G.D. Searle & Co. v. Javier Benavides
a/k/a None
Claim Number: FA0207000117024
PARTIES
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.
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 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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
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.
FINDINGS
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.
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 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.
DECISION
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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