G.D. Searle & Co. v. RaveClub Berlin
Claim Number: FA0202000104979
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.
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.
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 email@example.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.
Complainant requests that the domain name be transferred from Respondent to 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.
No Response was received.
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.
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.
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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