G. D. Searle & Co. v. Northside Computers
Claim Number: FA0206000114677
Complainant is G. D. Searle & Co., Peapack, NJ (“Complainant”) represented by Paul D. McGrady, Jr., of Ladas & Parry. Respondent is Northside Computers, Marshfield, WI (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <getmycelebrex.com> and <getmycelebrex.net>, registered with Dotster, Inc.
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.
James A. Crary as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on June 24, 2002; the Forum received a hard copy of the Complaint on June 24, 2002.
On July 17, 2002, Dotster, Inc. confirmed by e-mail to the Forum that the domain names <getmycelebrex.com> and <getmycelebrex.net> are registered with Dotster, Inc. and that Respondent is the current registrant of the names. Dotster, Inc. has verified that Respondent is bound by the Dotster, Inc. 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 July 17, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 6, 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 and firstname.lastname@example.org 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 August 20, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James A. Crary 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 names be transferred from Respondent to Complainant.
1. Respondent’s <getmycelebrex.com> and <getmycelebrex.net> domain names are confusingly similar to Complainant’s registered CELEBREX mark.
2. Respondent does not have any rights or legitimate interests in the subject domain names.
3. Respondent registered and used the disputed domain names in bad faith.
B. Respondent failed to submit a Response in the proceeding.
Complainant is the owner of numerous applications and registrations for the CELEBREX trademark, including, inter alia: Albanian Reg No. 7907 registered February 7, 2000; Belarus Reg. No. 12633 registered July 28, 2000; Canadian Reg. No. 527792 registered May 16, 2000; and, U.S. Patent and Trademark Office (“USPTO”) Reg. No. 2,307,888 listed on the Principal Register on January 11, 2000. Complainant has filed applications to register the CELEBREX mark in more than 112 countries.
Complainant’s CELEBREX mark denotes the goods offered under the established mark, primarily “pharmaceutical products in the nature of anti-inflammatory analgesics.” Complainant’s CELEBREX mark and corresponding drug have enjoyed significant international publicity due to Complainant’s advertising. For instance, CELEBREX was referred to in a February 13, 2001 article for The New York Times as a “blockbuster arthritis drug,” and Forbes Magazine referred to Complainant’s new drug as “the $2 billion crown jewel in Pharmacia’s new portfolio.”
Complainant’s CELEBREX mark began receiving media attention as early as December of 1998. Complainant filed trademark registration applications for the CELEBREX mark as early as February 10, 1998 in the U.S. and internationally around February 16, 1998. Due to Complainant’s extensive advertising campaign and significant expenditures relating to the marketing of its new drug offered under the CELEBREX mark, Complainant’s CELEBREX mark has become internationally famous and a source identifier for Complainant’s product.
Respondent registered the <getmycelebrex.com> and <getmycelebrex.net> domain names on May 22, 2002. Complainant’s Submission indicates that Respondent has used the contested domain names in connection with an online pharmaceutical business, soliciting pharmaceutical orders from interested individuals.
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 registering the mark with the relevant international trademark authorities, and subsequent continuous use of the mark.
Respondent’s <getmycelebrex.com> and <getmycelebrex.net> domain names are confusingly similar to Complainant’s registered CELEBREX mark. The dominant CELEBREX element appears at least once in each of the disputed domain names, and merely includes the addition of generic words, namely “GET” and “MY.” The addition of generic words to a famous mark fails to detract attention from the primary element of the second-level domain, Complainant’s CELEBREX mark. 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 Complainant combined with a generic word or term); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word…nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).
Because Respondent is involved in the same field as Complainant, the likelihood that the public will be confused is increased. Respondent’s domain names incorporate Complainant’s famous CELEBREX mark and imply some connection with Complainant’s pharmaceutical products, creating the false appearance that Respondent is offering pharmaceutical products under the authority of Complainant. See 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”).
Also, the addition of the generic top-level domains (“gTLD”) “.com” and “.net” are inconsequential when distinguishing the offending domains from the CELEBREX marks because the gTLD is a functional necessity rather than an arbitrary trademark choice. See 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); see also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent did not respond to Complainant’s assertions, thereby failing to fulfill its burden of demonstrating its rights or legitimate interests in the subject domain names. Respondent’s failure to respond allows all reasonable inferences made by Complainant to be regarded as true. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Vertical Solutions Mgmt., Inc. v. Webnet-Marketing, Inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).
Furthermore, Respondent’s failure to submit evidence of circumstances that may suggest it has rights or legitimate interests in the disputed domain names corroborates Complainant’s assertions that Respondent has none. 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 Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate interests where Respondent has advanced no basis on which the Panel could conclude that it has a right or legitimate interest in the domain names, and no use of the domain names has been established).
Respondent has made no use of the infringing domain names, other than to solicit pharmaceutical orders from interested Internet users. Respondent’s efforts to divert Internet users searching for Complainant’s CELEBREX products to its own website is an opportunistic attempt to trade off the goodwill and value of Complainant’s famous mark. In operating a competing pharmaceutical website, Respondent’s actions are not in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i). See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also N. Coast Med., Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no bona fide use where Respondent used the domain name to divert Internet users to its competing website).
Complainant’s investigation failed to reveal any prior trademark applications or registrations in the name of Respondent for any mark incorporating the CELEBREX element. Because Complainant’s CELEBREX mark has acquired international recognition and reflects a fanciful term, it is presumed Respondent is not commonly known by domain names that incorporate the CELEBREX mark in its entirety. Therefore, Respondent fails to demonstrate rights in the domain names pursuant to Policy ¶ 4(c)(ii). 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 Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant's distinct and famous NIKE trademark) .
Lastly, Respondent’s attempts to solicit pharmaceutical orders by capitalizing on the fame and recognition associated with Complainant’s CELEBREX mark is not a legitimate noncommercial or fair use of the domain names under Policy ¶ 4(c)(iii). Respondent is assuredly monetarily benefiting from Internet users’ misunderstanding that its pharmaceutical business is affiliated or sponsored by Complainant. See Caterpillar Inc. v. Quin, D2000-0314 (WIPO June 12, 2000) (finding that Respondent does not have a legitimate interest in using the domain names <caterpillarparts.com> and <caterpillarspares.com> to suggest a connection or relationship, which does not exist, with Complainant's mark CATERPILLAR); 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).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The circumstances surrounding the present dispute indicate that Respondent’s registration and use of the infringing domain names was performed in bad faith within the meaning of Policy ¶ 4(a)(iii). Numerous factors corroborate Complainant’s theory that Respondent had knowledge of Complainant’s rights in the CELEBREX mark prior to seeking registration of the infringing domain names, such as: Respondent registered domain names that incorporate a fanciful mark in its entirety with the suggestive “GET MY” addition; Respondent is involved in the identical industry as Complainant offering identical goods and products; and, Complainant has numerous listings on the Principal Register of the USPTO, which by itself constitutes notice because Respondent’s place of domicile is in the U.S. Respondent’s registration of infringing domain names, despite knowledge of Complainant’s preexisting rights, evidences bad faith registration pursuant to Policy ¶ 4(a)(iii). 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 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); see also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the worldwide prominence of the mark and thus Respondent registered the domain name in bad faith).
Also, Respondent’s opportunistic use of the infringing domain names illustrates bad faith registration and use pursuant to Policy ¶ 4(b)(iv). Presumably, Respondent is marketing pharmaceuticals and soliciting orders in an attempt to monetarily gain from trading off of the goodwill associated with Complainant’s CELEBREX mark. By using the domain name in such a manner, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion as to the sponsorship of its websites. See 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); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent directed Internet users seeking Complainant’s site to its own website for commercial gain); see also Red Bull GmbH v. Gutch, D2000-0766 (WIPO Sept. 21, 2000) (finding that Respondent’s expected use of the domain name <redbull.org> would lead people to believe that the domain name was connected with Complainant, and thus is the equivalent to bad faith use).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii) in demonstrating that Respondent registered and used the subject domain names in bad faith.
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 <getmycelebrex.com> and <getmycelebrex.net> domain names be TRANSFERRED from Respondent to Complainant.
James A. Crary, Panelist
Dated: September 8, 2002
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