G.D. Searle & Co. v. unknown
Claim Number: FA0208000123920
PARTIES
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.
PANEL
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.
PROCEDURAL HISTORY
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 postmaster@buy-celebrex-ultram-vioxx-online-pain-relief.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
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).
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
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.
FINDINGS
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.
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
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.
DECISION
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.
Click Here to
return to the main Domain Decisions Page.
Click Here to return to our Home Page