Zofran-online.com, Buy-imitrex.com

The timeline behind zofran-online.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

How each disputed name was decided in this proceeding.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION Glaxo Group Limited v. Eric Kaiser Claim Number: FA0506000495487 PARTIES Complainant is Glaxo Group Limited (“Complainant”), represented by Glenn A. Gundersen of Dechert LLP, 4000 Bell Atlantic Tower, 1717 Arch Street, Philadelphia, PA 19103-2793. Respondent is Eric Kaiser (“Respondent”), 3508 Van Teylingen Dr., Apt. D, Colorado Springs, CO 80917. REGISTRAR AND DISPUTED DOMAIN NAMES The domain names at issue are <zofran-online.com> and <buy-imitrex.com>, registered with Go Daddy Software, Inc. PANEL The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding. James A. Carmody, Esq., as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on June 13, 2005; the National Arbitration Forum received a hard copy of the Complaint on June 15, 2005. On June 14, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the domain names <zofran-online.com> and <buy-imitrex.com> is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the names. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy"). On June 20, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 11, 2005 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@zofran-online.com and postmaster@buy-imitrex.com by e-mail. Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default. On July 19, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist. Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent. RELIEF SOUGHT Complainant requests that the domain names be transferred from Respondent to Complainant. PARTIES' CONTENTIONS A. Complainant makes the following assertions: 1. Respondent’s <zofran-online.com> and <buy-imitrex.com> domain names are confusingly similar to Complainant’s ZOFRAN and IMITREX marks, respectively. 2. Respondent does not have any rights or legitimate interests in the <zofran-online.com> and <buy-imitrex.com> domain names. 3. Respondent registered and used the <zofran-online.com> and <buy-imitrex.com> domain names in bad faith. B. Respondent failed to submit a Response in this proceeding. FINDINGS Complainant, Glaxo Group Limited, is a subsidiary of GlaxoSmithKline plc, which is a world leading company in research-based pharmaceuticals, headquartered in the United Kingdom. Complainant holds trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the ZOFRAN (Reg. No. 1,592,702 issued April 24, 1990) and IMITREX (Reg. No. 1,787,324 issued August 10, 1993) marks. In addition, Complainant holds registrations for the marks in numerous countries throughout the world. Furthermore, each term is coined and inherently distinctive. Since 1991, Complainant has used its ZOFRAN mark in connection with antiemetic preparations that are useful in the treatment of post-operative nausea and nausea related to chemotherapy and radiation treatment in the field of oncology. Complainant has used its IMITREX mark since 1993 in association with the treatment of migraine headaches. In 2004, global sales of ZOFRAN exceeded $1.8 billion, while sales of IMITREX reached more than $1 billion in the United States. Respondent registered the <buy-imitrex.com> domain name on May 2, 2003 and the <zofran-online.com> domain name on May 22, 2003, at least a decade after Complainant started using the ZOFRAN and IMITREX marks. The domain names resolve to websites purporting to offer both Complainant’s products and their generic equivalents. Both websites contain copyrighted materials owned by Complainant for use by patients and healthcare professionals in the administration and use of the pharmaceutical products. In addition, the <zofran-online.com> domain name displays the GSK logo and GLAXOSMITHKLINE mark owned by Complainant’s affiliate, SmithKline Beecham plc. DISCUSSION Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable." In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”). Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (2) Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name has been registered and is being used in bad faith. Identical and/or Confusingly Similar Complainant has established that it owns registrations for the ZOFRAN and IMITREX marks with the USPTO. By registering its marks with a federal authority, Complainant has made a prima facie case that it has rights in the marks, which Respondent is entitled to refute. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (“Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption.”); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”). However, Respondent has not provided a response, which means that Complainant’s presumption of rights has gone unrebutted. The Panel, therefore, finds that Complainant has established rights in the marks for the purposes of fulfilling Policy ¶ 4(a)(i). Each of the <zofran-online.com> and <buy-imitrex.com> domain names was formed by adding a hyphen and a generic term to either Complainant’s ZOFRAN or IMITREX mark. Such minor additions to Complainant’s registered marks do not create domain names distinct from Complainant’s marks, especially where each domain name incorporates one of Complainant’s marks in its entirety. See Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); see also Quixtar Inv., Inc. v. Smithberger, D2000-0138 (WIPO Apr. 19, 2000) (finding that because the domain name <quixtar-sign-up.com> incorporates in its entirety the complainant’s distinctive mark, QUIXTAR, the domain name is confusingly similar). Therefore, the Panel finds that each of the disputed domain names is confusingly similar to either Complainant’s ZOFRAN or IMITREX mark. The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i). Rights or Legitimate Interests It has been established under the Policy that the complainant has the initial burden of proving that the respondent lacks rights and legitimate interests in the disputed domain name. In Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001), the panel held: Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question. Id.; see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”). Having found that Complainant has met its initial burden in establishing a prima facie case, the Panel will now conduct an analysis of whether Respondent has met its burden to establish rights or legitimate interests in the disputed domain names under Policy ¶ 4(c). Complainant asserts that Respondent is not commonly known by the <zofran-online.com> and <buy-imitrex.com> domain names. Furthermore, the WHOIS information for the disputed domain names identifies Respondent as “Eric Kaiser” and indicates no affiliation between Respondent and the disputed domain names aside from Respondent’s registration of the domain names. The Panel has not received a response from Respondent or any evidence that Respondent is commonly known by the disputed domain names. Thus, Respondent has failed to establish rights or legitimate interests pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names). Moreover, Respondent is using the <zofran-online.com> and <buy-imitrex.com> domain names to operate commercial websites that purport to sell both Complainant’s pharmaceutical products sold under the ZOFRAN and IMITREX marks and their generic equivalents. The websites contain copyrighted materials owned by Complainant and display the mark and logo of one of Complainant’s affilate companies. Such use of Complainant’s marks in domain names to attract Complainant’s potential consumers to a website that sells Complainant’s products and those of others for Respondent’s benefit is not a use in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) or (iii). See G.D. Searle & Co. v. Mahony, FA 112559 (Nat. Arb. Forum June 12, 2002) (finding the respondent’s use of the disputed domain name to solicit pharmaceutical orders without a license or authorization from the complainant does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i)); see also Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Nat. Arb. Forum Apr. 12, 2002) (“Respondent’s use of the confusingly similar domain name [<hpmilenium.com>] to sell counterfeit versions of Complainant’s [HP] products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).”); see also Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors). In addition, Respondent has not offered any arguments to contest Complainant’s contentions that Respondent has not made a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name, which leads the Panel to the conclusion that respondent has not established rights or legitimate interests under Policy ¶ 4(c)(i) or (iii). See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii). Registration and Use in Bad Faith Complainant’s business involves selling pharmaceutical products, including those sold under the ZOFRAN and IMITREX marks. Due to Respondent’s use of the <zofran-online.com> and <buy-imitrex.com> domain names to offer pharmaceutical products for sale to Internet users, Respondent is acting as a competitor of Complainant. Thus, by using domain names that contain Complainant’s marks to attract Internet users searching for Complainant’s products to Respondent’s competing website, Respondent is disrupting Complainant’s business. This is evidence that Respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii). See Tribeca Film Ctr., Inc. v. Brusasco-Mackenzie, D2000-1772 (WIPO Apr. 10, 2001) (“[A] respondent can ‘disrupt the business of a competitor’ only if it offers goods or services that can compete with or rival the goods or services offered by the trademark owner.”); see also Lambros v. Brown, FA 198963 (Nat. Arb. Forum Nov. 19, 2003) (finding that the respondent registered a domain name primarily to disrupt its competitor when it sold similar goods as those offered by the complainant and “even included Complainant's personal name on the website, leaving Internet users with the assumption that it was Complainant's business they were doing business with”); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business). Respondent is using the <zofran-online.com> and <buy-imitrex.com> domain names, each of which contains either Complainant’s ZOFRAN or IMITREX mark in its entirety, to divert Internet users searching for Complainant’s pharmaceutical products to Respondent’s fraudulent websites, where Respondent solicits orders for Complainant’s pharmaceutical products and their generic equivalents. By using Complainant’s marks in the domain names to create a likelihood of confusion, Respondent is attempting to attract Internet users who are searching for Complainant’s products and services to Respondent’s website for Respondent’s commercial benefit. Respondent’s activities are evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Merrell Pharmaceuticals Inc. v. Fisher, FA 420655 (Nat. Arb. Forum Apr. 4, 2005) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent was using the <buy-allegra.us> mark to sell the complainant’s ALLEGRA products); see also Fanuc Ltd v. Mach. Control Servs., FA 93667 (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by creating a likelihood of confusion with the complainant's mark by using a domain name identical to the complainant’s mark to sell the complainant’s products); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain). The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii). DECISION Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that the <zofran-online.com> and <buy-imitrex.com> domain names be TRANSFERRED from Respondent to Complainant. James A. Carmody, Esq., Panelist Dated: July 28, 2005 Click Here to return to the main Domain Decisions Page. 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