G.D. Searle & Co. v. 24-7-Commerce.com
Claim Number: FA0206000114707
Complainant is G.D. Searle & Co., Skokie, IL (“Complainant”) represented by Paul D. McGrady, of Ladas & Parry. Respondent is 24-7-Commerce.com, Manhattan Beach, CA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <celebrex-vioxx-ultram-super-blue-stuff.com>, registered with Intercosmos Media Group, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on June 28, 2002; the Forum received a hard copy of the Complaint on June 26, 2002.
On June 26, 2002, Intercosmos Media Group, Inc. confirmed by e-mail to the Forum that the domain name <celebrex-vioxx-ultram-super-blue-stuff.com> is registered with Intercosmos Media Group, Inc. and that Respondent is the current registrant of the name. Intercosmos Media Group, Inc. has verified that Respondent is bound by the Intercosmos Media Group, 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 June 26, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 16, 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 23, 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.
The <celebrex-vioxx-ultram-super-blue-stuff.com> domain name is confusingly similar to Complainant’s mark.
Respondent has no rights or legitimate interests in the <celebrex-vioxx-ultram-super-blue-stuff.com> domain name.
Respondent registered and used the <celebrex-vioxx-ultram-super-blue-stuff.com> domain name in bad faith.
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). The CELEBREX mark is used by Complainant 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 has aggressively pursued worldwide trademark protection for the mark; Complainant has filed for applications to register the mark in over 113 countries.
Complainant’s CELEBREX medication has been 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.
The marks VIOXX and ULTRAM, which are in the disputed domain name, are used by Complainant’s competitors to denote similar pain relieving pharmaceuticals.
Respondent registered the <celebrex-vioxx-ultram-super-blue-stuff.com> domain name on May 26, 2002. Respondent has made no use of the domain name but for “placing a ‘coming soon’ notice on the Internet.” Complainant never authorized Respondent’s registration of the domain name containing Complainant’s CELEBREX mark, nor did Complainant ever grant Respondent 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 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.
Identical and/or Confusingly Similar
Complainant has established its rights in the CELEBREX mark through registration with the USPTO and continuous use since the marks inception.
Respondent’s <celebrex-vioxx-ultram-super-blue-stuff.com> domain name contains Complainant’s entire CELEBREX mark at the forefront. Respondent uses the CELEBREX mark along with the VIOXX and ULTRAM marks, which are marks of Complainant’s competitors, as a string of names in the second level domain. It appears that these marks are used for identifying purposes, as they conjure up each marks’ source. It has been held that using Complainant’s mark along with a competitor’s mark in a domain name does not defeat a confusingly similar claim. See G.D. Searle & Co. v. Entm’t Hosting Services, Inc., FA 110783 (Nat. Arb. Forum June 3, 2002) (“[t]he Panel concludes that the <viagra-propecia-xenical-celebrex-claritin-prescriptions.com> domain name is confusingly similar to Complainant’s CELEBREX mark because the mere addition of related competing products’ names in the domain name does not defeat a confusing similarity claim”); see also G.D. Searle & Co. v. Christensen, FA 100647 (Nat. Arb. Forum Dec. 4, 2001) (finding <celebrexclaritinpharmacy.com> to be confusingly similar to Complainant’s CELEBREX mark).
Furthermore, Complainant uses the generic, hyphenated phrase “super-blue-stuff” as a suffix to the source identifying marks in the second level domain. The use of the phrase “super-blue-stuff,” which is comprised of three generic words, fails to detract from the dominating presence of Complainant’s CELEBREX mark. Complainant’s mark has an especially dominating presence compared to the use of Complainant’s competitor’s marks in the domain name because it is the first mark used in the second level domain. Therefore, the Panel finds that the <celebrex-vioxx-ultram-super-blue-stuff.com> domain name is confusingly similar to 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 the 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).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
In light of Complainant’s assertion that Respondent has no rights or legitimate interests in the disputed domain name and Respondent’s failure to submit a Response, the Panel may presume that Respondent has no such rights or legitimate 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, since Respondent failed to come forward to assert any arguments or defenses, all reasonable inferences may be drawn in favor of Complainant. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint).
Respondent does not use the <celebrex-vioxx-ultram-super-blue-stuff.com> domain name in connection with a website other than to provide the message “coming soon.” However, Respondent has not come forward to offer any evidence, which corroborates the website message, of demonstrable preparations to use the domain name. There is no evidence on the record that shows what Respondent will soon be offering in association with the domain name. Respondent has the burden to prove its rights and legitimate interests in the domain name in an answer to Complainant’s assertion that Respondent has no such rights. Because Respondent does not actively use the domain name and has not demonstrated any clear plans to use the domain name, Respondent is not in compliance with Policy ¶¶ 4(c)(i) and (iii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under certain circumstances the mere assertion by the Complainant that the Respondent has no right or legitimate interest is sufficient to shift the burden of proof to the Respondent to demonstrate that such a right or legitimate interest does exist); see also Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that absent evidence of preparation to use the domain name for a legitimate purpose, the burden of proof lies with the Respondent to demonstrate that it has rights or legitimate interests); 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 no connection to Complainant that would allow Respondent to rightfully use the CELEBREX mark in the disputed domain name. Complainant never authorized or licensed Respondent to use the CELEBREX mark for any reason. Moreover, Respondent’s purported name “24-7 Commerce.com” does not incorporate the CELEBREX mark. Therefore, from the evidence presented it is clear that Respondent is not commonly referred to by the <celebrex-vioxx-ultram-super-blue-stuff.com> domain name or any variation thereof. Thus, 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); see also 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).
Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the <celebrex-vioxx-ultram-super-blue-stuff.com> domain name; thus, Policy ¶ 4(a)(ii) has been satisfied.
The list of bad faith circumstances in Policy ¶ 4(b) is not an exhaustive representation of what warrants a finding of bad faith. The Panel must review the totality of circumstances when determining whether Respondent registered and used the domain name in bad faith. 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”).
It is evident that Respondent knew of Complainant’s rights in the CELEBREX mark since Complainant coined CELEBREX and Respondent uses the mark in conjunction with marks of Complainant’s competitors. Furthermore, the CELEBREX mark is registered on the Principal Register of the USPTO and quickly gained a substantial level of notoriety following its widely publicized approval. Therefore, Respondent’s registration of <celebrex-vioxx-ultram-super-blue-stuff.com>, despite knowledge of Complainant’s rights, represents 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 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 Ty Inc. v. Parvin, D2000-0688 (WIPO Nov. 9, 2000) (finding that Respondent’s registration and use of an identical and/or confusingly similar domain name was in bad faith where Complainant’s BEANIE BABIES mark was famous and Respondent should have been aware of it); 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).
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 <celebrex-vioxx-ultram-super-blue-stuff.com> be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: July 31, 2002
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 Analgesics are agents that relieve pain without loss of consciousness.