G.D. Searle & Co. v. John Gergen
Claim Number: FA0208000123931
PARTIES
Complainant
is G.D. Searle & Co., Skokie, IL
(“Complainant”) represented by Paul D.
McGrady, of Ladas & Parry. Respondent is John Gergen, Mantorville, MN (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <celebrex-ultram-vioxx-md.com>,
registered with Network Solutions.
PANEL
The
undersigned certifies that she has acted independently and impartially and to
the best of her knowledge has no known conflict in serving as Panelist in this
proceeding.
Sandra
Franklin 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, Network Solutions confirmed by e-mail to the Forum that the
domain name <celebrex-ultram-vioxx-md.com>
is registered with Network Solutions and that Respondent is the current
registrant of the name. Network
Solutions has verified that Respondent is bound by the Network Solutions
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@celebrex-ultram-vioxx-md.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 8, 2002, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the Forum appointed Sandra Franklin 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
<celebrex-ultram-vioxx-md.com> domain name incorporates numerous parties’
marks and interests. More specifically,
the following drug companies are implicated by way of Respondent’s domain name:
G.D. Searle (Complainant) (CELEBREX), Ortho-McNeil Pharmaceutical (ULTRAM), and
Merck (VIOXX). 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
<celebrex-ultram-vioxx-md.com> domain
name is confusingly similar to Complainant’s CELEBREX mark.
Respondent
has no rights or legitimate interests in the <celebrex-ultram-vioxx-md.com> domain name.
Respondent
registered and used the <celebrex-ultram-vioxx-md.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 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.
In addition, 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.
Due to Complainant’s extensive use of the fanciful CELEBREX mark in
commerce and the publicity associated with the CELEBREX medicine, the CELEBREX
mark is well-known in the United States and abroad.
Respondent registered the <celebrex-ultram-vioxx-md.com> domain name on October 8, 2001. Respondent uses the domain name to attract
Internet users to its website where Respondent solicits drug orders
online.
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 registration with the USPTO and continuous
use in commerce.
Respondent’s <celebrex-ultram-vioxx-md.com> domain name incorporates
Complainant’s entire CELEBREX mark with the addition of other pharmaceutical
trademarks (ULTRAM and VIOXX), and the abbreviation “md.” Respondent uses the CELEBREX mark to attract
Internet users to its pharmacy website, which constitutes a confusingly
unauthorized use of the mark. The use
of other pharmaceutical marks in the domain name only enhances the capacity of
the domain name to confuse the consuming public. In addition, the use of “md” (medical doctor) does not take the
domain name out of the realm of confusing similarity because “md” has an
obvious relationship to Complainant’s business. See G.D. Searle &
Co. v. Christensen, FA 100647 (finding <celebrexclaritinpharmacy.com>
to be confusingly similar to Complainant’s CELEBREX mark); see also 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 Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where Respondent’s domain name combines Complainant’s mark with a
generic term that has an obvious relationship to Complainant’s business).
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Rights or Legitimate Interests
Complainant has successfully alleged a prima
facie case, including Complainant’s contention that Respondent has no rights
or legitimate interests in the <celebrex-ultram-vioxx-md.com>
domain name. Thus, the burden
effectively shifts to Respondent to articulate its rights or legitimate
interests in the domain name.
Respondent, however, has not fulfilled its burden because Respondent has
failed to submit a Response. Therefore,
the Panel may presume that Respondent has no rights or legitimate interests in
the domain name. See Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under
certain circumstances the mere assertion by Complainant that Respondent has no
right or legitimate interest is sufficient to shift the burden of proof to
Respondent to demonstrate that such a right or legitimate interest does exist);
see also Pavillion Agency, Inc. v.
Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that
Respondents’ failure to respond can be construed as an admission that they have
no legitimate interest in the domain names).
In addition, since Respondent failed to rebut
Complainant’s contentions, Complainant’s allegations may be accepted as true
and all reasonable inferences will be 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”); 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 <celebrex-ultram-vioxx-md.com> domain name to resolve to its
website where it solicits pharmaceutical orders. Respondent specifically solicits orders for the three medications
listed in the domain name (CELEBREX, ULTRAM and VIOXX), which are all
pain-relieving medicines. It is
established precedent that the unauthorized use of another’s mark to sell that
entity’s products along with other products is not a bona fide offering of
goods or services pursuant to Policy ¶ 4(c)(i), nor does it constitute a
legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii). See Chanel,
Inc. v. Cologne Zone,
D2000-1809 (WIPO Feb. 22, 2001) (finding that use of Complainant’s mark to sell
Complainant’s perfume, as well as other brands of perfume, is not bona fide
use); see also Nat’l Collegiate
Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that
domain names used to sell Complainant’s goods without Complainant’s authority,
as well as others’ goods is not bona fide use).
Respondent has no legitimate business
affiliation with Complainant and, as such, Respondent does not have authorized
permission to use the CELEBREX mark.
Based on the information contained on the record, Respondent is known as
John Gergen. There is nothing to
indicate that Respondent is commonly known by the <celebrex-ultram-vioxx-md.com> domain name. Therefore, Respondent failed to establish
rights or legitimate interests in the domain name under Policy ¶ 4(c)(ii). 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 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).
Accordingly, the Panel finds that
Respondent has no rights or legitimate interests in the <celebrex-ultram-vioxx-md.com> domain name; thus, Policy ¶
4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
The Policy lays out a list of bad faith
circumstances in paragraph 4(b), which is expressly non-exhaustive. Thus, the Panel is permitted to look at the
totality of circumstances when undertaking a bad faith analysis. 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”).
Circumstances make it evident that
Respondent was well aware of Complainant’s interests in the CELEBREX mark. Respondent operates as an online pharmacy
distributing Complainant’s CELEBREX medication. Hence, Respondent presumably is knowledgeable about the
pharmaceutical industry and the relevant rights of the pharmaceutical
companies. Respondent chose to
incorporate the three medication names in order to capture those seeking the
medications. It can be reasonably
inferred that Respondent was aware of the valuable interests Complainant owns
in the CELEBREX mark, as the mark is specifically used as an advertising
tool. Therefore, Respondent’s
registration and use of the <celebrex-ultram-vioxx-md.com>
domain name, despite knowledge of Complainant’s rights, represents bad
faith. 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-ultram-vioxx-md.com> domain
name to divert Internet traffic to its commercial pharmaceutical website
represents bad faith use under Policy ¶ 4(b)(iv). By using Complainant’s CELEBREX mark in the domain name as a
means to sell the CELEBREX medication, Respondent creates potential source
confusion and dilutes the mark. 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 Fanuc
Ltd v. Mach. Control Serv., FA 93667 (Nat. Arb. Forum Mar. 13, 2000)
(finding that Respondent violated Policy ¶ 4(b)(iv) by selling used Fanuc parts
and robots on website <fanuc.com> because customers visiting the site
were confused as to the relationship between Respondent and Complainant).
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 <celebrex-ultram-vioxx-md.com>
be TRANSFERRED from Respondent to Complainant.
Sandra Franklin, Panelist
Dated: October 18, 2002
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