G.D. Searle & Co. v. Javier Benavides
Claim Number: FA0207000117023
PARTIES
Complainant
is G.D. Searle & Co., Skokie, IL
(“Complainant”) represented by Paul D.
McGrady, of Ladas & Parry. Respondent is Javier Benavides, Miami, FL (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <1celebrex.com>,
registered with Enom.
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.
Hon.
Ralph Yachnin as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on July 23, 2002; the Forum received a hard copy of the
Complaint on July 24, 2002.
On
July 30, 2002, Enom confirmed by e-mail to the Forum that the domain name <1celebrex.com> is registered
with Enom and that Respondent is the current registrant of the name. Enom has verified that Respondent is bound
by the Enom 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 30, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of August 19,
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@1celebrex.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
September 3, 2002, pursuant to Complainant’s request to have the dispute
decided by a single-member Panel, the Forum appointed Hon. Ralph Yachnin 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
<1celebrex.com> domain name is confusingly similar to
Complainant's CELEBREX mark.
Respondent
has no rights or legitimate interests in the disputed domain name.
Respondent
registered and used the disputed domain name in bad faith.
B.
Respondent
Respondent
failed to submit a Response.
FINDINGS
Complainant is the owner of several
trademark applications and registrations for CELEBREX with the United States
Patent and Trademark Office and throughout the world. Complainant’s trademark registrations in the U.S. include
Registration Numbers 2,321,622 and 2,307,888.
Complainant’s CELEBREX mark represents “pharmaceutical products in the
nature of anti-inflammatory analgesics,” to the worldwide consuming
public. Complainant uses the CELEBREX
mark in connection with the sale of anti-arthritic medicine on a global
scale. Due to extensive marketing on
the part of Complainant the CELEBREX mark has earned worldwide notoriety and
fame.
Respondent registered the disputed domain
name <1celebrex.com> on June 12, 2002. Respondent is not licensed by Complainant to use the CELEBREX
mark. There is no website at the
disputed domain name.
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.
Identical and/or Confusingly Similar
Complainant has established that it has
rights in the CELEBREX mark through continuous and extensive use as well as
registration with the United States Patent and Trademark Office. Respondent’s <1celebrex.com>
domain name is confusingly similar to Complainant’s CELEBREX mark because it
incorporates Complainant’s entire mark and merely adds the numeral “1” to the
beginning. The addition of a letter or
number to a well-known mark does not create a distinct mark capable of
overcoming a claim of confusing similarity for the purposes of a Policy ¶
4(a)(i) analysis. See Reuters Ltd. v. Global Net 2000, Inc.,
D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by
only one letter from a trademark has a greater tendency to be confusingly
similar to the trademark where the trademark is highly distinctive); see
also Am. Online, Inc. v. Fu,
D2000-1374 (WIPO Dec. 11, 2000) (finding that adding the suffixes
"502" and "520" to the ICQ trademark does little to reduce
the potential for confusion).
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Rights or Legitimate Interests
Respondent has failed to come forward
with a Response and therefore it is presumed that Respondent has no rights or
legitimate interests in the disputed 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, when Respondent fails to
submit a Response the Panel is permitted to make all inferences in favor of
Complainant. 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”).
Based on the fame of Complainant’s mark,
any use by Respondent of the disputed domain name is likely to cause Internet
user confusion as to the source, sponsorship and affiliation of the <1celebrex.com>
domain name. Therefore Respondent’s
registration and passive holding of a domain name that is confusingly similar
to Respondent’s well-known mark is an opportunistic attempt to benefit from
Complainant’s goodwill and not considered to be a bona fide offering of goods
or services pursuant to Policy ¶ 4(c)(i), or a legitimate, noncommercial or
fair use pursuant to Policy ¶ 4(c)(iii).
See Toronto-Dominion Bank v.
Karpachev, 188 F.Supp.2d
110, 114 (D.
Mass. 2002) (finding that, because the Respondent's sole purpose in selecting
the domain names was to cause confusion with the Complainant's website and
marks, it's use of the names was not in connection with the offering of goods
or services or any other fair use); see also Household Int’l, Inc. v.
Cyntom Enter., FA 95784
(Nat. Arb. Forum Nov. 7, 2000) (inferring that Respondent registered the domain
name <householdbank.com>, which incorporates Complainants HOUSEHOLD BANK
mark, with hopes of attracting Complainant’s customers and thus finding no
rights or legitimate interests).
Respondent has not come forward with any
evidence, nor is there any evidence on record that establishes that Respondent
is commonly known as 1CELEBREX or <1celebrex.com>. Therefore, Respondent has not established
that it has any rights or legitimate interests in the disputed domain name
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
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).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Registration and Use in Bad Faith
Based on the fact that Complainant’s mark
is registered on the Principal Register of the United States Patent and
Trademark Office as well as its notoriety throughout the world, it can be
inferred that Respondent had constructive and actual notice of Complainant’s
rights in the mark when it registered the disputed domain name. Registration of a domain name, confusingly
similar to Complainant’s mark, despite knowledge of Complainant’s rights is
evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii). See 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 world-wide prominence of the mark and thus Respondent
registered the domain name in bad faith); see also 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").
The <1celebrex.com> domain
name is confusingly similar to Complainant's mark and the Internet user will
likely believe that there is an affiliation between Respondent and
Complainant. Registration of the
confusingly similar <1celebrex.com> domain name is evidence of bad
faith use pursuant to Policy ¶ 4(b)(iv).
See Sony Kabushiki Kaisha
v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that bad faith
registration and use where it is “inconceivable that the respondent could make
any active use of the disputed domain names without creating a false impression
of association with the Complainant”); see also 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”).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
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 <1celebrex.com> be transferred from Respondent
to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: September 5, 2002