G.D. Searle & Co. v. Montgomery Byers
Claim Number: FA0204000110778
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.
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.
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 firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, and 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 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.
Complainant requests that the domain names be transferred from Respondent to 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.
Respondent did not submit a Response in this proceeding.
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.
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.
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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