G.D. Searle & Co. v. Optimized
Marketing Services
Claim Number: FA0208000118168
PARTIES
Complainant
is G.D. Searle & Co., Skokie, IL
(“Complainant”) represented by Paul D.
McGrady, of Ladas & Parry. Respondent is Optimized Marketing Services, Glendale, CA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <viagra-propecia-celebrex-xenical.com>,
registered with Bulkregister.
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 August 9, 2002; the Forum received a hard copy of the
Complaint on August 12, 2002.
On
August 12, 2002, Bulkregister confirmed by e-mail to the Forum that the domain
name <viagra-propecia-celebrex-xenical.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 13, 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-propecia-celebrex-xenical.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 18, 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
<viagra-propecia-celebrex-xenical.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
did not submit a Response.
FINDINGS
Complainant’s CELEBREX mark is registered
on the Principal Register of the United States Patent and Trademark Office as
Registration Number 2,321,622.
Complainant has also registered its CELEBREX mark in 112 countries
around the world, and has promoted the mark and its products on a global scale. Complainant’s mark represents “pharmaceutical
products in the nature of anti-inflammatory analgesics.” Due to the extensive marketing and
advertising engaged in by Complainant in order to promote its CELEBREX mark,
the mark has earned worldwide fame. The
New York Times referred to Complainant’s CELEBREX product as a “blockbuster
arthritis drug,” and Forbes magazine called CELEBREX “the $2 billion
(sales) crown jewel in Pharmacia’s new portfolio.” Complainant avidly advertises its mark on the Internet and
operates a website at <celebrex.com>.
Respondent registered the disputed domain
name <viagra-propecia-celebrex-xenical.com>
on September 18, 2000. Respondent uses
the disputed domain name in order to solicit drug orders from individuals. Respondent does not have a license from
Complainant to use the CELEBREX mark.
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 registration and continuous use. Respondent’s <viagra-propecia-celebrex-xenical.com> domain name is confusingly similar to
Complainant’s mark because it incorporates Complainant’s entire mark and merely
adds the names of other well-known drugs with hyphens. The addition of the names of other drugs does
not create a distinct mark capable of overcoming a claim of confusing
similarity. The addition of other drug
brand names actually contributes to the confusion of Internet users as to the
source, sponsorship and affiliation of the domain and, therefore, does not
overcome a Policy ¶ 4(a)(i) confusingly similar analysis. See G.D. Searle &
Co. v. Christensen, FA 100647 (Nat. Arb. Forum Dec. 4, 2001) (finding
<celebrexclaritinpharmacy.com> to be confusingly similar to Complainant's
CELEBREX mark); see also Perot
Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding
that, given the similarity of Complainant’s marks with the domain name,
consumers will presume the domain name is affiliated with Complainant;
Respondent is attracting Internet users to a website, for commercial gain, by
creating a likelihood of confusion with Complainant’s mark as to the source,
sponsorship, or endorsement of Respondent’s website); see also Caterpillar Inc. v. Quin, D2000-0314
(WIPO June 12, 2000) (finding that the disputed domain names <caterpillarparts.com>
and <caterpillarspares.com> were confusingly similar to the registered
trademarks CATERPILLAR and CATERPILLER DESIGN because “the idea suggested by
the disputed domain names and the trademarks was that the goods and services offered
in association with the domain name are manufactured by or sold by Complainant
or one of Complainant’s approved distributors. The disputed trademarks contain
one distinct component, the word Caterpillar”).
Furthermore, the use of hyphens between
the words contained in the domain name is irrelevant when determining whether
or not a domain name is confusingly similar.
Therefore, Respondent’s use of hyphens does not help create a distinct
mark capable of overcoming a claim of confusing similarity. See Teradyne Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000)
(finding that the “addition of a hyphen to the registered mark is an
insubstantial change. Both the mark and the domain name would be pronounced in
the identical fashion, by eliminating the hyphen").
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Rights or Legitimate Interests
Respondent has failed to come forward
with a Response. Therefore, the Panel
is permitted to make reasonable inferences in favor of Complainant and to
accept Complainant’s allegations as true. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000)
(finding that failing to respond allows a presumption that Complainant’s
allegations are true unless clearly contradicted by the evidence); see also
Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw
adverse inferences from Respondent’s failure to reply to the Complaint).
Moreover, based on Respondent’s failure
to respond, it is presumed that Respondent lacks rights and legitimate
interests in the disputed domain name. See
Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding
that once Complainant asserts that Respondent has no rights or legitimate
interests in respect of the domain, the burden shifts to Respondent to provide
credible evidence that substantiates its claim of rights and legitimate
interests in the domain name); 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).
Respondent is using the disputed domain
name in order to solicit drug sales from Internet users. Because the <viagra-propecia-celebrex-xenical.com> domain name is confusingly similar to
Complainant’s mark it can be inferred that Respondent is using Complainant’s
mark in order to attract Internet users interested in Complainant’s product to
Respondent’s website for Respondent’s commercial gain. This type of use is not considered to be in
connection with 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 Vapor Blast Mfg. Co. v. R & S Tech.,
Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s
commercial use of the domain name to confuse and divert Internet traffic is not
a legitimate use of the domain name); see also Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9,
2000) (finding no legitimate use when Respondent was diverting consumers to its
own website by using Complainant’s trademarks).
There is no evidence on record, and
Respondent has not come forward with any proof to establish that it is commonly
known as <viagra-propecia-celebrex-xenical.com>, or any of the words used within the dispute
domain name including CELEBREX.
Therefore, Respondent has not established that it has 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 internationally recognized and Respondent chose to include the CELEBREX mark
in the disputed domain name for the purpose of attracting customers, it can be
inferred that Respondent had knowledge of Complainant’s rights in the mark when
it registered the disputed domain name.
Registration of a domain name including a famous mark, despite knowledge
of Complainant’s rights in the mark, is evidence of bad faith registration
pursuant to 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 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).
Respondent is using Complainant’s
CELEBREX mark in the disputed domain name in order to attract Internet users
interested in Complainant’s products to Respondent’s website. Respondent is therefore commercially
benefiting from the use of Complainant’s mark which is evidence of bad faith
use pursuant to Policy ¶ 4(b)(iv). See State Fair of Texas v. Granbury.com, FA
95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where Respondent
registered the domain name <bigtex.net> to infringe on Complainant’s
goodwill and attract Internet users to Respondent’s website); see also Drs. Foster & Smith, Inc. v. Lalli,
FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the
Respondent directed Internet users seeking Complainant’s site to its own
website for commercial gain).
Furthermore, Respondent is using the
disputed domain name in order to attract Internet users looking for
Complainant’s products to Respondent’s website. If Respondent succeeds in luring an Internet user to <viagra-propecia-celebrex-xenical.com>, it also succeeds in preventing that
Internet user from reaching Complainant’s website located at
<celebrex.com> therefore disrupting Complainant’s business. This type of behavior is evidence of bad
faith registration and use pursuant to Policy ¶ 4(b)(iii). See Mission Kwa Sizabantu v. Rost, D2000-0279 (WIPO June 7,2000)
(defining “competitor” as "…one who acts in opposition to another and the
context does not imply or demand any restricted meaning such as commercial or
business competitor”); see also Southern
Exposure v. Southern Exposure, Inc., FA 94864
(Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by
attracting Internet users to a website that competes with Complainant’s
business).
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 <viagra-propecia-celebrex-xenical.com>
be transferred from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: September 19, 2002
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