G.D. Searle & Co. v. Entertainment Hosting Services, Inc.
Claim Number: FA0204000110783
Complainant is G.D. Searle & Co., Skokie, IL (“Complainant”) represented by Paul D. McGrady, of Ladas & Parry. Respondent is Entertainment Hosting Services, Inc., Glendale, CA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <celebrex-pain-relief.com>, <arthritis-celebrex.com>, <0-celebrex.com> and <viagra-propecia-xenical-celebrex-claritin-prescriptions.com>, registered with BulkRegister.
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 24, 2002, BulkRegister confirmed by e-mail to the Forum that the domain names <celebrex-pain-relief.com>, <arthritis-celebrex.com>, <0-celebrex.com> and <viagra-propecia-xenical-celebrex-claritin-prescriptions.com> are registered with BulkRegister and that Respondent is the current registrant of the names. BulkRegister has verified that Respondent is bound by the BulkRegister 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 25, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 15, 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, firstname.lastname@example.org, email@example.com and firstname.lastname@example.org 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.
1. The disputed domain names <celebrex-pain-relief.com>, <arthritis-celebrex.com>, <0-celebrex.com> and <viagra-propecia-xenical-celebrex-claritin-prescriptions.com> are confusingly similar to Complainant’s CELEBREX mark.
2. Respondent has no rights or legitimate interests in the disputed domain names.
3. Respondent registered and used the disputed domain names in bad faith.
B. Respondent did not submit a Response in this proceeding.
Complainant holds international rights in the CELEBREX mark, including 112 ongoing applications worldwide to register the mark. Specifically, Complainant registered CELEBREX (Reg. No. 2,307,888) in the United States in February 2000 and first used it 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 1998. Complainant’s active marketing tactics have led to worldwide notoriety of the CELEBREX mark.
Respondent registered the disputed domain names on November 5, 2001 and has been using them in conjunction with websites to sell pharmaceutical products of the Complainant and the Complainant’s competitors.
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.
The disputed domain names are confusingly similar to Complainant’s registered CELEBREX mark because they incorporate the Complainant’s entire mark with the addition of a generic word, an industry-specific word or a competitor’s identity.
The dominant element CELEBREX appears at least once in each of the disputed domain names. The contested <celebrex-pain-relief.com> and <arthritis-celebrex.com> domain names merely include the addition of a descriptive industry-specific word or a generic word. Neither the addition of an ordinary generic word nor the addition of an industry-specific word detract from the overall impression that the dominant part of the domain name is still the CELEBREX mark. See G.D. Searle & Co. v. Christensen, FA 100647 (finding <celebrexclaritinpharmacy.com> to be confusingly similar to Complainant’s CELEBREX mark); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the Complainant combined with a generic word or term); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding that, given the similarity of the Complainant’s marks with the domain name, consumers will presume the domain name is affiliated with the Complainant). Furthermore, the addition of a hyphenated generic word that relates to the CELEBREX mark or Complainant’s competitors’ products fails to defeat a confusingly similar claim. See Slep-Tone Entm't Corp. v. Sounds Choice Disc Jockeys, Inc., FA 93636 (Nat. Arb. Forum Mar. 13, 2000) (stating that “likelihood of confusion is further increased by the fact that the Respondent and [Complainant] operate within the same industry”); 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).
Additionally, Respondent’s <0-celebrex.com> domain name is confusingly similar to Complainant’s mark since the addition of a number does little to reduce confusion among Internet users; the dominant CELEBREX mark’s impact is still present. See 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 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).
One of the domain names <viagra-propecia-xenical-celebrex-claritin-prescriptions.com>, however, includes the trademarks of other entities, Pfizer, Merck, Roche Laboratories, Inc. and Shering Corporation, respectively. 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 <viagra-propecia-xenical-celebrex-claritin-prescriptions.com> domain name is confusingly similar to Complainant’s CELEBREX mark because the mere addition of related competing products’ names 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 the other trademarks.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has demonstrated its rights to and interests in the CELEBREX mark. Because Respondent has not submitted a Response in this proceeding, the Panel may presume it has no such rights or interests in the disputed domain names. 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, when Respondent fails to submit a Response the Panel is permitted to make all inferences in favor of Complainant. See Vertical Solutions Mgmt., Inc. v. Webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).
Respondent’s use of the disputed domain names to solicit pharmaceutical orders without a license or authorization to use the CELEBREX mark 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 Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (finding that use of Complainant’s mark to sell Complainant’s perfume, as well as other brands of perfume, is not a bona fide use). Furthermore, using Complainant’s CELEBREX mark to attract potential consumers to Respondent’s website while offering competitor’s products also fails to succeed under a Policy ¶ 4(c)(i) analysis. See Chip Merchant, Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were confusingly similar to Complainant’s mark and that Respondent’s use of the domain names to sell competing goods was illegitimate and not a bona fide offering of goods); see also Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or legitimate interests where Respondent generated commercial gain by intentionally and misleadingly diverting users away from Complainant's site to a competing website).
There is no evidence that suggests Respondent is commonly known by any of the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well-established use of the mark).
The fact that the word CELEBREX is an invented word, and as such is not a word domain name registrants would legitimately choose unless seeking to create an impression of an association with the Complainant, demonstrates that Respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(c)(iii). See MBS Computers Ltd. v. Workman, FA 96632 (Nat. Arb. Forum Mar. 16, 2001) (finding no rights or legitimate interests when Respondent is using a domain name identical to Complainant’s mark and is offering similar services); see also Caterpillar Inc. v. Quin, D2000-0314 (WIPO June 12, 2000) (finding that Respondent does not have a legitimate interest in using the domain names <caterpillarparts.com> and <caterpillarspares.com> to suggest a connection or relationship, which does not exist, with Complainant's mark CATERPILLAR).
Accordingly, the Panel finds that Policy ¶4(a)(ii) has been satisfied.
Respondent registered the four contested domain names as a means to prevent Complainant from utilizing its CELEBREX mark in corresponding domain names by registering multiple variations of addresses containing the mark in its entirety; thus, Respondent’s behavior evidences bad faith under 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 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 registered and used the contested domain names in an effort to confuse Internet users and disrupt Complainant’s competing pharmaceutical business, actions constituting bad faith pursuant to Policy ¶ 4(b)(iii). See Mission Kwa Sizabantu v. Rost, D2000-0279 (WIPO June 7,2000) (defining “competitor” as "…one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor”); see also Nokia Corp. v. Uday Lakhani, D2000-0833 (WIPO Oct. 19, 2000) (transferring <nokias.com> from Respondent cellular phone dealer to Complainant); see also Puckett v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that Respondent has diverted business from the Complainant to a competitor’s website in violation of Policy 4(b)(iii)).
Lastly, Respondent’s contested domain names are used to divert consumer interest from Complainant’s <celebrex.com> website by confusing Internet users as to the source, sponsorship, affiliation or endorsement of Respondent’s websites. Respondent’s manufactured confusion results in its sites accruing commercial benefits from the established goodwill of Complainant’s mark. Such use demonstrates bad faith under Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where Respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of Complainant); see also Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that the Respondent acted in bad faith by registering the domain name <fossilwatch.com> and using it to sell various watch brands).
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 relief should be hereby GRANTED.
Accordingly, it is Ordered that the <celebrex-pain-relief.com>, <arthritis-celebrex.com>, <0-celebrex.com> and <viagra-propecia-xenical-celebrex-claritin-prescriptions.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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