G.D. Searle & Co. v. PNP Management
Claim Number: FA0208000117914
PARTIES
Complainant
is G.D. Searle & Co., Skokie, IL
(“Complainant”) represented by Paul D.
McGrady, of Ladas & Parry. Respondent is PNP Management, Pasadena, CA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <viagra-celebrex-xenical-cipro.com>,
registered with BulkRegister.
PANEL
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known conflict in serving as
Panelist in this proceeding.
Tyrus
R. Atkinson, Jr., as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on August 8, 2002; the Forum received a hard copy of the
Complaint on August 9, 2002.
On
August 9, 2002, BulkRegister confirmed by e-mail to the Forum that the domain
name <viagra-celebrex-xenical-cipro.com>
is registered with BulkRegister and that Respondent is the current registrant
of the name. BulkRegister has verified
that Respondent is bound by the BulkRegister 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
August 12, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of September
3, 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@viagra-celebrex-xenical-cipro.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 20, 2002, pursuant to Complainant’s request to have the dispute
decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr.,
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 makes the following
averments:
1.
Respondent’s
<viagra-celebrex-xenical-cipro.com> domain name is confusingly similar to
Complainant’s CELEBREX mark.
2.
Respondent does not have any rights or legitimate interests in the <viagra-celebrex-xenical-cipro.com>
domain name.
3.
Respondent reigstered and used the <viagra-celebrex-xenical-cipro.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
FINDINGS
Complainant is the owner of numerous
trademark registrations and applications that reflect the CELEBREX mark,
including U.S. Patent and Trademark Office (“USPTO”) Reg. No. 2,307,888 registered on January 11, 2000 and listed on
the Principal Register. Complainant has filed applications and registrations in
an attempt to protect its CELEBREX mark in more than 112 countries. In general,
Complainant’s CELEBREX mark is used to market “pharmaceutical products in the
nature of anti-inflammatory analgesics.[1]”
Complainant’s CELEBREX mark identifies
its internationally known pain-relieving drugs to the consuming public.
Complainant began filing applications for registrations of the CELEBREX mark
around February of 1998, and its celebrated drug began receiving media
attention in December of 1998.
Complainant has made extensive use of its
CELEBREX mark by using it in connection with the sale of its anti-arthritic
medicine worldwide. Due to the extensive marketing and advertising expended on
the promotion of the CELEBREX mark, CELEBREX has earned fame in the U.S. and
abroad. For example, Complainant’s CELEBREX mark and corresponding
pharmaceutical was referred to in a The New York Times article as a
“blockbuster arthritis drug,” and has also received publicity from Forbes
magazine.
Respondent registered the <viagra-celebrex-xenical-cipro.com>
domain name on September 18, 2000. Complainant’s Submission indicates that
Respondent’s domain name resolves to a website that advertises drugs and
attempts to solicit orders from visiting Internet users. Respondent is not
licensed nor is there any evidence supporting a finding that Respondent has any
quality controls in place to distribute Complainant’s CELEBREX product.
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.
Complainant has established rights in the
CELEBREX mark by creating the fanciful term in connection with its
pharmaceutical business, and seeking subsequent registration of the mark with
the USPTO and 111 other international trademark authorities. Complainant has
also subsequently extensively used the CELEBREX mark in commerce.
Respondent’s <viagra-celebrex-xenical-cipro.com> domain name is
confusingly similar to Complainant’s CELEBREX mark. Although Respondent’s
domain name includes various marks, which represent competitor’s products, it
still incorporates Complainant’s CELEBREX mark in its entirety. Respondent’s
inclusion of numerous other drug-related marks only increases the likelihood of
confusion that will result from use of the domain name, especially since
Respondent operates in a similar field as Complainant. 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 Complainant combined with a generic word
or term); see also Slep-Tone
Entm't Corp. v. Sounds Choice Disc Jockeys, Inc., FA 93636 (Nat. Arb. Forum
Mar. 13, 2000) (stating that “likelihood of confusion is further increased by
the fact that the Respondent and [Complainant] operate within the same
industry”); see also G.D. Searle & Co. v. Christensen, FA 100647 (finding <celebrexclaritinpharmacy.com>
to be confusingly similar to Complainant's CELEBREX mark).
Accordingly, the Panel finds that Policy
¶ 4(a)(i) has been satisfied.
The Panel has determined that
Complainant’s Submission constitutes a prima facie case for the purpose
of this proceeding. Because Complainant’s allegations and evidence are
uncontested, it is proper for the Panel to accept all of Complainant’s
reasonable assertions and inferences as true. 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”).
Furthermore, Respondent did not submit a
Response in this proceeding, thereby failing to propose any set of facts or
circumstances that would indicate it has rights or legitimate interests in the <viagra-celebrex-xenical-cipro.com>
domain name under Policy ¶ 4(a)(ii). See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc.,
AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests
where no such right or interest was immediately apparent to the Panel and Respondent
did not come forward to suggest any right or interest it may have possessed); see
also 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).
Complainant has made uncontested
assertions that Respondent’s disputed domain name resolves to a website that is
primarily used for soliciting pharmaceutical orders. Respondent utilizes
Complainant’s CELEBREX mark in solicitations without the requisite license or
quality controls in place. All the circumstances surrounding Respondent’s
registration and use of Complainant’s CELEBREX mark in the infringing domain
name indicate that Respondent opportunistically registered Complainant’s famous
mark in order to capitalize from a perceived affiliation with Complainant.
Respondent’s exploitation of Complainant’s CELEBREX mark does not constitute a
bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).
Furthermore, because Respondent presumably benefits from its pharmaceutical
business and the diverted Internet interest derived from using Complainant’s
mark, Respondent is not making a
legitimate noncommercial or fair use of the domain name under Policy ¶
4(c)(iii). See North Coast Med.,
Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no
bona fide use where Respondent used the domain name to divert Internet users to
its competing website); 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’s asserted WHOIS name, PNP
Management, has no apparent affiliation or connection with Complainant’s
CELEBREX mark or the <viagra-celebrex-xenical-cipro.com>
domain name. There is no evidence
before the Panel that would suggest Respondent is commonly known by the domain
name, or the confusing second-level domain; thus, Respondent fails to establish
rights in the domain name under 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 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).
Accordingly, the Panel finds that Policy
¶ 4(a)(ii) has been satisfied.
The circumstances surrounding
Respondent’s registration of the <viagra-celebrex-xenical-cipro.com>
domain name suggest that Respondent
had knowledge of Complainant’s mark prior to seeking registration of the
infringing domain name. Complainant’s CELEBREX mark represents a fanicful mark,
and Complainant has exclusive control of the licensing and authorized use of
its mark. Furthermore, Complainant’s CELEBREX mark is listed on the Principal
Register of the USPTO, which precendent and policy has determined constitutes
constructive notice of the registrant’s rights in the mark. Respondent’s place
of domicile is listed as California, thereby subjecting Respondent to the
USPTO’s jurisdiction. Respondent’s intentional registration of Complainant’s mark,
despite knowledge of the infringing nature of its domain name, constitues bad
faith registration under Policy ¶ 4(a)(iii). See 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 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 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").
As stated,
Respondent’s infringing domain name resolves to a website that solicits
pharmaceutical orders for various drugs. Respondent opportunistically
registered Complainant’s CELEBREX mark, as well as other famous marks, in its
domain name in order to benefit from the false perception that its Internet
services were somehow related to Complainant, or Roche, Bayer, or Pfizer. By
using the infringing domain name, Complainant has intentionally attempted to
attract, for commercial gain, Internet users to its website by creating a
likelihood of confusion; thus, Respondent’s domain name has been registered and
used in bad faith pursuant to Policy ¶ 4(b)(iv).
See Drs. Foster & Smith, Inc.
v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where
Respondent directed Internet users seeking Complainant’s site to its own
website for commercial gain); 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).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
DECISION
Having established all three elements
required under ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.
Accordingly, it is Ordered that the <viagra-celebrex-xenical-cipro.com>
domain name by TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: October 4, 2002.
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