesses in children.

The Complainants further contend that the disputed domain name is identical to the First Complainant’s GWICH BIO trademark and confusingly similar to the Complainants’ GREENWICH BIOSCIENSES trademarks, containing sufficiently recognizable aspects of this mark as well as serving as an abbreviation thereof.

In addition to that, the Complainants argue that the Respondent clearly targeted the Complainants given that the details disclosed at the WhoIs record show the name of a senior level employee of the Second Complainant and, an address reflecting the Second Complainant’s contact information (Annex 2 to the Complaint), neither of which were aware of the disputed domain name, nor affiliated with the telephone number or e-mail address provided, which indicates a potential identity theft and bad faith.

Also according to the Complainants, the Respondent has no rights or legitimate interests in the disputed domain name given that:

(i) the Complainants have never authorized any third party to register the disputed domain name for them, nor to use their employee’s name as the contact person for any domain names or to represent the business in respect of any of their intellectual property rights;

(ii) the Complainants have not authorized any third parties to use their trademarks and or derivations for the purposes of registering domain names;

(iii) no evidence that the Respondent is using, or has made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services could be found;

(iv) no active webpage resolves from the disputed domain name; and

(v) given the apparent identity theft undertaken when registering the disputed domain name, there is no reason to believe that the Respondent’s name somehow corresponds with the disputed domain name.

Lastly, in relation to bad faith, in the Complainants’ view, it is evident that at the time of the registration of the disputed domain name the Respondent was fully aware of the Complainants and their trademark given the use of false WhoIs contact details corresponding to the Second Complainant and its employee. In addition to that, the Respondent also used the same false WhoIs details to register two other domain names targeting Vivex Biologics, Inc (<vivexbio.com> and <vivexbiomed.com>, Annex 2, Exhibit AXN11), another company in the biotech and pharma sector, what could poorly reflect on the Complainants, inculpating the Complainants in respect of cybersquatting.

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

6. Discussion and Findings

The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).

The Center transmitted notice of the Complaint and commencement of the proceeding to the Respondent by email. In spite of the physical address being wrong, the individual named in the WhoIs as the Respondent received this notice by email and corresponded with the Center regarding its lack of involvement in registering the disputed domain name. The identity of the “Respondent-in-fact” is unknown because the Respondent-in-fact deliberately undertook to disguise its identity in order to perpetuate a fraud. Under these circumstances, the Panel considers that the Center discharged its responsibilities under the Policy and Rules to notify the Respondent of this proceeding, and provided it with adequate opportunity to respond.

Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain name to the Complainants:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have 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 Complainants must prove in this administrative proceeding that each of the aforesaid three elements is present so as to have the disputed domain name transferred to them, according to paragraph 4(i) of the Policy.

In accordance with paragraph 14(b) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.

A. Identical or Confusingly Similar

The Complainants have established rights in the GREENWICH BIOSCIENCES and GWICH BIO trademarks, duly registered.

In this Panel’s view, the disputed domain name <gwichbio.com> contains sufficiently recognizable aspects of the Complainants’ GREENWICH BIOSCIENCES mark as well as can be read as an abbreviation thereof.

In addition, the disputed domain name is identical to the First Complainant’s trademark GWICH BIO.

For the reasons above, the Panel finds that the disputed domain name is confusingly similar to the Complainants’ trademark.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that indicate the Respondent’s rights to or legitimate interests in the disputed domain name. These circumstances are:

(i) before any notice of the dispute, 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; or

(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, in spite of not having acquired trademark 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 trademark or service mark at issue.

The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to and/or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden is still on the Complainant’s side to make a prima facie case against the Respondent.

In that sense, the Complainants indeed state that they have never authorized any third party to register the disputed domain name for them, nor to use their employee’s name as the contact person for any domain names or to represent the business in respect of any of their intellectual property rights, nor have they authorized any third parties to use their trademarks and or derivations for the purposes of registering domain names.

According to the Witness Statement produced by the Complainants (Annex 2 to the Complaint) the Respondent has indeed provided the name of a senior level employee of the Second Complainant and an address reflecting the Second Complainant’s contact information as the WhoIs details pertaining the disputed domain name. This false information which may characterize identity theft and also considering the absence of any indication that the Respondent owns registered trademarks or trade names corresponding to the disputed domain name, or any possible link between the Respondent and the disputed domain name that could be inferred from the details known of the Respondent, corroborate with the Panel’s finding of the absence of rights or legitimate interests.

Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name.

C. Registered and Used in Bad Faith

The Policy indicates in paragraph 4(b) that bad faith registration and use can be found in view of:

(i) circumstances indicating that the respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring them to the complainant who is the owner of a trademark relating to the disputed domain name or to a competitor of the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the disputed domain name; or

(ii) the respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of the complainant; or

(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other location, by creating a likelihood of confusion with the complainant’s 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.

Past UDRP panels have already dealt with the question of whether the “passive holding” of a domain name could constitute bad faith. Section 3.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states that “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.”

In the present case, the passive holding of the disputed domain name by the Respondent amounts to the Respondent acting in bad faith in view of the following circumstances:

(i) the Complainant’s trademark is well-known;

(ii) the Respondent did not file any response to the Complaint, failing thereby to invoke any circumstance which could demonstrate its good faith in the registration or use of the disputed domain name;

(iii) the Respondent appears to have engaged in a pattern of registering domain names that incorporate third parties trademarks;

(iv) the Respondent provided false information when registering the disputed domain name; and, lastly,

(v) taking into account all of the above (as the panel did in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003), it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.

For the reasons stated above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use pursuant to paragraph 4(b)(iv) 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, <gwichbio.com> be transferred to the First Complainant.

Wilson Pinheiro Jabur
Sole Panelist
Date: January 17, 2020

The Panel has decided that no purpose can be served by including the named Respondent in this decision, and has therefore redacted the Respondent’s name from the caption and body of this Decision. The Panel has, however, attached as Annex 1 to this Decision an instruction to the Registrar regarding transfer of the disputed domain name that includes the named Respondent, and has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding. However, the Panel has further directed the Center, pursuant to paragraph 4(j) of the Policy and paragraph 16(b) of the Rules, that Annex 1 to this Decision shall not be published due to exceptional circumstances. See Banco Bradesco S.A. v. FAST-12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788.