G.D. Searle & Co. v. Montgomery Byers
Claim Number: FA0204000110778
PARTIES
Complainant
is G.D. Searle & Co., Skokie, IL
(“Complainant”) represented by Paul D.
McGrady, of Ladas & Parry. Respondent is Montgomery Byers, Delray Beach, FL (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <celebrex-pharmacy.com>,
<drug-celebrex.com>, <celebrex-drug.com>,
<celebrex-celebrex-1.com>,
<celebrex-arthritis-celebrex-arthritis.com>, and
<vioxx-celebrex.com>, registered with Dotster.
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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on April 22, 2002; the Forum received a hard copy of the
Complaint on April 23, 2002.
On
April 23, 2002, Dotster confirmed by e-mail to the Forum that the domain names <celebrex-pharmacy.com>,
<drug-celebrex.com>, <celebrex-drug.com>,
<celebrex-celebrex-1.com>,
<celebrex-arthritis-celebrex-arthritis.com>, and
<vioxx-celebrex.com> are registered with Dotster and that Respondent
is the current registrant of the names.
Dotster has verified that Respondent is bound by the Dotster
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
April 24, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of May 14,
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@celebrex-pharmacy.com, postmaster@drug-celebrex.com,
postmaster@celebrex-drug.com, postmaster@celebrex-celebrex-1.com, postmaster@celebrex-arthritis-celebrex-arthritis.com,
and postmaster@vioxx-celebrex.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
May 28, 2002, pursuant to Complainant’s request to have the dispute decided by
a single-member Panel, the Forum appointed the Honorable Charles K. McCotter,
Jr. (Ret.) 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 names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
The
disputed domains names <celebrex-pharmacy.com>, <drug-celebrex.com>,
<celebrex-drug.com>, <celebrex-celebrex-1.com>, <celebrex-arthritis-celebrex-arthritis.com>,
and <vioxx-celebrex.com> are confusingly similar to Complainant’s
CELEBREX mark.
Respondent
has no rights or legitimate interests in the disputed domain names.
Respondent
registered and used the disputed domain names in bad faith.
B.
Respondent
Respondent
did not submit a Response in this proceeding.
FINDINGS
Complainant holds worldwide rights in
the CELEBREX mark, including 112 applications worldwide to register the
mark. Specifically, Complainant holds a
trademark for CELEBREX in the United States, which is Reg. No. 2,307,888 registered
on February 2000. Complainant applied
for registration of the CELEBREX mark in the U.S. on February 10, 1998 and
first used the mark in commerce in February 1999.
The CELEBREX mark is used to market
“pharmaceutical products in the nature of anti-inflammatory analgesics”
throughout the world. The drug that
CELEBREX denotes has been referred to as a “blockbuster arthritis drug” and a
“crown jewel in Pharmacia’s new portfolio,” by The New York Times and Forbes
respectively. Complainant began its
media campaign to market the anti-inflammatory analgesics, using the CELEBREX
mark, as early as December of 1998.
Complainant’s fierce marketing efforts have led to worldwide notoriety
of the CELEBREX mark.
Respondent registered the disputed domain
names, all containing the CELEBREX mark, on September 18, 2000. This registration came after Complainant’s
marketing of its arthritis drug denoted CELEBREX. Respondent solicits pharmaceutical orders at the website located
at the disputed domain name.
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
The disputed domain names are confusingly
similar to Complainant’s CELEBREX mark because they contain the entire mark and
either the addition of (1) a generic word, (2) number, or (3) mark of a
competitor.
First, Respondent merely added the
generic words “pharmacy,” “drug,” and “arthritis” to the domain names <celebrex-pharmacy.com>,
<drug-celebrex.com>, <celebrex-drug.com>, and <celebrex-arthiritis-celebrex-arthritis.com>. The addition of a hyphenated generic word
that relates to the CELEBREX mark and Complainant’s business does not defeat a
confusing similarity claim; thus, Policy ¶ 4(a)(i) has been satisfied. See Marriott Int’l v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13,
2000) (finding that the Respondent’s domain name <marriott-hotel.com> is
confusingly similar to Complainant’s MARRIOTT mark); see also Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where the Respondent’s domain name combines the Complainant’s mark
with a generic term that has an obvious relationship to the Complainant’s
business); see also Brown & Bigelow, Inc. v.
Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the
<hoylecasino.net> domain name is confusingly similar to Complainant’s
HOYLE mark, and that the addition of “casino,” a generic word describing the
type of business in which Complainant is engaged, does not take the disputed
domain name out of the realm of confusing similarity); see aslo
Quixtar Inv., Inc. v. Smithberger and QUIXTAR-IBO, 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).
Second,
the <celebrex-celebrex-1.com> name is confusingly similar to
Complainant’s CELEBREX mark. The
repetition of Complainant’s entire mark in Respondent’s domain name and
addition of a number does not defeat a confusing similarity claim. See Am. Online Inc. v. Chinese ICQ Network, D2000-0808 (WIPO Aug. 31, 2000)
(finding that the addition of the numeral “4” in the domain name
<4icq.com> does nothing to deflect the impact on the viewer of the mark
ICQ and the domain name is therefore confusingly similar to the ICQ mark); see
also Am. Online, Inc. v. Fu,
D2000-1374 (WIPO Dec. 11, 2000) (finding that adding the suffixes
"502" and "520" to the ICQ trademark does little to reduce
the potential for confusion); see also Hitachi, Ltd. v. Fortune Int’l Dev. Ent, D2000-0412 (WIPO July 2,
2000) (finding that the domain name <hitachi2000.net> is confusingly
similar to Complainant’s mark).
One
of the domain names <vioxx-celebrex.com>, however, includes the
trademark of another entity, Merck.
This presents a unique situation since the domain name appears to
infringe on the rights of multiple trademark holders, but only one party can
hold registration of the domain name. The Panel concludes that the <vioxx-celebrex.com>
domain name is confusingly similar to Complainant’s CELEBREX mark because the
mere addition of a related competing product’s name in the domain name does not
defeat a confusing similarity claim.
See G.D. Searle & Co. v. Christensen, FA 100647 (finding <celebrexclaritinpharmacy.com>
to be confusingly similar to Complainant’s CELEBREX mark); see also
Oki Data Americas, Inc.
v. ASD Inc., D2001-0903
(WIPO Nov. 6, 2001) (“the fact that a domain name incorporates a Complainant’s
registered mark is sufficient to establish identical or confusing similarity
for purposes of the Policy despite the addition of other words to such marks”);
see also Nintendo of Am. Inc v.
Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity
where the Respondent combined the Complainant’s POKEMON and PIKACHU marks to
form the <pokemonpikachu.com> domain name). However, the Panel’s decision is based
solely upon confusingly similarity to Complainant’s mark CELEBREX and does not
establish any rights of Complainant in Merck’s trademark, VIOXX.
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied, as to all of the disputed domain names.
Rights or Legitimate Interests
Complainant has demonstrated its rights
to and interests in the CELEBREX mark.
The Panel may presume that Respondent has no rights or interests in the
disputed domain names because no Response was submitted. 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).
Furthermore, without the benefit of a
Response, the Panel may accept all of Complainant’s assertions as true, unless
clearly contradicted by the evidence in the record. See 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”).
Respondent’s use of the disputed domain
names to solicit drug orders without a license to use the CELEBREX mark or
solicit such orders is not a bona fide offering of goods and services under
Policy ¶ 4(c)(i). See Nat’l Collegiate Athletic Ass’n v. Halpern,
D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell
complainant’s goods without Complainant’s authority, as well as others’ goods
is not bona fide use); see also Ullfrotté AB v. Bollnas Imp., D2000-1176 (WIPO Oct. 23, 2000)
(finding that although the Respondent legitimately sells goods originating from
the Complainant, this does not give him the right to register and the use the
mark as a domain name without the consent of the holder of the trademark).
There is no evidence that Respondent is
known by any of the disputed domain names 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).
The
Panel finds that Respondent has no rights or legitimate interests in the
disputed domain names, thus, satisfying Policy ¶ 4(a)(ii).
Registration
and Use in Bad Faith
Respondent
registered the domain names (6) as a means to prevent Complainant from using
its CELEBREX mark in a corresponding domain name by registering multiple
variations of domain names containing the mark in its entirety. This behavior constitutes bad faith pursuant
to Policy ¶ 4(b)(ii). See Harcourt, Inc. v. Fadness, FA 95247
(Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of
several infringing domain names satisfies the burden imposed by the Policy ¶
4(b)(ii)); see also Armstrong
Holdings, Inc. v. JAZ Assoc., FA 95234 (Nat. Arb. Forum Aug. 17, 2000)
(finding that the Respondent violated Policy ¶ 4(b)(ii) by registering multiple
domain names which infringe upon others’ famous and registered trademarks); see
also YAHOO! Inc. v. Syrynx, Inc.,
D2000-1675 (WIPO Jan. 30, 2001) (finding a bad faith pattern pursuant to Policy
¶ 4(b)(ii) in Respondent's registration of two domain names incorporating
Complainant's YAHOO! mark).
Respondent’s disputed domain names are used to divert
traffic from Complainant’s <celebrex.com> website by confusing Internet
users as to the source, sponsorship, affiliation, or endorsement of
Respondent’s websites, which results in captured business for Respondent. Such use demonstrates bad faith under 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 Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum
Mar. 21, 2000) (finding bad faith where Respondent registered and used an
infringing domain name to attract users to a website sponsored by Respondent); 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 website without permission from Complainant).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied as to all of the disputed domain names.
DECISION
Having established all three elements
required under the ICANN Policy, the Panel concludes that the requested relief
should be hereby granted.
Accordingly, it is Ordered that the <celebrex-pharmacy.com>,
<drug-celebrex.com>, <celebrex-drug.com>, <celebrex-celebrex-1.com>,
<celebrex-arthritis-celebrex-arthritis.com>, and <vioxx-celebrex.com>
domain names be transferred from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated: June 3, 2002
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