GW Research Limited v Privacy service provided by Withheld for Privacy ehf

WIPO Case No. D2022-0412

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

GW Research Limited v. Privacy service provided by Withheld for Privacy ehf
/ thaddeus caffrey

Case No. D2022-0412

1. The Parties

The Complainant is GW Research Limited, United Kingdom, represented by J A Kemp LLP, United Kingdom.

The Respondent is Privacy service provided by Withheld for Privacy ehf, Iceland / thaddeus caffrey, United

States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <epidiolexmeds.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 7, 2022. On February 7, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 7, 2022, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 8, 2022 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint.

On February 11, 2022, the Complainant requested to suspend the proceedings. On February 14, 2022, the Center suspended the proceedings. On March 10, 2022, by the request of the Complainant, the Center extended the suspension until April 9, 2022. A settlement was not reached, and the proceedings were reinstituted on April 13, 2022.

The Complainant filed an amendment to the Complaint on April 9, 2022.

The Center verified that the Complaint together with the amendment to 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”).

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In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 25, 2022. In accordance with the Rules, paragraph 5, the due date for Response was May 15, 2022. The Respondent did not submit any response. Accordingly, the Center commenced the panel appointment process on May 16, 2022.

The Center appointed Andrew F. Christie as the sole panelist in this matter on May 24, 2022. 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 biopharmaceutical company focused on discovering, developing and commercializing novel therapeutics in a broad range of disease areas, in particular in the development of plant-derived cannabinoid therapeutics. It was incorporated in 1995, and is a subsidiary company within the GW Pharmaceuticals Group (“GW Group”). The GW Group, which is headed by the Complainant’s parent company GW Pharmaceuticals plc, was founded in 1998, and has operations in both the United States and the United Kingdom. For the year ended December 31, 2019, the GW Group’s total global revenue amounted to USD 311.3 million.

The Complainant forms a significant component of the GW Group, and is responsible for the manufacturing medicine by the United States Food and Drug Administration on June 25, 2018, and was made commercially available in the United States on November 1, 2018.
activities of one of the GW Group’s key pharmaceutical formulations, Epidiolex. The Complainant initially
gained renown for developing Sativex, the world’s first prescription medicine derived from the cannabis plant,
now approved in over 25 countries outside of the United States. Building on the success of its Sativex

product, the Complainant developed an oral formation of purified cannabidiol, commonly referred to as

The Complainant is the owner of numerous trademark registrations throughout the world for the word
trademark EPIDIOLEX, including Australian Trademark Registration No. 1633502 (filed on March 18, 2014,
and registered on November 5, 2014), European Union Trademark Registration No. 012639373 (filed on
February 26, 2014, and registered on July 18, 2014), and United States Trademark Registration No.

4484943 (filed on July 11, 2013, and registered on February 18, 2014).

An entity that is part of the GW Group owns, and operates a website using, the domain name
<epidiolex.com>, which was registered on July 5, 2013.

The disputed domain name was registered on July 9, 2021. The Complainant has provided a screenshot, taken on October 7, 2021, showing that the disputed domain name resolved to a website with blog entries titled “What is an Irontide Lock Box?” and “Thai Mail Order Brides”. At the time of this decision, it appears that the disputed domain name does not resolve to an active website.

5. Parties’ Contentions

A. Complainant

The Complainant made the following contentions to establish that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. It is established practice that the generic Top-Level Domain (“gTLD”) is generally disregarded for the purposes of the confusing similarity test under the first element of the UDRP. The disputed domain name contains the Complainant’s EPIDIOLEX trademark in its entirety, together with a suffix that is closely related to the pharmaceutical and/or medical fields in which the Complainant operates. The Complainant’s EPIDIOLEX trademark is clearly recognisable

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in the disputed domain name, and is the sole distinctive element of the disputed domain name. The suffixed
term “meds” does not detract from or diminish the recognisability of the Complainant’s trademark, and is an
obvious reference to medical products.

The Complainant made the following contentions to establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not authorized to use the Complainant’s EPIDIOLEX trademark, and is not in any way affiliated with or otherwise known to the Complainant. The Complainant’s EPIDIOLEX trademark is a coined term which has no other meaning than a trademark that identifies the Complainant’s business and products. The Complainant carefully controls the use of the EPIDIOLEX trademark by third parties, and has not authorized, licensed or otherwise permitted the Respondent, or anyone that shares any of the Respondent’s contact information, to use the EPIDIOLEX trademark or any similar mark in any way. There is no evidence that would indicate that the Respondent is using, or has made demonstrable preparations to use, the disputed domain name or a name corresponding to it, in connection with a bona fide offering of goods or services. The disputed domain name redirected to a website blog with several articles signed by an individual identified as “kamrul562”, none of which referred to the trademark EPIDIOLEX or to pharmaceutical products, but rather advertized unlawful “mail-order bride” services. There is no evidence suggesting that the Respondent is commonly known by the disputed domain name or has acquired any trademark or service mark rights corresponding to it. The Respondent sought to conceal its true identity by using an identity-shielding service. The Respondent is clearly making unfair use of the disputed domain name, to misleadingly divert consumers and potential consumers of the Complainant’s products and to tarnish the EPIDIOLEX brand and the Complainant’s business, as well as to promote services that are unlawful and entirely unrelated to the Complainant’s business.

The Complainant made the following contentions to establish that the disputed domain name was registered imitating, or holding itself out as the Complainant, or misleadingly giving the impression it has some kind of connection with the Complainant. The Respondent’s unauthorized use of the disputed domain name misappropriates and takes advantage of the Complainant’s reputation. The Complainant is put at significant risk through misuse of the disputed domain name, because its significant and ongoing investments could be compromised in the event that an unauthorized, unregulated third-party attempts to divert consumers from the Complainant’s website. The falsified identity and address information should also be seen as indicative of the Respondent’s bad faith.

and is being used in bad faith. The Respondent has no plausible reason whatsoever for registering a
domain name containing the Complainant’s EPIDIOLEX trademark, and there is no other basis for using the
trademark EPIDIOLEX in the disputed domain name except as a reference to the Complainant and its
business. The choice of the trademark EPIDIOLEX in the disputed domain name cannot be a coincidence,
and the addition of the suffix “meds”, which is an obvious reference to the Complainant’s business, confirms
that the Respondent knew about the Complainant’s business and trademark at the time of the disputed
domain name registration. As the Complainant’s EPIDIOLEX trademark has been well-known for some time,
and its reputation has continued to increase over time, it seems clear that the Respondent has registered the
disputed domain name for the purpose of disrupting the business of the Complainant, to promote unrelated
products and/or services, or, at a minimum, to attempt to drive traffic to a blog that has nothing to do with the

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

Once the gTLD “.com” is ignored (which is appropriate in this case), the disputed domain name consists of the Complainant’s registered word trademark EPIDIOLEX, followed by the term “meds”. The Complainant’s trademark is clearly recognizable within the disputed domain name. The addition of the term “meds”, which

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can be read as an abbreviation of the word “medicines” and as a reference to the Complainant’s business,
does not avoid a finding of confusing similarity of the disputed domain name with the trademark.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the

Complainant has rights.

B. Rights or Legitimate Interests

The Respondent is not a licensee of the Complainant, is not otherwise affiliated with the Complainant, and has not been authorized by the Complainant to use its EPIDIOLEX trademark. The Respondent has not provided any evidence that it has been commonly known by, or has made a bona fide use of, the disputed domain name, or that it has, for any other reason, rights or legitimate interests in the disputed domain name. The evidence provided by the Complainant shows that the disputed domain name was used to resolve to a website containing text entries entitled “What is an Irontide Lock Box?” and “Thai Mail Order Brides”. Such a use of the disputed domain name is neither a bona fide use nor a legitimate noncommercial or fair use. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The disputed domain name was registered many years after the Complainant first registered its EPIDIOLEX trademark. There can be no doubt that the Respondent registered the disputed domain name with knowledge of the existence of the Complainant’s trademark, given that the disputed domain name contains the Complainant’s trademark, followed by the term “meds”, which Internet users would most likely be read as an abbreviation of the term “medicines”, which is the Complainant’s area of business.

Given the Respondent’s lack of rights or legitimate interests in the disputed domain name, and the confusing similarity of the disputed domain name to the Complainant’s word trademark, any use of the disputed domain name by the Respondent almost certainly implies an affiliation with the Complainant that does not exist. The Respondent’s registration of the disputed domain name in these circumstances is a bad faith registration.

Furthermore, the evidence on the record provided by the Complainant indicates that the Respondent has used the disputed domain name in an attempt to attract, apparently for commercial gain, Internet users to a website by creating confusion in the minds of the public as to an association between the website and the Complainant. The Respondent’s use of the disputed domain name in this manner is a bad faith use.

Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith.

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, <epidiolexmeds.com>, be transferred to the Complainant.

/Andrew F. Christie/
Andrew F. Christie
Sole Panelist
Date: June 7, 2022