G.D. Searle & Co. v. Javier Benavides a/k/a None
Claim Number: FA0207000117024
Complainant is G. D. Searle & Co., Peapack, NJ (“Complainant”) represented by Paul D. McGrady, of Ladas & Parry. Respondent is Javier Benavides a/k/a None, Miami, FL (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <1celebrex.us>, registered with eNom, 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.
Hon. Ralph Yachnin as Panelist.
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 29, 2002, eNom, Inc. confirmed by e-mail to the Forum that the domain name <1celebrex.us> is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD 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 in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
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 5, 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the 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.
A. Complainant makes the following assertions:
1. Respondent’s <1celebrex.us> domain name is confusingly similar to Complainant’s registered CELEBREX mark.
2. Respondent fails to demonstrate rights or legitimate interests in the <1celebrex.us> domain name.
3. Respondent registered the <1celebrex.us> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is the owner of numerous worldwide registrations reflecting its CELEBREX mark. In fact, Complainant has filed applications to register the CELEBREX mark in more than 112 countries. Complainant holds, inter alia, the following trademark registrations incorporating its CELEBREX identifier: Albania Reg. No. 7,907 registered Feb. 7, 2000; Canadian Reg. No. 527,792 registered May 16, 2000; Russian Federation Reg. No. 177,160 registered July 14, 1999; and, U.S. Patent and Trademark (“USPTO”) Reg. No. 2,307,888 registered on Jan. 11, 2000 and listed on the Principal Register.
Complainant’s CELEBREX mark is used to market “pharmaceutical products in the nature of anti-inflammatory analgesics.” Complainant’s CELEBREX mark and corresponding drug have received extensive media attention that began as early as December of 1998. Complainant has extensively used its CELEBREX mark by utilizing it in connection with the sale of anti-arthritic medicine on a global scale. Complainant’s CELEBREX mark and drug have been referred to in numerous publications, including a New York Times February 13, 2001 article referring to Complainant’s product as a “blockbuster arthritis drug,” and a Forbes magazine article that referred to the new drug as “the $2 billion crown (sales) crown jewel in Pharmacia’s [Complainant’s] new portfolio.”
Complainant’s CELEBREX mark identifies to the public the goods offered under the mark. Due to the extensive marketing and advertising expended on the promotion of the CELEBREX mark it has become famous and distinct, and is a significant source identifier for Complainant and its product.
Respondent registered the <1celebrex.us> domain name on June 13, 2002 and has yet to articulate a purpose for the domain name or develop a connected website.
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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Complainant has established rights in the CELEBREX mark by registering the fanciful mark worldwide, while continually using the mark in connection with its corresponding drug.
Respondent’s <1celebrex.us> domain name is confusingly similar to Complainant’s CELEBREX mark. Relevant points for comparing a domain name with a mark are appearance, sound and meaning or connotation. Respondent’s domain name incorporates Complainant’s mark in its entirety, with the inconsequential addition of the number “1.” The dominant portion of Respondent’s second-level domain is Complainant’s CELEBREX mark. Complainant’s CELEBREX mark reflects a fanciful creation denoting Complainant’s products. Respondent’s intention of registering a confusingly similar domain name that infringes on Complainant’s CELEBREX mark is evident. See Oki Data Americas, Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001) (“the fact that a domain name incorporates a Complainant’s registered mark is sufficient to establish identical or confusing similarity for purposes of the Policy despite the addition of other words to such marks”); see also Am. Online Inc. v. Chinese ICQ Network, D2000-0808 (WIPO Aug. 31, 2000) (finding that the addition of the numeral 4 in the domain name <4icq.com> does nothing to deflect the impact on the viewer of the mark ICQ and is therefore confusingly similar).
Accordingly, the Panel finds Policy ¶ 4(a)(i) has been satisfied.
As stated, Respondent did not submit a Response in this proceeding; thereby failing to assert any circumstances that would demonstrate it had rights or legitimate interests in the domain name. Because Respondent did not submit a Response, all of Complainant’s reasonable inferences and averments are taken as true. Therefore, Respondent’s failure to rebut Complainant’s prima facie case implies that Respondent does not have any rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii). See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate any rights or 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).
Complainant’s investigation revealed that Respondent does not have any pending trademark applications or registrations for the <1celebrex.us> domain name, or any variation thereof. Also, there is no evidence that would indicate Respondent is commonly known by the <1celebrex.us> domain name or the “1CELEBREX” second-level domain. Complainant’s international presence, reputation and numerous registrations and pending applications for the CELEBREX mark create the presumption that Respondent cannot demonstrate rights in the subject domain name under Policy ¶¶ 4(c)(i) or (iii). As stated in Complainant’s Submission, Complainant is the senior user of the CELEBREX mark, and there is no evidence that indicates it gave Respondent permission to use the mark for any purpose. 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 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 CDW Computer Ctrs., Inc. v. Joy Co. FA 114463 (Nat. Arb. Forum July 25, 2002) (finding that, because Respondent did not come forward with a Response, the Panel could infer that Respondent had no trademark or service marks identical to <cdw.us> and therefore had no rights or legitimate interests in the domain name).
Respondent has not made any use of the infringing domain name. However, the circumstances surrounding Respondent’s registration of the <1celebrex.us> domain name suggest that Respondent is engaging in the practice of typosquatting. Respondent is apparently attempting to benefit from a perceived affiliation with Complainant’s famous CELEBREX mark. Although Respondent has yet to manufacture a purpose for the infringing domain name, the Panel cannot conceive of a use that would not significantly infringe on Complainant’s mark. Therefore, Respondent’s use of the subject domain name is not in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(ii), nor is it a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iv). See Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that Respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before notice of the domain name dispute, the domain name did not resolve to a website, and Respondent is not commonly known by the domain name); see also Valigene Corp. v. MIC, FA 94860 (Nat. Arb. Forum Aug. 1, 2000) (finding no rights or legitimate interest in the non-use of a domain name that was a misspelling of a famous mark); see also Strojirny v. Rautiainen, D2000-1394 (WIPO Dec. 20, 2000) (finding that Respondent has no rights or legitimate interests in the domain name where Respondent is not commonly known by the distinct ADAST mark and has made no use of the domain name in question).
Furthermore, merely registering the domain name is not enough to demonstrate rights or legitimate interests in the dispute domain name under Policy ¶ 4(a)(ii). Complainant’s presentation of a prima facie case transfers the burden to Respondent. See 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”).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Under the U. S. Department of Commerce’s usTLD Dispute Resolution Policy, Complainant must establish whether Respondent registered the name in bad faith or used the domain name in bad faith (emphasis added). See usTLD Policy ¶ 4(a)(iii).
In the current situation, Complainant has sought trademark protection in more than 112 countries around the world, including Respondent’s place of domicile, the U.S. The circumstances surrounding Respondent’s registration of the confusingly similar domain name indicate that Respondent was or should have been aware of Complainant’s rights in the CELEBREX mark. Not only does the CELEBREX mark represent a fanciful mark, but is synonymous with Complainant’s arthritic pain-relieving drug. Complainant’s CELEBREX mark is also listed on the Principal Register of the USTPO, therefore, Respondent is presumed to have knowledge of Complainant’s rights. Respondent’s subsequent registration of the infringing <1celebrex.us> domain name, despite knowledge of Complainant’s rights in the mark, signifies bad faith registration under Policy ¶ 4(a)(iii). When considering the totality of circumstances, it is evident that Respondent is a typosquatter attempting to benefit from the fame associated with Complainant’s established mark. 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); 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”).
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 relief shall be hereby GRANTED.
Accordingly, it is Ordered that the <1celebrex.us> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: September 6, 2002
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