G. D. Searle & Co. v. Woodrow Bridges
a/k/a Sales
Claim Number: FA0206000114708
PARTIES
Complainant
is G.D. Searle & Co., Skokie, IL
(“Complainant”) represented by Paul D.
McGrady, Jr., of Ladas & Parry. Respondent is Woodrow Bridges a/k/a Sales, Oklahoma City, OK (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <celebrexs.com>,
registered with Go Daddy Software, Inc.
PANEL
The
undersigned certifies that she has acted independently and impartially and to
the best of her knowledge has no known conflict in serving as Panelist in this
proceeding.
Sandra
Franklin as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on June 26, 2002; the Forum received a hard copy of the
Complaint on June 25, 2002.
On
June 26, 2002, Go Daddy Software, Inc. confirmed by e-mail to the Forum that
the domain name <celebrexs.com>
is registered with Go Daddy Software, Inc. and that Respondent is the current
registrant of the name. Go Daddy
Software, Inc. has verified that Respondent is bound by the Go Daddy Software,
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 28, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of July 18,
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@celebrexs.com by e-mail.
Having
received no formal 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 29, 2002, pursuant to Complainant’s request to have the dispute decided by
a single-member Panel, the Forum appointed Sandra Franklin 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
The
<celebrexs.com> domain name is confusingly similar to
Complainant’s CELEBREX mark.
Respondent
has no rights or legitimate interests in the <celebrexs.com>
domain name.
Respondent
registered and used the <celebrexs.com> domain name in bad faith.
B.
Respondent
Respondent
did not submit a formal Response in this proceeding. Respondent submitted a reply to the Complaint that stated its
desire to relinquish its rights in the <celebrexs.com> domain name
to Complainant. Complainant, however,
requested that Respondent’s reply be treated as a Response and to allow the
matter to proceed. Therefore, since
Respondent made no arguments and presented no defenses, pursuant to Rule
5(b)(i) Respondent’s reply is not treated as a formal Response.
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
promote “pharmaceutical products in the nature of anti-inflammatory
analgesics.”[1] Moreover, Complainant successfully uses 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 applications to register the mark in over 113
countries.
Complainant’s CELEBREX medication was 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 Complainant’s medication, the CELEBREX mark enjoys a
substantial amount of notoriety.
Respondent registered the <celebrexs.com>
domain name on May 21, 2002. Respondent
uses the domain name to link to a website that solicits automobile sales. Complainant never authorized Respondent to
use the CELEBREX mark and Respondent has no connection with the 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 formal 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 mark’s inception.
Respondent’s <celebrexs.com>
domain name is simply a misspelling of Complainant’s well-known CELEBREX
mark. Respondent appropriates
Complainant’s entire CELEBREX mark for use in its domain name with the mere
addition of the letter “s” following the mark.
Adding the letter “s” at the end of a mark used in the domain name does
not create a distinct domain name capable of overcoming a confusingly similar
claim. Therefore, Respondent’s domain
name is confusingly similar to Complainant’s mark. See Cream Pie Club
v. Halford, FA 95235 (Nat. Arb. Forum Aug. 17, 2000) (finding that “the
addition of an ‘s’ to the end of the Complainant’s mark, ‘Cream Pie’ does not
prevent the likelihood of confusion caused by the use of the remaining
identical mark. The domain name <creampies.com> is similar in sound,
appearance, and connotation”); see also Blue Cross & Blue Shield Ass’n v. InterActive Communications, Inc.,
D2000-0788 (WIPO Aug. 28, 2000) (finding that a domain name which merely adds
the letter ‘s’ to Complainant’s mark is sufficiently similar to the mark to
cause a likelihood of confusion among the users of the Complainant’s services
and those who were to view a web site provided by the Respondent accessed
through the contested domain name).
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 disputed domain name
and Respondent’s failure to submit a formal Response, the Panel may presume
that Respondent has no such rights or legitimate interests in the <celebrexs.com>
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 uses the <celebrexs.com>
domain name as an address for a website that sells automobiles. Complainant contends that the website is
Respondent’s and that Respondent solicits car sales at the website. Since Respondent failed to submit a formal
Response answering Complainant’s allegations, it may be inferred that
Respondent uses the <celebrexs.com> domain name for its own
commercial purposes. Respondent’s
actions of linking the domain name to a commercial website does not constitute
a connection with a bona offering of goods or services, nor does Respondent’s
use represent a legitimate noncommercial or fair use. Therefore, Respondent has no rights or legitimate interests in
the domain name pursuant to Policy ¶¶ 4(c)(i) and (iii). See Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000)
(finding no legitimate use when Respondent was diverting consumers to its own
website by using Complainant’s trademarks); see also MSNBC Cable, LLC v. Tysys.com,
D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in
the famous MSNBC mark where Respondent attempted to profit using the
Complainant’s mark by redirecting Internet traffic to its own website).
Complainant never authorized Respondent
to use the CELEBREX mark in any manner.
Respondent has no connection to the CELEBREX mark or any similar
mark. Furthermore, Respondent is not
commonly known by CELEBREXS or the <celebrexs.com> domain name;
Respondent has identified itself as Woodrow Bridges in a correspondence to
Complainant. 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 <celebrexs.com>
domain name; thus, Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
The criterion specified in Policy ¶ 4(b)
does not represent a complete list of bad faith circumstances. The Panel is permitted to look at the
totality of circumstances when determining whether the 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 CBS Broad., Inc. v. LA-Twilight-Zone,
D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other
circumstances can be evidence that a domain name was registered and is being
used in bad faith”).
Respondent uses the <celebrexs.com>
domain name to draw Internet consumers, who search for Complainant’s CELEBREX
product, to its commercial car sales website.
Respondent’s diversion tactics create the distinct possibility of
consumer confusion as to Complainant’s affiliation or sponsorship of the domain
name. Hence, Respondent uses the domain
name in bad faith pursuant to Policy ¶ 4(b)(iv). 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 Am. Online,
Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000)
(finding bad faith where Respondent registered and used an infringing domain
name to attract users to a website sponsored by Respondent).
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 <celebrexs.com> be TRANSFERRED from
Respondent to Complainant.
Sandra Franklin, Panelist
Dated: August 9, 2002
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