G.D. Searle & Co. v. Michael Kerr
Claim Number: FA0206000114676
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.
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.
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 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 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
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.
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.” 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.
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.
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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 Analgesics are agents that relieve pain without loss of consciousness.