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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

SmithKline Beecham (Cork) Limited; SmithKline Beecham Corporation (dba GlaxoSmithKline) v. Daniel Crean

Case No. D2006-1185

 

1. The Parties

The Complainant is SmithKline Beecham (Cork) Limited; SmithKline Beecham Corporation (dba GlaxoSmithKline), Pennsylvania, United States of America, represented by Arnold & Porter LLP, United States of America.

The Respondent is Daniel Crean, Austin, Texas, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <tykerb.org> (the “Domain Name”) is registered with Go Daddy Software.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 13, 2006. On September 15, 2006, the Center transmitted by e-mail to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On September 15, 2006, Go Daddy Software transmitted by e-mail to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the Respondent. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 September 20, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was October 10, 2006. The Respondent filed a document with the Center on September 29, 2006.

The Center appointed Douglas M. Isenberg as the Sole Panelist in this matter on October 13, 2006. 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.

On October 19, 2006, the Center transmitted to the parties Panel Order No. 1, stating that the document filed by the Respondent was not in compliance with the Rules. The order stated, in part: “the Panel orders the Respondent, if the Respondent elects to do so, to resubmit to the Center its document in compliance with the Rules no later than the date occurring five (5) days following the date on which the Center notifies the Parties of this Order No. 1.” On October 22, 2006, the Respondent resubmitted its document to the Center, and the Panel accepts it as substantially in compliance with the Rules.

 

4. Factual Background

Complainant states that it is one of the world’s leading research-based pharmaceutical and health-care companies. Among its businesses, Complainant develops, manufactures, markets and sells pharmaceutical preparations.

Complainant states that, for several years, it has been developing an orally administered therapy for treatment of breast cancer and certain other tumors. The generic name for this pharmaceutical preparation is lapatinib; TYKERB is Complainant’s registered trademark for the product.

Complainant is the owner of a federal trademark registration in the United States for TYKERB (Reg. No. 2,895,608), registered October 19, 2004 (the “Tykerb Trademark”).

Complainant is the registrant of the domain name <tykerb.com>, which was created on June 26, 2003.

The Domain Name was created on May 24, 2006.

 

5. Parties’ Contentions

A. Complainant

Complainant states, in relevant part as follows:

- “Respondent has registered the domain name <tykerb.org> and has used the domain name to attract Internet users to an active web site located at ‘www.tykerb.org.’ At least as early as July 2006, Respondent purported to supply information concerning the TYKERB® pharmaceutical product on this web site.”

- “Respondent has also registered a number of Internet domain names consisting of or incorporating the brand names of pharmaceutical products”, including <provigilweb.org> and <gvax.org>. “Although Respondent purports to offer information about health on these sites, [Complainant] is informed and believes that Respondent profits from each of these visits through the sale of advertising on his web sites. Respondent undoubtedly intended to develop such advertisements for the ‘www.tykerb.org’ web site as well.”

- On July 18, 2006, counsel for Complainant sent a demand letter to Respondent regarding the Domain Name. “In his reply, Respondent stated that [he] had modified his use of the… Domain Name so that the name automatically redirected Internet browsers to a web site for the National Cancer Institute. Respondent refused to transfer the… Domain Name to [Complainant], instead insisting that he would ‘hold onto the domain <tykerb.org> for now and may use it in the future.’”

- On August 8, 2006, counsel for Complainant sent another letter to Respondent, after which “Respondent modified his use of the… Domain Name yet again. The… Domain Name now automatically redirects Internet browsers to a personal profile web page hosted by online community MySpace for an individual named Tyrone Kerby”.

- A disclaimer posted by Respondent on his website using the Domain Name “is insufficient to dispel confusion created by his use of the” Domain Name.

- “On information and belief, Respondent has never sought or obtained any trademark registrations for ‘Tykerb’ or any variation thereof, and indeed, cannot do so, because the TYKERB® trademark belongs to [Complainant]. Respondent is not a licensee of [Complainant], nor has Respondent obtained permission, either express or implied, from [Complainant] to use the TYKERB® trademark, or any domain names incorporating such trademarks, either at the time Respondent registered and began using the domain name, or at any time since. In addition, on information and belief, Respondent has never been known by the name ‘tykerb’ or the domain name <tykerb.org>. Respondent’s recently contrived use of the… Domain Name to bring users to the Internet web page of Mr. Kerby is undercut by the primary use Respondent has made of the… Domain Name to date and the timing of the recent change in use. Respondent has consistently used the… Domain name to direct Internet users to web sites concerning cancer and related pharmaceutical preparations and has only now begun directing those users to Mr. Kerby’s web site after repeated letters from [Complainant’s] counsel.”

- “Use of a domain name that is confusingly similar to another’s trademark to promote goods and services unrelated to those of the trademark owner does not constitute a bona fide offering of goods and services where the registrant has no other legitimate right to use the mark.”

- “Clearly, Respondent chose to use the TYKERB® trademark to draw Internet users to his web site by capitalizing on users’ association of the TYKERB® trademark with [Complainant’s] pharmaceutical product. There is no other credible reason for Respondent to have selected or retained the… Domain Name.”

- “Respondent has used the… Domain Name in bad faith… because he has created a likelihood of confusion with the TYKERB® trademark. Through the… Domain Name, Respondent has capitalized on the reputation of [Complainant’s] trademark in order to divert Internet users from [Complainant’s] authorized web site to another site, then a second site, and now a third site. This diversion is likely to cause Internet users to abandon their efforts to reach [Complainant’s] authorized web site concerning the TYKERB® pharmaceutical preparation. As a result, [Complainant] will suffer commercial harm, which is sufficient evidence that respondent has used the domain name in bad faith.”

B. Respondent

Respondent states, in relevant part as follows:

- “In May 2006 I saw news stories about a new cancer medication called Tykerb. I decided I would put up a website about this drug and I looked for a domain that might help my site place well in search engines for queries about the drug. I found <tykerb.org> was unregistered, so I registered it.”

- “I operated a website at <tykerb.org>, but the site never claimed to be produced by [Complainant] or misled anyone into thinking it was.”

- “The website I published at <tykerb.org> was intended as an informational site. The About Us page of the website… explicitly stated that the site did not buy or sell medications and had no connection with [Complainant] or any other pharmaceutical company. The site had, for a time advertisements on it from Google’s AdSense program. (Incidentally, my earnings from the site advertisements totaled only USD$0.64) My plan was to operate the site as an informational site and make money from advertisements, just as a newspaper provides information and makes money from advertisements.”

- “I am NOT a domain squatter in the sense that I buy or sell domains or that I try to register domains with the intention of selling them to someone else.”

- “I never approached Smith Kline Beecham or anyone from Glaxo SmithKline or their representatives about a sale of tykerb.org.”

- “What might I do with tykerb.org? If WIPO rules in my favor, I may put a website about this drug at tykerb.org; I might not.”

- “I have never tried to sell or rent tykerb.org or any other domain name to [Complainant] or anyone else.”

- “[Complainant] is the registrant of tykerb.com. They had the option of registering other tykerb domain names which were unregistered until May of 2006.”

- “I have no interest in disrupting [Complainant’s] business. I want Tykerb to succeed in the marketplace.”

- “There was never any claim on the pages I put on tykerb.org that the site had any connection to the make[r] of the drug Tykerb. Indeed, the About Us page explicitly said ‘Tykerb.org presents information about the cancer drug tykerb (lapatinib). We do not buy or sell any drugs and we have no affiliation with Glaxo SmithKline or any other pharmaceutical company.’”

- “Before I got a letter from the Complainant’s attorney, I had a website at tykerb.org about the medication Tykerb.”

- “I did use the domain for commercial purposes and may or may not do so in the future[.]”

 

6. Discussion and Findings

Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith. Policy, Paragraph 4(a).

A. Identical or Confusingly Similar

As to whether the Domain Name is identical or confusingly similar to Complainant’s TYKERB Trademark, the relevant comparison to be made is with the second-level portion of the Domain Name only (i.e., “tykerb”), as it is well-established that the top-level domain (i.e., “.org”) should be disregarded for this purpose. See, e.g., The Forward Association, Inc., v. Enterprises Unlimited, NAF Case No. FA0008000095491 (“[N]either the beginning of the URL (http://www.), nor the TLD (.com) have any source indicating significance. Those designations are merely devices that every Internet site provider must use as part of its address”).

Without the need for any discussion, it is obvious that the second-level domain “tykerb” is identical to Complainant’s TYKERB Trademark and, accordingly, the Panel is convinced that Complainant has proven the first element of the Policy.

B. Rights or Legitimate Interests

Under the Policy, “a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP”. “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, paragraph 2.1 (visited October 26, 2006).

In this case, Complainant has made out an initial prima facie case that Respondent lacks rights or legitimate interests in the Domain Name via Complainant’s certified statements in the Complaint that “Respondent has never sought or obtained any trademark registrations for ‘Tykerb’ or any variation thereof”, that “Respondent [has not] obtained permission, either express or implied, from GSK to use the TYKERB® trademark”, that “[u]se of a domain name that is confusingly similar to another’s trademark to promote goods and services unrelated to those of the trademark owner does not constitute a bona fide offering of goods and services where the registrant has no other legitimate right to use the mark” and that “Respondent is using the TYKERB® trademark to misdirect Internet users to his website or the web sites of others”.

The Policy states that a respondent can prove its rights or legitimate interests in a domain name by demonstrating, among other things, the following circumstances:

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Policy, paragraph 4(c).

Respondent appears to argue that his actions satisfy either paragraph 4(c)(i) or 4(c)(iii) of the Policy; Respondent does not appear to argue that his actions satisfy paragraph 4(c)(ii) of the Policy.

With respect to paragraph 4(c)(i), the Panel is unconvinced that Respondent’s actions constitute a “bona fide offering of goods or services”, given that Respondent did not offer the goods or services described by the Tykerb Trademark and that Respondent’s website at one time redirected visitors to a third-party website over which neither party had control. See, e.g., Sanofi-aventis v. ClickStream Marketing LLC, WIPO Case No. D2005-0769 (transfer of domain name <ambien-sleep.com>).

With respect to paragraph 4(c)(iii), the Panel is unconvinced that Respondent’s actions are “without intent for commercial gain”, given Respondent’s express admission that “I did use the domain for commercial purposes…” Respondent further states that his website “had, for a time[,] advertisements from Google’s AdSense program”. This program “delivers relevant text and image ads that are precisely targeted to [a] site and [a] site[‘s] content”. “What’s AdSense?”, “http://www.google.com/services/adsense_tour/” (visited October 26, 2006). While Respondent states that his earnings from this program amounted only to $0.64, the lack of greater commercial success does nothing to negate Respondent’s actions.

Therefore, the Panel is satisfied that the Complainant has proven the second element required by the Policy.

C. Registered and Used in Bad Faith

Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by, among other things, evaluating four (non-exhaustive) factors set forth in the Policy:

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

(ii) the registrant has registered the 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 registrant has engaged in a pattern of such conduct; or

(iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location.

Policy, paragraph 4(b).

Here, the Panel is convinced that bad faith exists pursuant to paragraph 4(b)(iv) of the Policy. As stated above, by Respondent’s own admission, he had placed contextual-based advertisements on a website using the Domain Name. “There is no [good-faith] reason offered as to why Complainant’s mark should be used by Respondent in connection with these commercial activities.” Lockheed Martin Corporation v. Ning Ye, WIPO Case No. D2000-1733 (transfer of <lockheedmartin.org>.). See also Volkswagen AG v. David’s Volkswagen Page, WIPO Case No. D2004-0498 (“[t]he use of the domain name <volkswagen.org> for a website which direct[s] – through hyperlinks – [I]nternet users to a commercial website where Volkswagen products are sold, demonstrates that Respondent sought to attract business by confusing [I]nternet users as to the source, sponsorship, affiliation or endorsement of the website”).

Respondent’s previous use of a disclaimer does not eliminate the likelihood of confusion, given that the disclaimer was not conspicuous and did not legitimize Respondent’s actions. See Madonna Ciccone p/k/a Madonna v. Dan Parisi & <Madonna.com>, WIPO Case No. D2000-0847 (“First, the disclaimer may be ignored or misunderstood by Internet users. Second, a disclaimer does nothing to dispel initial interest confusion that is inevitable from Respondent’s actions.”); Xerox Corp. v. Imaging Solution, WIPO Case No. D2001-0313 (confusion “was not lessened by the Respondent’s disclaimer in small print on its website”). Further, “The existence of a disclaimer cannot cure bad faith, when bad faith has been established by other factors”. “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, paragraph 3.5 (visited October 26, 2006). In any event, Respondent apparently ceased using the disclaimer, so whatever impact it may have had at one time is no longer relevant.

Finally, Respondent’s redirection of the Domain Name to a “myspace.com” website for a person named “Tyrone Kerby” is irrelevant, does nothing to diminish his bad faith and is a transparent and unsuccessful attempt to evade the Policy. National Hockey League v. Daniel Krusz, WIPO Case No. D2001-0234 (“Respondent’s attempts… to pose as a New Hampshire tourism site were ‘pretextual’”).

Therefore, the Panel is satisfied that the Complainant has proven the third element required by the Policy.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <tykerb.org> be transferred to the Complainant.

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Douglas M. Isenberg
Sole Panelist

Dated: October 27, 2006