G.D. Searle & Co. v. unknown
Claim Number: FA0208000123920
Complainant is G.D. Searle & Co., Skokie, IL, USA (“Complainant”) represented by Paul D. McGrady, of Ladas & Parry. Respondent is unknown, Barbados, WEST INDIES (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <buy-celebrex-ultram-vioxx-online-pain-relief.com>, registered with Stargate Communications, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 29, 2002; the Forum received a hard copy of the Complaint on August 30, 2002.
On September 3, 2002, Stargate Communications, Inc. confirmed by e-mail to the Forum that the domain name <buy-celebrex-ultram-vioxx-online-pain-relief.com> is registered with Stargate Communications, Inc. and that Respondent is the current registrant of the name. Stargate Communications, Inc. has verified that Respondent is bound by the Stargate Communications, 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 September 17, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 7, 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 October 25, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson 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.
The domain name registered by Respondent, <buy-celebrex-ultram-vioxx-online-pain-relief.com>, incorporates the marks and interests of numerous parties. More specifically, the domain name registered by Respondent gives rise to an inference that the marks and interests of the following drug companies are implicated: G.D. Searle (Complainant) (CELEBREX), Ortho-McNeil Pharmaceutical (ULTRAM), and Merck & Co. Inc. (VIOXX).
Practical difficulties inherent in the UDRP make cooperative complaint initiation unlikely and unfeasible. Because Complainant initiated this dispute prior to any other interested party, Complainant has the opportunity to acquire the domain name, while seeking to protect its CELEBREX mark from an infringing use.
However, procedural complexities presented by the current dispute require that the following issue be addressed: Complainant must show that it seeks acquisition of the subject domain name in good faith and that it will forfeit its interest in the contested domain name if other represented marks are infringed upon following a transfer of the domain name registration to Complainant. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (Complainant’s continuing control of the <viagra-xenical-celebrex-propecia-meridia-zyban.com> domain name is contingent upon good faith possession and Complainant will forfeit its interest in the domain name if it infringes on the other represented marks).
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following allegations:
The <buy-celebrex-ultram-vioxx-online-pain-relief.com> domain name that was registered by Respondent 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 failed to submit a Response.
Complainant registered its CELEBREX mark in 112 countries around the world, including the United States. Complainant’s mark is registered on the Principal Register of the United States Patent and Trademark Office as Registration Number 2,321,622. Complainant’s mark represents “pharmaceutical products in the nature of anti-inflammatory analgesics.” Complainant promoted its CELEBREX mark on a global scale and as a result of extensive marketing and advertising promoting CELEBREX, the mark has earned worldwide notoriety. The New York Times referred to Complainant’s CELEBREX product as a “blockbuster arthritis drug,” and Forbes referred to CELEBREX as the “sales crown jewel in Pharmacia’s (Complainant) new portfolio.”
Respondent registered the disputed domain name May 9, 2002. Complainant’s investigation revealed that Respondent has used the disputed domain name only to solicit drug offers from Internet users although Respondent has no license from Complainant to use the CELEBREX mark in such solicitations.
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 will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a) of the Policy requires that 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 established in this proceeding that it has rights in the CELEBREX mark through extensive use and registration with the United States Patent and Trademark Office.
The domain name registered by Respondent, <buy-celebrex-ultram-vioxx-online-pain-relief.com>, is confusingly similar to Complainant’s mark because it incorporates Complainant’s entire mark and merely adds the generic and descriptive terms “buy,” “online,” “pain,” and “relief.” The addition of these descriptive terms does not create a distinct mark because the words are merely descriptive of Complainant’s business and mark. Furthermore, the addition of two other trademarks ULTRAM and VIOXX does not make the domain name distinctive because all of the featured trademarks are names of drugs that offer pain relief. As a result, the entire domain name is descriptive and will confuse the Internet user as to its source, sponsorship and affiliation and therefore cannot overcome the confusingly similar analysis set out in Policy ¶ 4(a)(i). See Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to Complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which Complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity); see also G.D. Searle & Co. v. Fred Pelham, FA 117911 (Nat. Arb. Forum Sept. 19, 2002) (finding that 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”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent failed to file a Response and the Panel is therefore permitted to assume that Respondent lacks rights or legitimate interests in the disputed domain name. When Complainant makes a prima facie case against Respondent, the burden of proof shifts to Respondent to show that it has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). 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 failed to invoke any circumstance that could demonstrate rights or legitimate interests in the domain name).
Furthermore, because Respondent has not submitted a Response, it is appropriate for the Panel to accept all reasonable allegations and inferences in the Complaint 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); 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).
Respondent has used the disputed domain name to solicit drug orders from Internet users who are interested in Complainant’s product. Respondent does not have a license to use Complainant’s mark in its domain name. Respondent is using a confusingly similar domain name to attract Internet users to Respondent’s website for Respondent’s commercial gain. This type of use is not in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not 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).
Respondent has not come forward with any evidence to establish that it is commonly known by any name or title. In fact, the record reflects that Respondent has kept its identity unknown. Considering Respondent’s failure to come forward with any information in conjunction with the fame of Complainant’s CELEBREX mark permits the Panel to find that Respondent is not commonly known by CELEBREX, <buy-celebrex-ultram-vioxx-online-pain-relief.com> or the other drug brand names featured in the disputed domain name. 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 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).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent registered and used the disputed domain name to solicit drug offers from Internet users. Respondent’s domain name incorporates Complainant’s CELEBREX mark and other drug trademarks thereby creating confusion as to the source, sponsorship and affiliation of the disputed domain name. Respondent is using the likelihood of confusion created by its domain name to commercially benefit from the Internet traffic that visits its website in search of products the <buy-celebrex-ultram-vioxx-online-pain-relief.com> domain name advertises. This conduct is evidence of 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).
Furthermore, based on the fame of Complainant’s mark the Panel may infer that Respondent had notice of Complainant’s mark when it registered the disputed domain name. Registration of a domain name despite notice of Complainant’s rights is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii). 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 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).
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 should be granted. Accordingly, it is Ordered that the domain name <buy-celebrex-ultram-vioxx-online-pain-relief.com> be transferred from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: November 8, 2002.
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