G.D. Searle & Co. v. Per Ronnlund
Claim Number: FA0207000116896
Complainant is G.D. Searle & Co., Peapack, NJ, USA (“Complainant”) represented by Paul D. McGrady, Jr., of Ladas & Parry. Respondent is Per Ronnlund, Skelleftea, Vasterbotten, SWEDEN (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <buy-celebrex.com>, registered with Go Daddy Software, 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. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on July 19, 2002; the Forum received a hard copy of the Complaint on July 18, 2002.
On July 19, 2002, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain name <buy-celebrex.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 July 22, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 12, 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 August 29, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq., 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.
1. Respondent’s <buy-celebrex.com> domain name is confusingly similar to Complainant’s CELEBREX registered mark.
2. Respondent does not have any rights or legitimate interests in the <buy-celebrex.com> domain name.
3. Respondent registered and uses the <buy-celebrex.com> domain name in bad faith.
B. Respondent has failed to submit a Response in this proceeding.
Complainant, Pharmacia, is the owner of numerous applications and registrations for its fanciful CELEBREX mark. Complainant has filed applications to register the CELEBREX mark in more than 112 countries around the world. Examples of Complainant’s registrations include: U.S. Patent and Trademark Office Reg. No. 2,307,888 registered on January 11, 2000 reflecting the CELEBREX mark and Swedish Reg. No. 335,102 registered on February 25, 2000.
Complainant’s CELEBREX mark began receiving media attention as early as December of 1998 and Complainant filed its applications for registration of the mark as early as February 10, 1998 in the U.S., and internationally as early as February 16, 1998.
Complainant’s CELEBREX mark denotes “pharmaceutical products in the nature of anti-inflammatory analgesics” to the international consuming public. Complainant has made extensive use of its CELEBREX mark by using it in connection with the sale of anti-arthritic medicine on an international scale. Complainant’s CELEBREX drug was referred to in an article for The New York Times as a “blockbuster arthritis drug,” and Forbes Magazine featured Complainant’s CELEBREX drug, referring to it as “the $2 billion (sales) crown jewel in Pharmacia’s new portfolio.”
Due to Complainant’s extensive marketing and advertising resources expended on the CELEBREX mark, it has earned (1) worldwide notoriety for the purpose of protection under the Paris Convention, and (2) fame in the U.S. for the purpose of protection under the Trademark Dilution Act.
Respondent registered the <buy-celebrex.com> domain name on May 26, 2002. Complainant’s Submission fails to indicate what the specific use of the subject domain name involves, if any.
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 its mark in numerous countries with the designated authorized authorities, and subsequent continuous use of the mark in relation to its pharmaceutical sales.
Respondent’s <buy-celebrex.com> domain name is confusingly similar to Complainant’s CELEBREX mark. Circumstances indicate that Respondent has engaged in cyber-squatting, and went to great lengths to ensure that the subject domain name was confusingly similar to Complainant’s CELEBREX mark in sound and appearance. Respondent’s domain name incorporates Complainant’s CELEBREX mark in its entirety, with the suggestive addition of “buy-.” Respondent’s registration of Complainant’s mark with a suggestive generic word fails to create a distinct and separate mark, thereby succumbing to Policy ¶ 4(a)(i)’s confusingly similar analysis. 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).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
In not submitting a Response in this proceeding, Respondent has failed to contest Complainant’s averments. Therefore, all reasonable presumptions shall be resolved in favor of Complainant. Also, Respondent has failed to advance circumstances that could persuade the Panel to find in its favor. 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”); 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); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).
Complainant asserts that Respondent “has made no lawful use of the Offending Domain.” Respondent’s specific use of the domain name remains undiscovered. However, due to the obvious offending nature of Respondent’s domain name and Complainant’s unrefuted assertions, in this particular instance, knowledge of Respondent’s particular use of the domain name is not required. Any use of the subject domain name, which contains Complainant’s fanciful CELEBREX mark, would constitute opportunistic use by Respondent. In the event that Respondent seeks to use or develop the <buy-celebrex.com> domain name, it would be infringing on Complainant’s CELEBREX mark. See Paws, Inc. v. Odie, FA 96206 (Nat. Arb. Forum Jan. 8, 2001) ("Given the uniqueness and the extreme international popularity of the [ODIE] mark, the Respondent knew or should have known that registering the domain name in question would infringe upon the Complainant's goodwill"); see also Yahoo! Inc. v. Ashby, D2000-0241 (WIPO June 14, 2000) (finding that the fame of the YAHOO! mark negated any plausible explanation for Respondent’s registration of the <yahooventures.com> domain name).
Furthermore, although an inadequate amount of time has elapsed since Respondent registered the subject domain name for the Panel to find passive holding, Respondent has the obligation of proffering a purpose or use for the domain name in response to Complainant’s allegations. Complainant asserts that “no lawful use” of the domain name has been made, and Respondent has failed to offer a rebuttal discrediting those allegations. Thus, Respondent has failed in demonstrating rights or legitimate interests in the <buy-celebrex.com> domain name pursuant to Policy ¶¶ 4(c)(i) and (iii). See Ziegenfelder Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14, 2000) (drawing two inferences based on Respondent’s failure to respond: (1) that Respondent does not deny the facts asserted by Complainant, and (2) Respondent does not deny conclusions which Complainant asserts can be drawn from the facts); see also Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where Respondent failed to submit a Response to the Complaint and had made no use of the domain name in question); see also Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (finding that “merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy”).
There is no information or evidence before this Panel that would indicate Respondent has a legitimate connection to the <buy-celebrex.com> domain name. Respondent’s opportunistic motivations and Complainant’s fame suggest that Respondent is not commonly known by the confusingly similar domain name under 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 Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The criteria listed in Paragraph 4(b) of the Policy represent a non-exhaustive listing of bad faith circumstances. When determining whether Respondent registered the <buy-celebrex.com> domain name in bad faith, it is proper for the Panel to consider the totality of circumstances surrounding the registration, and dispute in general. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“the examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive”); 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”).
Overwhelming circumstances indicate that Respondent was at least constructively aware of Complainant’s CELEBREX mark prior to seeking registration of the <buy-celebrex.com> domain name. The nature of Respondent’s domain name itself indicates that Respondent eventually seeks to benefit from the advertising, fame and goodwill associated with Complainant’s CELEBREX product. Complainant has also secured a CELEBREX registration in Sweden, Respondent’s place of domicile. Respondent’s subsequent registration of the infringing domain name, despite knowledge of Complainant’s preexisting rights in the CELEBREX mark, constitutes bad faith registration under Policy ¶ 4(a)(iii). See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); see also 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 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).
In its “Bad Faith Use” Policy ¶ 4(a)(iii) argument, Complainant asserts that Respondent has exhibited bad faith use of the domain name in question because “Respondent has registered the Offending Domain primarily for the purpose of disrupting the business of a Pharmacia, a competitor.” However, this statement is not in congruence with Complainant’s earlier statements that suggest Respondent has not been using the subject domain name for any purpose, be it lawful or not. Furthermore, Complainant failed to assert what business or industry Respondent was involved in. Complainant’s mere assertions, if their conclusions are not apparent to the Panel, need evidentiary support and must have internal validity.
Given the circumstances, it is evident that Respondent opportunistically registered the infringing domain name, intending to eventually profit from Complainant’s efforts of developing and advertising its mark. There is no legitimate purpose that Respondent could use the <buy-celebrex.com> domain name in conjunction with. Respondent’s intentions of diverting Complainant’s interested consumers to its infringing domain name and connected website are clear; thus, Respondent’s actions evidence bad faith use pursuant to Policy ¶ 4(b)(iv). Respondent’s second-level domain name is suggestively profit-driven, and presumably, Respondent will commercially benefit from its use. See Phat Fashions v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even though Respondent has not used the domain name because “It makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.
Accordingly, it Ordered that the <buy-celebrex.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: September 3, 2002
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