G.D. Searle & Co. v. SD Domains a/k/a
Steve Dyke
Claim Number: FA0208000118276
PARTIES
Complainant
is G.D. Searle & Co., Skokie,
IL, USA (“Complainant”) represented by Paul
D. McGrady, of Ladas & Parry. Respondent is SD Domains a/k/a Steve Dyke, Hawkhurst, Kent, GREAT
BRITAIN (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <viagra-xenical-propecia-celebrex.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.
Tyrus
R. Atkinson, Jr., as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on August 15, 2002; the Forum received a hard copy of the
Complaint on August 19, 2002.
On
August 16, 2002, Enom confirmed by e-mail to the Forum that the domain name <viagra-xenical-propecia-celebrex.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
August 19, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of September
9, 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-xenical-propecia-celebrex.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 27, 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.
Respondent’s
<viagra-xenical-propecia-celebrex.com>
domain name incorpates numerous
parties’ marks and interests. More specifically, the following drug companies
are implicated by way of Respondent’s domain name: Pfizer (VIAGRA), Roche
(XENICAL), Merck (PROPECIA), and Pharmacia (Complainant) (CELEBREX). Due to
practical difficulties inherent in the UDRP, cooperative complaint initiation
is unlikely and unfeasible. Because Complainant initiated this dispute prior to
any other interested party it has the opportunity to acquire the domain name,
while seeking to protect its CELEBREX mark from an infringing use. However, due
to the procedural complexities presented by the current dispute the following
issue must be addressed: Complainant seeks acquisition of the subject domain
name in good faith, and will forfeit its interest in the contested domain name
if the other represented marks are infringed upon following a transfer of the
domain name registration to Complainant.
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 <viagra-xenical-propecia-celebrex.com> domain name is
confusingly similar to Complainant’s CELEBREX mark.
2. Respondent does not have any rights or
legitimate interests in the <viagra-xenical-propecia-celebrex.com>
domain name.
3. Respondent registered and used the <viagra-xenical-propecia-celebrex.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
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. Significantly, Complainant also obtained
trademark registration for its CELEBREX mark with the European Community on
February 28, 2000 (Reg. No. 825,372). Complainant has 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>.
Because of Complainant’s extensive
advertising and marketing campaign, its CELEBREX mark has acquired significant
source identity as representing Complainant’s goods and products.
Respondent registered the <viagra-xenical-propecia-celebrex.com>
domain name on February 13, 2002. Complainant’s Submission indicates Respondent
is using the subject domain name to resolve to a website that advertises
various pharmaceuticals and solicits orders for drugs. Complainant has not
authorized or licensed Respondent to use the CELEBREX mark in any fashion.
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 Respondent
is identical or confusingly similar to a trademark or service mark in which
Complainant has rights; and
(2)
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 registering, or applying for registration, of the mark in 112
countries.
Respondent’s <viagra-xenical-propecia-celebrex.com> domain name is confusingly similar to
Complainant’s CELEBREX mark. Irregardless of the fact that Respondent’s domain
name incorporates the marks of Complainant’s competitors, Complainant’s
CELEBREX mark is represented in its entirety without any deviation or variation
thereof. Complainant has a significant interest in protecting its fanciful mark
whether standing alone or incorporated into a string of industry-related marks.
Respondent’s use of other drug-related marks in the domain name increases the
liklihood that Internet users will be confused when confronted with
Respondent’s website and products. Previous Panels have determined that the
addition of other industry-related words to a famous mark fails to defeat a claim
of confusing similarity under Policy ¶ 4(a)(i). Because of Respondent’s use of
Complainant’s mark in the subject domain name, a proportion of Internet users
will assuredly believe some affiliation or endorsement exists between
Complaniant and Respondent’s infringing use of the domain name. See G.D.
Searle & Co. v. Fred Pelham, FA 117911 (Nat. Arb. Forum Sept. 19, 2002)
(finding that the addition of other drug names does not create a distinct mark
capable of overcoming a claim of confusing similarity, “it merely creates a
domain name with severe potential to confuse Internet users as to the source,
sponsorship and affiliation of the domain”); 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”).
Accordingly, the Panel finds that Policy
¶ 4(a)(i) has been satisfied.
Despite Complainant’s Submission and
allegations that Respondent does not have any rights or legitimate interests in
the <viagra-xenical-propecia-celebrex.com>
domain name, Respondent has not
submitted a Response. Because Respondent failed to contest Complainant’s
averments it is proper for the Panel to accept all reasonable assertions of
Complainant as true. See
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).
Furthermore,
Respondent’s failure to produce any set of circumstances or facts that would
establish rights or legitimate interests in the domain name implies that there
are none. The Panel is allowed to interpret Respondent’s failure to submit a
Response as an indication that Respondent lacks the requisite rights and
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).
Complainant has asserted uncontested
circumstances that establish Respondent’s infringing use of the domain name. As
stated, Respondent’s domain name currently resolves to a website that sells
Complainant’s CELEBREX drugs. Disregarding the quality control issues that
Respondent’s unauthorized sale of Complainant’s drugs raise; Respondent is
opportunistically trading on the goodwill associated with Complainant’s
CELEBREX mark. Respondent’s diversion is accomplished by ensnaring unsuspecting
Internet users to its website by way of its confusingly similar domain name.
Such use does not constitute a bona fide offering of goods or services under
Policy ¶ 4(c)(i). Furthermore, because Respondent presumably profits from the
sale of the pharmaceuticals offered on its website, Respondent’s use of
Complainant’s mark in its domain name is not a legitimate noncommercial or fair
use under Policy ¶ 4(c)(iii). See G.D. Searle & Co. v. Mahoney, FA
112559 (Nat. Arb. Forum June 12, 2002) (finding Respondent’s use of the
disputed domain name to solicit pharmaceutical orders without a license or
authorization from Complainant does not constitute a bona fide offering of
goods or services under Policy ¶ 4(c)(i)); see also 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).
There is no evidence before the Panel
that would suggest a legitimate connection exists between Respondent and the
complex second-level domain reflected in the <viagra-xenical-propecia-celebrex.com> domain name. Therefore, Respondent is not
commonly known by the domain name pursuant to Policy ¶ 4(c)(ii). Furthermore,
Respondent is not licensed or authorized by Complainant to use the coined
CELEBREX mark or any variation thereof. 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).
Accordingly, the Panel finds that Policy
¶ 4(a)(ii) has been satisfied.
Respondent’s bad faith registration is
evidenced by its intentional registration of famous marks in a domain name.
Complainant has secured a trademark registration with the European Community,
thereby incorporating Respondent’s Great Britain domicile. As stated by the
European Union’s Office for Harmonization in the Internal Market, “A CTM
[Community trademark] application and a CTM are valid in the European Community
as a whole. The application and the ensuing registration extend automatically
to all 15 Member States of the European Community indivisibly.” Additionally,
circumstances indicate Respondent intentionally chose famous marks that
represent notable pharmaceutical companies, such as Complainant, Pfizer, Roche,
and Merck. Respondent’s registration of a domain name, despite preexisting
knowledge of others’ rights, represents bad faith registration under Policy ¶
4(a)(iii). See Pfizer, Inc. v. Papol Suger, D2002-0187 (WIPO Apr. 24,
2002) (finding that because the link between Complainant’s mark and the content
advertised on Respondent’s website was obvious, Respondent “must have known
about the Complainant’s mark when it registered the subject domain name”); 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").
Respondent’s infringing domain name
resolves to a commercial website that sells Complainant’s pharmaceutical
products. Respondent’s infringing use of the subject domain name represents an
opportunistic attempt to commercially benefit from the fame and reputation of
Complainant’s CELEBREX mark. Thus, Respondent’s diversionary use of the mark is
a classic example of bad faith use under 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 Singapore
Airlines Ltd v. P & P Servicios de Communicacion S.L., D2000-0643 (WIPO Aug. 29, 2000) (“The domain name
‘singaporeairlines.com’ is so obviously connected with a well-known airline
that its very registration and use by someone with no connection to the airline
suggests opportunistic bad faith.
Indeed, it is hard to imagine a more blatant exercise in
‘cybersquatting’”).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
DECISION
Having satisfied all the elements
required under ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.
Accordingly, it is Ordered that the <viagra-xenical-propecia-celebrex.com>
domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: October 11, 2002.
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