G.D. Searle & Co. v. Michael Kerr
Claim Number: FA0206000114676
PARTIES
Complainant
is G.D. Searle & Co., Skokie, IL
(“Complainant”) represented by Paul D.
McGrady, of Ladas & Parry. Respondent is Michael Kerr, Maumee, OH (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <purchase-celebrex-discreetly.com>,
registered with Primus
Telecommunications Pty Ltd.
PANEL
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on June 21, 2002; the Forum received a hard copy of the
Complaint on June 24, 2002.
On
June 24, 2002, Primus Telecommunications Pty Ltd. confirmed by e-mail to the
Forum that the domain name <purchase-celebrex-discreetly.com>
is registered with Primus Telecommunications Pty Ltd. and that Respondent is
the current registrant of the name. Primus
Telecommunications Pty Ltd. has verified that Respondent is bound by the Primus
Telecommunications Pty Ltd. 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 25, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of July 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 postmaster@purchase-celebrex-discreetly.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 18, 2002, pursuant to Complainant’s request to have the dispute decided by
a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson 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 makes the following
allegations in this proceeding:
The
<purchase-celebrex-discreetly.com> domain name is confusingly
similar to Complainant’s CELEBREX mark.
Respondent
has no rights or legitimate interests in the <purchase-celebrex-discreetly.com>
domain name.
Respondent
registered and used the <purchase-celebrex-discreetly.com> domain
name in bad faith.
B.
Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant owns a registered trademark
for the CELEBREX mark, as registered on the Principal Register of the United
States Patent and Trademark Office (“USPTO”) (Reg. No. 2,307,888). Complainant
uses the CELEBREX mark to market “pharmaceutical products in the nature of
anti-inflammatory analgesics.”[1] Moreover, Complainant has successfully used
the CELEBREX mark to market and advertise the sale of anti-arthritic medicine
throughout the world.
Since the inception of the CELEBREX
mark, Complainant aggressively pursued worldwide trademark protection for the
mark; Complainant filed for applications to register the mark in over 113
countries.
Complainant’s CELEBREX medication is
recognized as a “blockbuster arthritis drug” and a “crown jewel in
[Complainant’s] new portfolio” by the New York Times and Forbes,
respectively. Because of Complainant’s
marketing efforts and the popularity of the Complainant’s medication, the
CELEBREX mark enjoys a substantial amount of notoriety.
Respondent registered the <purchase-celebrex-discreetly.com> domain name on May 22,
2002. Respondent uses the domain name
for its website, where it solicits pharmaceutical orders. Complainant never granted Respondent a
license or permission to use the CELEBREX mark.
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 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 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 Respondent is identical to or confusingly similar
to a trademark or service mark in which Complainant has rights; and
(2)
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 in this
proceeding that it has rights in the CELEBREX mark through registration with
the USPTO and subsequent continuous use.
The domain name registered by Respondent,
<purchase-celebrex-discreetly.com>, contains Complainant’s entire
mark. The domain name contains the
message that Respondent sells Complainant’s goods without identifying
Respondent as a separate entity. By
using the generic words “purchase” and “discreetly” around Complainant’s
CELEBREX mark, Respondent creates a domain name that has an obvious
relationship to Complainant’s business.
Hence, Respondent’s domain name is confusingly similar to Complainant’s
mark. See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where Respondent’s domain name combines Complainant’s mark with a
generic term that has an obvious relationship to Complainant’s business); see
also Marriott Int’l v. Café au
lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that Respondent’s
domain name <marriott-hotel.com> is confusingly similar to Complainant’s
MARRIOTT 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 Complainant
combined with a generic word or term).
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
In light of Complainant’s assertion that
Respondent has no rights or legitimate interests in the <purchase-celebrex-discreetly.com>
domain name and Respondent’s failure to respond, it is presumed that Respondent
has no such rights or interests in the 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). Furthermore, due to the lack of response,
all reasonable inferences may be drawn 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 uses the <purchase-celebrex-discreetly.com>
domain name to solicit pharmaceutical orders from Internet consumers. Since Respondent sells pharmaceuticals,
Respondent is in competition with Complainant.
From the message conveyed in Respondent’s domain name, it can be
inferred that Respondent intended to use Complainant’s CELEBREX mark to divert
Internet users for financial gain. The
use of a domain name to sell Complainant’s products and other related goods is
contrary to principles set out in Policy ¶¶ 4(c)(i) and (iii). Therefore, pursuant to these sections,
Respondent has no legitimate rights or interests in the domain name. 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 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 Kosmea
Pty Ltd. v. Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the
domain name where Respondent has an intention to divert consumers of
Complainant’s products to Respondent’s site by using Complainant’s mark).
Complainant’s investigation failed to
uncover any trademarks for the CELEBREX mark owned by Respondent. Complainant has exclusively used the
CELEBREX mark to advertise its arthritic pain relieving medication and never
authorized Respondent’s use of said mark.
Furthermore, Respondent is not commonly known by the domain name. This
Panel knows Respondent only as Michael Kerr.
Therefore, Respondent has no rights or legitimate interests in the
domain name pursuant to Policy ¶ 4(c)(ii).
See 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); see also Broadcom
Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001)
(finding no rights or legitimate interests because Respondent is not commonly
known by the disputed domain name or using the domain name in connection with a
legitimate or fair use).
Accordingly, the Panel finds that
Respondent has no rights or legitimate interests in the <purchase-celebrex-discreetly.com>
domain name; thus, Policy ¶ 4(a)(ii) has been satisfied.
The bad faith circumstances, presented in
Policy ¶ 4(b), do not represent an exhaustive list of what warrants a finding
of bad faith. The Panel must refer to
the totality of circumstances in order to determine the propriety of a bad
faith registration or use holding. See
Cellular One Group v. Brien,
D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of
the Policy is not an exhaustive list of bad faith evidence); see also Twentieth Century Fox Film Corp. v. Risser,
FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a
domain name has been registered in bad faith, the Panel must look at the
“totality of circumstances”).
The following list of evidence confirms
that Respondent knew of Complainant’s rights in the CELEBREX mark: (1) Complainant extensively promoted its
newly developed arthritic medication with the CELEBREX mark, (2) the CELEBREX
medication was heavily publicized during its early stages, (3) the CELEBREX
mark is registered on the on the Principal Register of the USPTO, and (4)
Respondent uses the mark in the domain name to advertise the sale of Complainant’s
CELEBREX medication. Thus, it is clear
that Respondent knew or should have known of Complainant’s rights in the
CELEBREX mark. Therefore, Respondent’s
registration of the <purchase-celebrex-discreetly.com> domain
name, despite knowledge of Complainant’s rights, represents bad faith
registration. See Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration); see also Nintendo
of Am. Inc v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding that
Respondent, at the time of registration, had notice of Complainant’s famous
POKÉMON and PIKACHU trademarks given their extreme
popularity); see also Victoria’s Cyber
Secret Ltd. P’ship v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a
Principal Register registration [of a trademark or service mark] is
constructive notice of a claim of ownership so as to eliminate any defense of
good faith adoption” pursuant to 15 U.S.C. § 1072).
Respondent’s use of the <purchase-celebrex-discreetly.com>
domain name to compete with Complainant in the pharmaceutical industry
constitutes a bad faith use under Policy ¶ 4(b)(iv). Respondent creates a likelihood of confusion with Complainant as
to source, sponsorship, or affiliation of Respondent’s website. Using Complainant’s mark to advertise the
sale of goods without express or implied authorization is not a good faith use
and infringes on Complainant’s rights in the mark. 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); see also State
Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000)
(finding bad faith where Respondent registered the domain name
<bigtex.net> to infringe on Complainant’s goodwill and attract Internet
users to Respondent’s website).
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 the requested relief
shall be hereby GRANTED.
Accordingly, it is Ordered that the
domain name <purchase-celebrex-discreetly.com> be TRANSFERRED from
Respondent to Complainant.
Hon. Carolyn Marks
Johnson, Panelist
Dated: August 1, 2002.
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