G.D. Searle & Co. v. Domain Manager
Claim Number: FA0209000124755
PARTIES
Complainant
is G.D. Searle & Co., Skokie,
IL, USA (“Complainant”) represented by Paul
D. McGrady, of Ladas & Parry. Respondent is Domain Manager, Worthing Post Office, BB (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <buy-celebrex-online-pain-relief-painkillers.com>,
registered with eNom, Inc.
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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically
on September 6, 2002; the Forum received a hard copy of the Complaint on September
9, 2002.
On
September 10, 2002, eNom, Inc. confirmed by e-mail to the Forum that the domain
name <buy-celebrex-online-pain-relief-painkillers.com>
is registered with eNom, Inc. and that Respondent is the current registrant of
the name. eNom, Inc. has verified that
Respondent is bound by the eNom, 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 10, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of September 30, 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-online-pain-relief-painkillers.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 22, 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.
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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
The
<buy-celebrex-online-pain-relief-painkillers.com>
domain name is confusingly similar to Complainant’s CELEBREX mark.
Respondent’s
has no rights or legitimate interests in the <buy-celebrex-online-pain-relief-painkillers.com> domain
name.
Respondent
registered and used the <buy-celebrex-online-pain-relief-painkillers.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.
Because of 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 <buy-celebrex-online-pain-relief-painkillers.com>
domain name on July 10,
2002. Respondent uses the domain name
to resolve to a website that lists other web-addresses where one can purchase
pharmaceutical products.
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
extensive use in commerce.
Respondent’s <buy-celebrex-online-pain-relief-painkillers.com>
domain name incorporates Complainant’s entire CELEBREX mark, deviating by the
mere addition of the generic words “buy,” “online,” “pain,” “relief” and
“painkillers.” The generic words all
refer to Complainant’s CELEBREX mark in the way they are strung together in the
second-level domain. Furthermore, the
words “pain,” “relief” and “painkillers” all reference the function of the
CELEBREX drug. Therefore, the CELEBREX
mark remains the dominant portion of the domain name and thus Respondent’s
domain is confusingly similar to Complainant’s mark. See 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); 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
Respondent has failed to come forward and
state a claim representing its rights or legitimate interests in the <buy-celebrex-online-pain-relief-painkillers.com>
domain name. Complainant has
successfully alleged a prima facie case, in which Complainant alleges
that Respondent has no rights or legitimate interests in the domain name. Since Respondent failed to rebut that
contention, the Panel accepts Complainant’s assertion and presumes that
Respondent lacks rights or legitimate interests in the domain name. 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 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).
Respondent uses the <buy-celebrex-online-pain-relief-painkillers.com>
domain name to provide a search engine for individuals seeking to purchase
pharmaceutical products online.
Presumably, Respondent profits from the websites that are listed on its
search directory. Therefore,
Respondent’s diversionary use of the domain name does not represent 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 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 no connection with
Complainant and no authorized permission to use the CELEBREX mark. Respondent’s WHOIS information designates
“Domain Manager” as Respondent’s business name. This indicates that Respondent is not commonly known by the <buy-celebrex-online-pain-relief-painkillers.com>
domain name or any similar variation thereof. Furthermore, Respondent has failed to come forward to provide the
Panel with information that may demonstrate Respondent is commonly known by the
domain name. Therefore, Respondent has
no rights or legitimate interests in the domain name pursuant to Policy ¶
4(c)(ii). See 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); 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).
Accordingly, the Panel finds that
Respondent has no rights or legitimate interests in the domain name; thus,
Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Respondent attracts Internet users to its
website by using Complainant’s CELEBREX mark as the dominant feature of the <buy-celebrex-online-pain-relief-painkillers.com>
domain name. Respondent then
diverts those Internet uses, who are interested in Complainant’s CELEBREX
medication, to its own commercial website, which offers a directory of websites
that solicit drug orders. Hence, there
exists a high likelihood of Internet user confusion as to Complainant’s
affiliation with Respondent’s website.
Therefore, Respondent’s behavior evidences bad faith registration and
use under 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).
Furthermore, since Respondent uses the <buy-celebrex-online-pain-relief-painkillers.com>
domain name for the purpose of diverting Internet traffic to its online
pharmacy related website, it can be reasonably inferred that Respondent had
knowledge of the goodwill and notoriety of the CELEBREX mark. The Panel may draw this inference because Respondent
has not come forward to challenge the Complaint. Hence, Respondent’s registration of the domain name, with the
CELEBREX mark as the dominant part, was done in bad faith because of
Respondent’s apparent knowledge of Complainant’s interests in the CELEBREX
mark. See 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); see also 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").
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 <buy-celebrex-online-pain-relief-painkillers.com>
be transferred from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated: October 28, 2002
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