G. D. Searle & Co. v. Buy This Domain a/k/a John Barry
Claim Number: FA0206000114610
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.
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 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 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 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.
Complainant requests that the domain name be transferred from Respondent to 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.
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.
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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