G.D. Searle & Co. v. Paramount Marketing
Claim Number: FA0208000118307
Complainant is G.D. Searle & Co., Skokie, IL (“Complainant”) represented by Paul D. McGrady, of Ladas & Parry. Respondent is Paramount Marketing, Cincinnati, OH (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <viagra-xenical-propecia-meridia-bontril-phentermine-celebrex.com>, registered with Dotster, 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 August 15, 2002; the Forum received a hard copy of the Complaint on August 19, 2002.
On August 21, 2002, Dotster, Inc. confirmed by e-mail to the Forum that the domain name <viagra-xenical-propecia-meridia-bontril-phentermine-celebrex.com> is registered with Dotster, Inc. and that Respondent is the current registrant of the name. Dotster, Inc. has verified that Respondent is bound by the Dotster, Inc. 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 22, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 11, 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 firstname.lastname@example.org 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 26, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
The <viagra-xenical-propecia-meridia-bontril-phentermine-celebrex.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.
Respondent failed to submit a Response.
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 111 other countries throughout the world. Complainant’s mark represents “pharmaceutical products in the nature of anti-inflammatory analgesics.” Due to the extensive marketing and advertising by Complainant for its CELEBREX mark, the mark has earned worldwide notoriety. The New York Times referred to Complainant’s CELEBREX product as a “blockbuster arthritis drug,” and Forbes called it the sales “crown jewel in Pharmacia’s (Complainant) new portfolio.”
Respondent registered the disputed domain name on June 22, 2002. Respondent is using 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.
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.
Identical and/or Confusingly Similar
Complainant has established that it has rights in the CELEBREX mark through registration with the United States Patent and Trademark Office and continuous use.
Furthermore, the <viagra-xenical-propecia-meridia-bontril-phentermine-celebrex.com> domain name is confusingly similar to Complainant’s mark because it incorporates Complainant’s mark and merely adds a string of other drug brand names. The addition of other well-known drug brand names does not diminish the capacity of the disputed domain name to confuse Internet users, in fact, it actually adds to the potential to confuse. Therefore, the disputed domain name does not create a distinct mark capable of overcoming a claim of confusing similarity. 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 G.D. Searle & Co. v. Entm’t Hosting Servs., Inc., FA 110783 (Nat. Arb. Forum June 3, 2002) (“The Panel concludes that the <viagra-propecia-xenical-celebrex-claritin-prescriptions.com> domain name is confusingly similar to Complainant’s CELEBREX mark because the mere addition of related competing products’ names in the domain name does not defeat a confusing similarity claim”).
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 it is presumed that Respondent has no rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondent’s failure to respond can be construed as an admission that they have no legitimate interest in the domain names).
Furthermore, when Respondent fails to submit a Response the Panel is permitted to make all inferences in favor of Complainant. 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”).
Respondent is using the disputed domain name in order to solicit drug orders on the Internet. Because the <viagra-xenical-propecia-meridia-bontril-phentermine-celebrex.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 consumers 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 failed to come forward to establish that it is commonly known by anything other than “Paramount Marketing.” Respondent has failed to provide evidence that it is commonly known as <viagra-xenical-propecia-meridia-bontril-phentermine-celebrex.com> or any of the featured brand names in the domain name. Therefore Respondent has failed to establish 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 Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Based on the widespread fame of Complainant’s CELEBREX mark, and the fact that 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 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 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 world-wide prominence of the mark and thus Respondent registered the domain name in bad faith).
Furthermore, Respondent is using the disputed domain name in order to attract Internet users looking for Complainant’s products to Respondent’s website. Respondent is therefore commercially benefiting from the likelihood of confusion created by Respondent’s use of Complainant’s mark. This type of behavior 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 Respondent directed Internet users seeking Complainant’s site to its own website for commercial gain).
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 the requested relief shall be hereby granted.
Accordingly, it is Ordered that the domain name <viagra-xenical-propecia-meridia-bontril-phentermine-celebrex.com> be transferred from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: September 27, 2002
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