G. D. Searle & Co. v. Buy This Domain
a/k/a John Barry
Claim Number: FA0206000114610
PARTIES
Complainant is G. D. Searle &
Co., Skokie, IL (“Complainant”) represented by Paul D. McGrady, of
Ladas & Parry. Respondent is
Buy This Domain a/k/a John Barry, Bronx, NY (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <freecelebrex.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 June 17, 2002;
the Forum received a hard copy of the Complaint on June 18, 2002.
On June 18, 2002, Enom confirmed by
e-mail to the Forum that the domain name <freecelebrex.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 June 18, 2002, a Notification of
Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of July 8, 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@freecelebrex.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 July 15, 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
1. Respondent’s <freecelebrex.com>
domain name is confusingly similar to Complainant’s registered CELEBREX
mark.
2. Respondent does
not have any rights or legitimate interests in the <freecelebrex.com> domain
name.
3. Respondent
registered and used the <freecelebrex.com> domain name in bad
faith.
B. Respondent
failed to submit a Response in this proceeding.
FINDINGS
Complainant
is the owner of numerous U.S Patent and Trademark Office registrations for its
CELEBREX mark, more specifically: Reg. No. 2,321,622 registered February 22,
2000 and Reg. No. 2,307,888 registered January 11, 2000, among others.
Complainant has filed applications to register its CELEBREX mark in more than
112 countries around the world for use with its “pharmaceutical products in the
nature of anti-inflammatory analgesics.”
Complainant
filed applications for registrations of its CELEBREX mark as early as February
10, 1998 in the U.S. and its non-U.S. applications as early as February 16,
1998. Complainant’s CELEBREX pharmaceutical was referred to in a February 13,
2001 article for The New York Times as the “blockbuster arthritis drug” and
appeared in the July 24, 2000 issue of Forbes magazine, which referred to the
new drug as “the $2 billion (sales) crown jewel in Pharmacia’s new portfolio.”
Due
to extensive marketing and advertising expended on the promotion of
Complainant’s CELEBREX mark, Complainant’s mark has become internationally
famous and distinct.
Respondent
registered the disputed domain name on April 28, 2002. Respondent’s <freecelebrex.com>
domain name currently resolves to a website that offers products in
competition with Complainant’s CELEBREX brand of analgesics. Complainant’s
investigation has provided uncontested evidence that Respondent has engaged in
a pattern of typosquatting by previously registering
<e-viagra-xenical-celebrex-propecia.com>. Complainant is currently
involved in another dispute with Respondent over the <celebrax.com>
domain name, which Respondent is also using to offer the sale of
pharmaceuticals via the Internet. Complainant did not authorize, license or
acquiesce to Respondent using its CELEBREX mark in a 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.
Complainant
has established rights in the CELEBREX mark through international registration
and continuous use of the mark since at least February 10, 1998.
Respondent’s
<freecelebrex.com> domain name is confusingly similar to
Complainant’s CELEBREX mark. Respondent’s domain name incorporates
Complainant’s mark in its entirety, and deviates only in the addition of the
generic word “free.” The addition of a generic word to a famous mark fails to
detract from the overall presence of Complainant’s CELEBREX mark. Furthermore,
Respondent’s choice of the word “free” in the second level domain seems to be a
marketing tactic used to attract Complainant’s customers to a competing
website, thereby furthering the possibility of confusion. See 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 Westfield Corp., Inc. v.
Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the
<westfieldshopping.com> domain name confusingly similar because the
WESTFIELD mark was the dominant element); see also 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”).
Accordingly,
the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent
has failed to submit a Response in this proceeding. Therefore, it is presumed
that Respondent lacks rights and legitimate interests in the <freecelebrex.com>
domain name. 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).
Furthermore,
because Respondent failed to submit a Response in this proceeding, the Panel is
permitted to make all reasonable inferences in favor of Complainant. 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
has made no use of the infringing domain name other than to solicit
pharmaceutical orders from Internet users searching for Complainant’s website.
Respondent’s use of Complainant’s CELEBREX mark represents an opportunistic
attempt to trade on the goodwill associated with Complainant’s mark.
Respondent’s infringing domain name is not being used in connection with a bona
fide offering of goods or services under Policy ¶ 4(c)(i), nor is Respondent making
a legitimate noncommercial or fair use of <freecelebrex.com>
pursuant to Policy ¶ 4(c)(iii). See Chip Merch., 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).
Respondent
has not submitted any evidence suggesting that it is commonly known as <freecelebrex.com>
pursuant to Policy ¶ 4(c)(ii). Complainant’s CELEBREX mark represents a
unique and fanciful mark that is internationally associated with Complainant.
The fact that the CELEBREX mark is so obviously connected to Complainant
creates a presumption that Respondent is not commonly known by a domain name
reflecting Complainant’s mark. 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).
Accordingly,
the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant
has provided the Panel with evidence indicating Respondent’s primary purpose in
registering the domain name was to compete with Complainant. Respondent
opportunistically registered Complainant’s famous mark in the domain name in
order to attract Complainant’s potential customers. Respondent registered and
used the domain name primarily for the purpose of disrupting Complainant’s
business, evidencing bad faith registration and use under 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 S. Exposure v. S. Exposure, Inc., FA 94864 (Nat.
Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting
Internet users to a website that competes with Complainant’s business).
Furthermore,
Respondent commercially benefited from the registration and use of the
infringing domain name by soliciting pharmaceutical orders from Internet users.
Respondent intentionally attempted to attract Internet users to its website by
creating a likelihood of confusion with Complainant’s CELEBREX mark as to the
source of its website. Respondent’s registration and use of the infringing
domain name represent 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 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); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO
Dec. 11, 2000) (finding that ICQ mark is so obviously connected with
Complainant and its products that the use of the domain names by Respondent,
who has no connection with Complainant, suggests opportunistic bad faith).
The
Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three elements
required under the ICANN Policy, the Panel concludes that relief shall be
hereby GRANTED.
Accordingly,
it is Ordered that the <freecelebrex.com> domain name be TRANSFERRED
from Respondent to Complainant.
The
Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated:
July 23, 2002
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