G.D.
Searle & Co. v. RaveClub Berlin
Claim
Number: FA0202000104979
PARTIES
Complainant is G.D. Searle & Co., Skokie, IL
(“Complainant”) represented by Paul D.
McGrady, of Ladas & Parry. Respondent is RaveClub Berlin, Cherry Hill, NJ (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at
issue is <celbrex.com>,
registered with CSL GmbH d/b/a Joker.com.
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 (the “Forum”) electronically on
February 21, 2002; the Forum received a hard copy of the Complaint on February
25, 2002.
On February 27, 2002,
CSL GmbH d/b/a Joker.com confirmed by e-mail to the Forum that the domain name <celbrex.com> is registered with
CSL GmbH d/b/a Joker.com and that Respondent is the current registrant of the
name. CSL GmbH d/b/a Joker.com has
verified that Respondent is bound by the CSL GmbH d/b/a Joker.com 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 February 27, 2002,
a Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of March 19, 2002 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@celbrex.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 Forum transmitted to the parties a
Notification of Respondent Default.
On March 20, 2002,
pursuant to Complainant’s request to have the dispute decided by a
single-member Panel, the Forum appointed James A. Carmody, Esq., as Panelist.
Having reviewed the
communications records, the Administrative Panel (the “Panel”) finds that the
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 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 name be transferred from Respondent to Complainant.
PARTIES’
CONTENTIONS
A. Complainant
Respondent’s <celbrex.com> domain name is confusingly similar to
Complainant’s CELEBREX trademark.
Respondent does not have any rights or legitimate interests in the disputed
domain name.
Respondent registered and used the disputed domain name in bad faith.
B. Respondent
No Response was
received.
FINDINGS
Complainant
owns numerous trademark applications for the CELEBREX mark. It has also registered CELEBREX on the Principal
Register of the United States Patent and Trademark Office on February 22, 2000,
Reg. No. 2,321,622. Complainant offers
primarily pharmaceutical products in the nature of “anti-inflammatory
analgesics.” It has made a global name
for itself in connection with the sale of anti-arthritic medicine.
Complainant
has initiated substantial marketing and advertising campaigns. Consequently, Forbes magazine has labeled
CELEBREX a “$2 billion (sales) crown jewel in Pharmacia’s new portfolio.”
Respondent
registered <celbrex.com> on September18, 2000. Respondent has linked the disputed domain name to two other
websites, one of which provides pornographic material to viewers.
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 the 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.
Paragraph 4(a) of the
Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights; and
(2) the 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 legal rights to its CELEBREX trademark due to its registration of the mark
on February 22, 2000 on the Principal Register of the United States Patent and
Trademark Office, Reg. No. 2,321,622.
Respondent’s <celbrex.com> domain name is confusingly similar to
Complainant’s CELEBREX trademark because it merely deletes an “e” and adds the
generic top-level domain name “.com” to Complainant’s mark. See State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730
(Nat. Arb. Forum June 15, 2000) (finding that the domain name
<statfarm.com> is confusingly similar to the Complainant’s mark “State
Farm”); see also Busy Body, Inc.
v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that
"the addition of the generic top-level domain (gTLD) name ‘.com’ is . . .
without legal significance since use of a gTLD is required of domain name
registrants"). Moreover, because
CELEBREX is such a distinctive mark, confusing similarity between the domain
name and mark is increased. See Reuters Ltd. v. Global Net 2000, Inc.,
D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by
only one letter from a trademark has a greater tendency to be confusingly
similar to the trademark where the trademark is highly distinctive).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights
or Legitimate Interests
Respondent
may be determined not to have any rights or legitimate interests in the
disputed domain name because it did not respond to this Complaint. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO
Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as
an admission that they have no legitimate interest in the domain names).
Respondent,
known as RaveClub Berlin, has not provided evidence, nor is there any in the
record, that Respondent is commonly known by <celbrex.com> or
CELEBREX pursuant to Policy ¶ 4(c)(ii).
See Gallup Inc. v. Amish
Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that
Respondent does not have rights in a domain name when Respondent is not known
by the mark); see also Compagnie
de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000)
(finding no rights or legitimate interest where Respondent was not commonly
known by the mark and never applied for a license or permission from
Complainant to use the trademarked name).
Respondent’s
use of the confusingly similar domain as a link to a pornographic website is
not a bona fide offering of goods pursuant to Policy ¶ 4(c)(i) because it
results in the tarnishing of Complainant’s mark. See MatchNet plc v.
MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona
fide offering of goods or services to use a domain name for commercial gain by
attracting Internet users to third party sites offering sexually explicit and
pornographic material, where such use is calculated to mislead consumers and
tarnish the Complainant’s mark).
Because
Respondent’s <celbrex.com>
domain name capitalizes on a common misspelling of Complainant’s distinctive
mark, Respondent’s use of the domain name at issue is not a legitimate noncommercial
or fair one pursuant to Policy ¶ 4(c)(iii).
See Encyclopaedia
Brittanica, Inc. v. Zuccarini, D2000-0330 (WIPO June 7, 2000) (finding that
fair use does not apply where the domain names are misspellings of
Complainant's mark).
The
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration
and Use in Bad Faith
Respondent’s
use of the disputed domain name to divert Complainant’s customers to its
websites indicates its bad faith use and registration pursuant to Policy ¶
4(b)(iv). See Drs. Foster & Smith, Inc. v. Lalli,
FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the
Respondent directed Internet users seeking the Complainant’s site to its own
website for commercial gain); see also State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb.
Forum Oct. 11, 2000) (finding that the Respondent registered the domain name
<statefarmnews.com> in bad faith because Respondent intended to use
Complainant’s marks to attract the public to the web site without permission
from Complainant). Moreover,
Respondent’s use of the disputed domain name to link to pornographic material
is bad faith under Policy ¶ 4(b)(iv). See
Geocities v. Geociites.com,
D2000-0326 (WIPO June 19, 2000) (finding bad faith where the Respondent linked
the domain name in question to websites displaying banner advertisements and
pornographic material).
Because
Complainant’s mark is well known and has received a large amount of publicity,
Respondent is presumed to have had knowledge of Complainant’s mark at the time
it registered the confusingly similar domain name. This knowledge indicates Respondent’s bad faith use and
registration. See Exxon Mobil Corp. v. Fisher, D2000-1412
(WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive knowledge
of Complainant’s EXXON mark given the world-wide prominence of the mark and
thus Respondent registered the domain name in bad faith).
The
Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that the requested relief shall be hereby granted.
James
A. Carmody, Esq., Panelist
Dated:
March 26, 2002
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