G.D. Searle & Co. v. John Barry
Claim Number: FA0205000112611
PARTIES
Complainant
is G.D. Searle & Co., Skokie, IL
(“Complainant”) represented by Paul D.
McGrady, of Ladas & Parry. Respondent is John Barry, Bronx, NY (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <celabrax.com>,
registered with eNom.
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 May 1, 2002; the Forum received a hard copy of the Complaint
on May 2, 2002.
On
May 3, 2002, eNom confirmed by e-mail to the Forum that the domain name <celabrax.com> is registered with
eNom and that Respondent is the current registrant of the name. eNom has verified that Respondent is bound
by the eNom 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
May 6, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of May 28,
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@celabrax.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
June 10, 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 name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
The
disputed <celabrax.com> domain
name is confusingly similar to CELEBREX, a registered mark in which Complainant
holds rights.
Respondent
has no rights or legitimate interests in respect of the disputed domain name.
Respondent
registered and used the disputed domain name in bad faith.
B.
Respondent
Respondent
did not submit a Response.
FINDINGS
Complainant, a wholly owned subsidiary of
Pharmacia Corp., produces and markets an anti-arthritic medicine under the
CELEBREX mark, sold around the world.
Complainant has gone to great lengths and expended significant sums in
promoting its CELEBREX mark and product and asserts that the mark has earned
“worldwide notoriety” within the meaning of the Paris Convention and “fame”
within the meaning of the U.S. Trademark Dilution Act.
Complainant’s CELEBREX mark is registered
in the U.S., among other countries, on the Principal Register of the U.S.
Patent and Trademark Office as Registration Nos. 2,307,888 and 2,321,622.
Respondent registered the disputed domain
name on March 31, 2002, and has used the domain name to redirect Internet users
to an online pharmacy website, which Complainant asserts sells products that
compete with its CELEBREX product.
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 established its rights in
the CELEBREX mark through trademark registration and continuous subsequent use.
The disputed domain name is confusingly
similar to Complainant’s mark as it is phonetically almost identical to the
mark, trading the letter “e” for “a” in two instances and adding the generic
top-level domain “.com.” See Hewlett-Packard Co. v. Cupcake City, FA
93562 (Nat. Arb. Forum Apr. 7, 2000) (finding that a domain name which is
phonetically identical to Complainant’s mark satisfies ¶ 4(a)(i) of the
Policy); see also Rollerblade,
Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top
level of the domain name such as “.net” or “.com” does not affect the domain
name for the purpose of determining whether it is identical or confusingly
similar).
Further, the use of the disputed domain
name to sweep Internet users into a pharmacy website suggests Respondent
specifically selected the name for its confusingly similar quality. See Exxon Corp. v. Texas Motor Exch.
of Houston, 628 F.2d 500, 506 (5th Cir. 1980) ("The best evidence
of likelihood of confusion is provided by evidence of actual confusion").
Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Complainant has demonstrated its rights
to and interests in the CELEBREX mark.
Because Respondent has not submitted a Response, the Panel may presume
it holds no such rights or interests in the disputed domain name. 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).
Complainant asserts that Respondent is
not commonly known as CELEBREX and that Respondent holds no trademark rights in
CELEBREX. Although the disputed domain
name does not contain the word CELEBREX, but rather “celabrax,” the Panel will
assume that Respondent is commonly known by its purported name “John Barry,”
and not “celabrax” or <celabrax.com>, as would establish rights
under Policy ¶ 4(c)(ii). See Canadian Imperial Bank of Commerce v. D3M
Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no
rights or legitimate interests where no such right or interest was immediately
apparent to the Panel and Respondent did not come forward to suggest any right
or interest it may have possessed); 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 <celabrax.com>,
a domain name confusingly similar to Complainant’s CELEBREX mark, to sell
various pharmaceutical products does not amount to a bona fide offering of
goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial
or fair use pursuant to Policy ¶ 4(c)(iii).
Respondent has chosen the disputed domain name in the hope that Internet
users will mistakenly believe “celabrax” is the correct spelling of
Complainant’s mark and visit Respondent’s website believing it to be
Complainant’s. See 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 bona fide
use); see also 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).
Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Respondent registered the disputed domain
name with the hopes of snagging Internet users seeking information from
Complainant’s website. Respondent is
using the name to opportunistically trade on the fame and goodwill associated
with Complainant’s mark for its own commercial gain. Such behavior demonstrates bad faith registration and use under
Policy ¶ 4(b)(iv). See AltaVista v. Krotov, D2000-1091 (WIPO
Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the Respondent
linked the domain name to a website that offers a number of web services); 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).
Furthermore, Respondent’s mere act of
registering a misspelling of Complainant’s mark has been recognized as
“typosquatting,” an activity also evidencing bad faith. See Bama Rags, Inc. v. Zuccarini, FA 94381 (Nat. Arb. Forum May 8,
2000) (finding that the Respondent’s registration of names of famous people,
with slight typographical errors, was evidence of bad faith); see also Hewlett-Packard Co. v. Zuccarini, FA
94454 (Nat. Arb. Forum May 30, 2000) (awarding <hewlitpackard.com> a
misspelling of HEWLETT-PACKARD to Complainant).
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
should be hereby granted.
Accordingly, it is Ordered that the <celabrax.com>
domain name be transferred from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated: June 14, 2002
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