G.D. Searle & Co. v. Celebrex Conference Correspondent
Claim Number: FA0209000124514
Complainant is G.D. Searle & Co., Skokie, IL, USA (“Complainant”) represented by Paul D. McGrady, of Ladas & Parry. Respondent is Celebrex Conference Correspondent, Stanmore, AUSTRALIA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <celebrexcorrespondent.com>, registered with Melbourne IT.
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.
Hon. Ralph Yachnin 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 4, 2002.
On September 4, 2002, Melbourne IT confirmed by e-mail to the Forum that the domain name <celebrexcorrespondent.com> is registered with Melbourne IT and that Respondent is the current registrant of the name. Melbourne IT has verified that Respondent is bound by the Melbourne IT 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 email@example.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 17, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Ralph Yachnin 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
The <celebrexcorrespondent.com> domain name is confusingly similar to Complainant’s CELEBREX mark.
Respondent has no rights or legitimate interests in the <celebrexcorrespondent.com> domain name.
Respondent registered and used the <celebrexcorrespondent.com> domain name in bad faith.
Respondent failed to submit a Response in this proceeding.
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.
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 <celebrexcorrespondent.com> domain name on June 18, 2001. Respondent has never developed an active use of the domain name in nearly one and a half years of ownership.
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 trademark registration and extensive use of the mark in commerce.
Respondent’s <celebrexcorrespondent.com> domain name incorporates Complainant’s entire CELEBREX mark with the addition of the word “correspondent.” The addition of “correspondent” to the notorious and fanciful CELEBREX mark merely suggests some sort of relationship with Complainant’s CELEBREX medication. Therefore, Respondent’s domain name is confusingly similar to Complainant’s 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 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 satisfied it burden by alleging a prima facie Complaint, in which Complainant contends that Respondent has no rights or legitimate interests in the <celebrexcorrespondent.com> domain name. Since Complainant has satisfied its burden, the burden shifts to Respondent to articulate its rights and legitimate interests. Respondent, however, has failed to come forward and answer the Complaint. Therefore, the Panel presumes that Respondent has no rights or legitimate interests in the 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 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).
Furthermore, since Respondent has failed to submit a Response, all reasonable inferences may be drawn in Complainant’s favor and Complainant’s allegations are accepted 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 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”).
Respondent has never provided content under the <celebrexcorrespondent.com> domain name. Respondent has passively held the domain name for nearly one and a half years. Because Respondent’s domain name incorporates Complainant’s fanciful CELEBREX mark and Respondent has failed to come forward to explain its lack of use, it is reasonable to infer that Respondent has no rights or legitimate interests pursuant to Policy ¶¶ 4(c)(i) and (iii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where Respondent failed to submit a Response to the Complaint and had made no use of the domain name in question); see also Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (finding that “merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy”); see also Ritz-Carlton Hotel v. Club Car Executive, D2000-0611 (WIPO Sept. 18, 2000) (finding that prior to any notice of the dispute, Respondent had not used the domain names in connection with any type of bona fide offering of goods and services).
In addition, Respondent’s failure to come forward means there is no evidence on the record establishing that Respondent is commonly known by the <celebrexcorrespondent.com> domain name. Moreover, Respondent has no business relationship with Complainant, as Complainant has never authorized Respondent to use the CELEBREX mark. Therefore, Respondent has no rights or legitimate interests in the 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).
Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the <celebrexcorrespondent.com> domain name; thus, Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
The Policy paragraph 4(b) prescribes a list of bad faith circumstances. The Policy does, however, make it clear that the list of bad faith circumstances is without limitation. Thus, the Panel may refer to the totality of circumstances when undertaking 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”).
Respondent has not come forward to present its case of why it registered the domain name. Also, Respondent has not established demonstrable plans to use the domain name. It is established precedent that merely registering a domain name does not represent rights in the domain name, and not actively using the domain name for a substantial period constitutes bad faith registration and use. It is true that a party registering a domain name gets a grace period to develop a use for the domain name before passive holding constitutes bad faith. However, in the present case, Respondent has passively held the domain name, which incorporates a fanciful mark, for over a year, and has failed to articulate a planned use. Therefore, Respondent’s passive holding constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that Respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see also LFP, Inc. v. B & J Props., FA 109697 (Nat. Arb. Forum May 30, 2002) (recognizing that in certain instances excusable delays will inevitably arise, but noting that those delays must be quantifiable and limited; they cannot extend indefinitely).
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 <celebrexcorrespondent.com> be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: October 21, 2002