G. D. Searle & Co. v. Northside
Computers
Claim Number: FA0206000114677
PARTIES
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.
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.
James
A. Crary as Panelist.
PROCEDURAL HISTORY
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 postmaster@getmycelebrex.com and postmaster@getmycelebrex.net
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.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. 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.
FINDINGS
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.
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 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.
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 <getmycelebrex.com>
and <getmycelebrex.net> domain names be TRANSFERRED from Respondent to
Complainant.
James A. Crary, Panelist
Dated: September 8, 2002
Click Here to
return to the main Domain Decisions Page.
Click Here to return to our Home Page