G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com
Claim Number: FA0209000124508
Complainant is G.D. Searle & Co., Skokie, IL, USA (“Complainant”) represented by Paul D. McGrady, of Ladas & Parry. Respondent is Celebrex Cox-2 Vioxx.com, Brighton, East Sussex, UNITED KINGDOM (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <celebrex-cox-2-vioxx.com>, registered with Tucows.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on September 3, 2002; the Forum received a hard copy of the Complaint on September 3, 2002.
On September 4, 2002, Tucows confirmed by e-mail to the Forum that the domain name <celebrex-cox-2-vioxx.com> is registered with Tucows and that the Respondent is the current registrant of the name. Tucows has verified that Respondent is bound by the Tucows 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 5, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 25, 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.
A timely Response was received and determined to be complete on September 17, 2002.
Complainant and Respondent timely sent Additional Submissions on September 20, 2002.
On October 7, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
The <celebrex-cox-2-vioxx.com> domain name is confusingly similar to Complainant’s mark.
Respondent has no rights or legitimate interests in the <celebrex-cox-2-vioxx.com> domain name.
Respondent registered and used the <celebrex-cox-2-vioxx.com> domain name in bad faith.
Respondent, a resident of the U.K., contends that the Forum lacks jurisdiction over the controversy.
C. Additional Submissions
The parties address jurisdictional contentions in the additional submissions.
Complainant owns registered trademarks for the CELEBREX mark. The CELEBREX mark is used by Complainant to market “pharmaceutical products in the nature of anti-inflammatory analgesics.” Moreover, Complainant has successfully used the CELEBREX mark to market and advertise the sale of anti-arthritic medicine throughout the world.
Since the inception of the CELEBREX mark, Complainant has aggressively pursued worldwide trademark protection for the mark; Complainant has filed for applications to register the mark in over 112 countries.
Complainant’s CELEBREX medication has been recognized as a “blockbuster arthritis drug” and a “crown jewel in [Complainant’s] new portfolio” by The New York Times and Forbes, respectively. Because of Complainant’s marketing efforts and the popularity of Complainant’s medication, the CELEBREX mark enjoys a substantial amount of notoriety.
The mark VIOXX, which is in the disputed domain name, is used by a competitor of Complainant to denote similar pain relieving pharmaceuticals.
Respondent registered the <celebrex-cox-2-vioxx.com> domain name on September 18, 2000. Respondent is using the disputed domain name in order to solicit drug orders from individuals. Complainant never authorized Respondent’s registration of the domain name containing Complainant’s CELEBREX mark, nor did Complainant ever grant Respondent permission to use the CELEBREX mark.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
Respondent challenges the Forum’s jurisdiction. By registering the disputed domain name with Tucows, Respondent is bound by the Tucows’ registration agreement and has agreed to resolve domain name disputes in accordance with ICANN’s Policy. Respondent has submitted to the UDRP Policy by virtue of its domain name registration with Tucows, which adopted the UDRP Policy. See Draw-Lite, Inc. v. Plattsburgh Spring Inc., D2000-0017 (WIPO March 14, 2000) (“The Forum has jurisdiction over this matter pursuant to the Policy”).
Identical and/or Confusingly Similar
Complainant has established its rights in the CELEBREX mark through registration with
the USPTO and continuous use since the mark’s inception.
Respondent’s <celebrex-cox-2-vioxx.com> domain name contains Complainant’s entire CELEBREX mark at the forefront. Respondent uses the CELEBREX mark along with the VIOXX mark, which is a mark of a competitor of Complainant, in a string of names in the second-level domain. These marks are used for identification. Using Complainant’s mark along with a competitor’s mark in a domain name does not defeat a confusingly similar claim. See G.D. Searle & Co. v. Entm’t Hosting Services, Inc., FA 110783 (Nat. Arb. Forum June 3, 2002) (“[t]he 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”); see also G.D. Searle & Co. v. Christensen, FA 100647 (Nat. Arb. Forum Dec. 4, 2001) (finding <celebrexclaritinpharmacy.com> to be confusingly similar to Complainant’s CELEBREX mark).
Furthermore, Complainant uses the generic, hyphenated phrase “cox-2” as a suffix to the source identifying marks in the second-level domain. The use of the phrase “cox-2” fails to detract from the dominating presence of Complainant’s CELEBREX mark. Complainant’s mark has an especially dominating presence compared to the use of Complainant’s competitor’s mark in the domain name because it is the first mark used in the second-level domain. Therefore, the Panel finds that the <celebrex-cox-2-vioxx.com> domain name is confusingly similar to Complainant’s CELEBREX mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of Complainant combined with a generic word or term); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word…nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Respondent has no connection to Complainant that would allow Respondent to rightfully use the CELEBREX mark in the disputed domain name. Complainant never authorized or licensed Respondent to use the CELEBREX mark for any reason.
Respondent is using the <celebrex-cox-2-vioxx.com> domain name to sell pharmaceuticals. Because the domain name is confusingly similar to Complainant’s mark, Respondent is using Complainant’s mark in order to attract Internet users interested in Complainant’s product to Respondent’s website for Respondent’s commercial gain. Respondent’s 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).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
The list of bad faith circumstances in Policy paragraph 4(b) is not an exhaustive representation of what constitutes bad faith. The Panel must review the totality of circumstances when determining whether Respondent registered and used the domain name in bad faith. See Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence); 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”).
Based on the fame of Complainant’s CELEBREX mark, its international recognition, 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 that includes 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 worldwide prominence of the mark and thus Respondent registered the domain name in bad faith); see also 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 Nintendo of Am. Inc v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding that Respondent, at the time of registration, had notice of Complainant’s famous POKÉMON and PIKACHU trademarks given their extreme popularity); see also Victoria’s Cyber Secret Ltd. P’ship v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a Principal Register registration [of a trademark or service mark] is constructive notice of a claim of ownership so as to eliminate any defense of good faith adoption” pursuant to 15 U.S.C. § 1072).
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 <celebrex-cox-2-vioxx.com> be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
Dated: October 16, 2002
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