G.D. Searle & Co. v. Innovative
Solution Technologies a/k/a Vedavyasa Alapati
Claim Number: FA0208000123927
PARTIES
Complainant
is G.D. Searle & Co., Skokie, IL
(“Complainant”) represented by Paul D.
McGrady, of Ladas & Parry. Respondent is Innovative Solution Technologies a/k/a Vedavyasa Alapati,
Los Angeles, CA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <xenical-viagra-phentermine-celebrex.com>,
registered with Register.com.
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 29, 2002; the Forum received a hard copy of the
Complaint on August 30, 2002.
On
August 30, 2002, Register.com confirmed by e-mail to the Forum that the domain
name <xenical-viagra-phentermine-celebrex.com>
is registered with Register.com and that Respondent is the current registrant
of the name. Register.com has verified
that Respondent is bound by the Register.com 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 3, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of September 23, 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@xenical-viagra-phentermine-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
October 9, 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
<xenical-viagra-phentermine-celebrex.com>
domain name incorporates numerous
parties’ marks and interests. More
specifically, the following drug companies are implicated by way of
Respondent’s domain name: Roche Laboratories Inc. (XENICAL), Pfizer (VIAGRA),
Eon Labs (PHENTERMINE), and G.D. Searle (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: that
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. 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
The
<xenical-viagra-phentermine-celebrex.com>
domain name is confusingly similar to Complainant’s CELEBREX mark.
Respondent
has no rights or legitimate interests in the <xenical-viagra-phentermine-celebrex.com> domain name.
Respondent
registered and used the <xenical-viagra-phentermine-celebrex.com>
domain name in bad faith.
B.
Respondent
Respondent failed to submit a Response in
this proceeding.
FINDINGS
Complainant owns Reg. No. 2,307,888
with the United States Patent and Trademark Office (“USPTO”) for the CELEBREX
mark. In an effort to proactively
safeguard its rights in the CELEBREX mark, Complainant has filed trademark
applications in more than 112 countries around the world. Complainant coined the CELEBREX mark for use
in connection with its “pharmaceutical products in the nature of
anti-inflammatory analgesics.”
Complainant began seeking trademark protection in 1998, when it filed
applications for registration in the United States on February 10, 1998 and
abroad on February 16, 1998.
Furthermore, Complainant has extensively
used the CELEBREX mark for the past four years on a global scale marketing and
distributing its anti-arthritic medicine.
The CELEBREX anti-arthritic medicine has gained recognition by The
New York Times and Forbes magazine, each labeling the medicine a
“blockbuster arthritis drug” and “the $2 billion (sales) crown jewel in
[Complainant’s] new portfolio,” respectively.
As evidenced by Complainant’s extensive use of the fanciful CELEBREX
mark in commerce, and the attention given to the CELEBREX medicine, the
CELEBREX mark is well-known in the United States and abroad.
Respondent registered the <xenical-viagra-phentermine-celebrex.com>
domain name on September 18,
2000. Respondent uses the domain name
to attract Internet users to its website where Respondent solicits drug orders
online. Respondent solicits CELEBREX
medicine orders and uses Complainant’s CELEBREX mark on its website to do
so.
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.
Identical and/or Confusingly Similar
Complainant has established its rights in
the CELEBREX mark through proof of trademark registration status with the
USPTO, among many other authorized trademark governing bodies.
Respondent’s <xenical-viagra-phentermine-celebrex.com> domain name
contains Complainant’s CELEBREX mark in its entirety along side three other
pharmaceutical related marks (XENICAL, VIAGRA and PHENTERMINE). Using other
industry related marks with Complainant’s CELEBREX mark does not create a distinguishable
domain name. Rather, Respondent’s
domain name incorporates the pharmaceutical marks as a means to advertise its
website to Complainant’s customer base.
Such use does not defeat a confusingly similar claim and therefore
Respondent’s domain name is confusingly similar to Complainant’s CELEBREX
mark. See G.D. Searle
& Co. v. Paramount Mktg., FA 118307 (Nat. Arb. Forum Sept. 27, 2002)
(holding that the addition of other well-known pharmaceutical drug brand names
to the <viagra-xenical-propecia-meridia-bontril-phentermine-celebrex.com>
domain name does not diminish the capacity of the disputed domain name to
confuse Internet users, but actually “adds to the potential to confuse”); see
also G.D. Searle & Co. v. Christensen, FA 100647 (finding <celebrexclaritinpharmacy.com>
to be confusingly similar to Complainant’s CELEBREX mark).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant has successfully alleged a prima
facie case, including its allegation that Respondent has no rights or
legitimate interests in the <xenical-viagra-phentermine-celebrex.com>
domain name. Complainant has
fulfilled its burden under the Policy, effectively shifting the burden on
Respondent to articulate its rights or legitimate interests in the domain
name. Respondent has failed to appear
in this proceeding and therefore the Panel presumes that Respondent has no
rights or legitimate interests in the <xenical-viagra-phentermine-celebrex.com>
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 Canadian
Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution
Sept. 23, 2000) (finding no rights or legitimate interests where no such right
or interest was immediately apparent to the Panel and Respondent did not come
forward to suggest any right or interest it may have possessed).
Furthermore, Respondent’s failure to come
forward and contest Complainant’s allegations permits the Panel to accept all
of Complainant’s allegations as true. 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”); see also 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).
Respondent uses the domain name to
resolve to a website where it offers pharmaceuticals for sale. At the website, Respondent uses
Complainant’s CELEBREX mark to solicit orders for the related anti-arthritic
drug. This is all done without any
implied or express consent by Complainant to use the CELEBREX mark. Using Complainant’s CELEBREX mark to
advertise the sale of the related drug in the domain name and at the website
does not amount to establishing rights or legitimate interests in the domain
name under Policy ¶¶ 4(c)(i) and (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).
As previously mentioned, Respondent was
never granted a license to use the CELEBREX mark for any purpose, let alone to
advertise the sale of the CELEBREX medicine on the Internet. Respondent has no connection to the CELEBREX
mark, and it is highly unlikely that Respondent is commonly known by the
CELEBREX mark because it was coined by Complainant. Furthermore, there is nothing on the record that shows Respondent
is commonly known by the <xenical-viagra-phentermine-celebrex.com>
domain name. Therefore, Respondent
has failed to demonstrate rights or legitimate interests in the domain
name. See 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); 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
Respondent has no rights or legitimate interests in the <xenical-viagra-phentermine-celebrex.com> domain name; thus,
Policy ¶ 4(a)(ii) has been satisfied.
Policy paragraph 4(b) contains a
non-exhaustive list of bad faith circumstances. The list is without limitation and therefore the Panel is
permitted to look at the totality of circumstances to shed light on the bad
faith issue. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“the
examples [of bad faith] in Paragraph 4(b) are intended to be illustrative,
rather than exclusive”); see also Twentieth
Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000)
(finding that in determining if a domain name has been registered in bad faith,
the Panel must look at the “totality of circumstances”).
As an online pharmacy, Respondent clearly
has knowledge of the pharmaceutical industry.
Part of that knowledge is the awareness of trademark rights of the
pharmaceutical companies from which Respondent obtains it drugs. In addition, Respondent not only uses the
CELEBREX mark as a signal in the domain name, Respondent uses the CELEBREX mark
at the website to solicit orders for the anti-arthritic drug. Respondent registered and uses the domain
name, despite its knowledge of Complainant’s rights in the CELEBREX mark, which
constitutes bad faith under 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 Albrecht
v. Natale, FA 95465 (Nat. Arb. Forum Sept. 16, 2000) (finding registration
in bad faith based where there is no reasonable possibility, and no evidence
from which to infer that the domain name was selected at random since it
entirely incorporated Complainant’s name)
Furthermore, Respondent’s use of the
CELEBREX mark in the domain name is merely an unauthorized advertisement
tool. The use of the CELEBREX mark
creates a likelihood of confusing Internet users as to Complainant’s
affiliation with the attached commercial pharmacy website. Therefore, Respondent uses the domain name
in bad faith under Policy ¶ 4(b)(iv). See
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); see also Fossil
Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that
Respondent acted in bad faith by registering the domain name
<fossilwatch.com> and using it to sell various watch brands).
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 <xenical-viagra-phentermine-celebrex.com>
be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: October 23, 2002.
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