G.D. Searle & Co. v. Multimeds Inc.
Claim Number: FA0209000125749
PARTIES
Complainant
is G.D. Searle & Co., Peapack,
NJ (“Complainant”) represented by Paul
D. McGrady, Jr., of Ladas &
Parry. Respondent is David Mark Multimeds Inc., Royal Oak,
MI (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <celebrex-arthritis.net>,
registered with Bulk Register.com, 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.
John
J. Upchurch as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on September 20, 2002; the Forum received a hard copy of the
Complaint on September 23, 2002.
On
September 23, 2002, Bulk Register.com, Inc. confirmed by e-mail to the Forum
that the domain name <celebrex-arthritis.net>
is registered with Bulk Register.com, Inc. and that Respondent is the current
registrant of the name. Bulk Register.com, Inc. has verified that Respondent is
bound by the Bulk Register.com, 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
October 2, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of October 22,
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-arthritis.net 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
November 12, 2002, pursuant to Complainant’s request to have the dispute
decided by a single-member Panel, the Forum appointed John J. Upchurch 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 makes the following
assertions:
Respondent’s
<celebrex-arthritis.net> domain name is confusingly similar to
Complainant’s registered CELEBREX mark.
Respondent does not have any rights or legitimate
interests in the <celebrex-arthritis.net> domain
name.
Respondent registered and used the <celebrex-arthritis.net>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
FINDINGS
Complainant, G.D. Searle & Co., holds
two domestic trademarks for the CELEBREX mark (U.S. Reg. Nos. 2,321,622 and
2,307,888). Complainant registered these marks on February 22, 2000 and January
11, 2000, respectively, on the Principal Register of the United States Patent
and Trademark Office (“USPTO”) and has used them in commerce since February of
1999. Complainant has also applied for or received trademark registrations in
more than 112 countries worldwide.
Complainant adopted the use of its distinctive
CELEBREX mark to market “pharmaceutical products in the nature of
anti-inflammatory analgesics” in a global campaign for its anti-arthritic
medicine. Under its mark, Complainant receives billions of dollars in annual
sales.
Respondent, Multimeds Inc., registered
the <celebrex-arthritis.net>
domain name on October 30, 2000 and is not licensed or otherwise authorized to
make use of the CELEBREX mark for any purpose. Respondent has done nothing to
develop its domain name.
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 rights in its
CELEBREX mark through registration on the Principal Register of the USPTO, as
well as via continuous and widespread use of the mark worldwide. Complainant’s
use of its internationally recognized and registered CELEBREX mark demonstrates
that it has sufficient rights in the mark to bring this Complaint against
Respondent. See Wal-Mart Stores,
Inc. v. MacLeod, D2000-0662 (WIPO Sept. 19, 2000) (finding that the failure
of Complainant to register all possible domain names that surround its
substantive mark does not hinder Complainant’s rights in the mark. “Trademark
owners are not required to create ‘libraries’ of domain names in order to
protect themselves”).
Respondent’s <celebrex-arthritis.net> domain name is confusingly similar
to Complainant’s registered CELEBREX mark. The only difference between
Respondent’s domain name and the registered mark of Complainant is the addition
of the top-level domain “.net” after the mark, and the addition of the
descriptive word “arthritis.” As top-level domain names are a standard feature
for any domain name, its addition does not prevent a finding of confusing
similarity. See Rollerblade, Inc.
v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top-level of
the domain name such as “.net” or “.com” does not affect the domain name for
the purpose of determining whether it is identical or confusingly similar); see
also Blue Sky Software Corp. v.
Digital Sierra Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the
domain name <robohelp.com> is identical to Complainant’s registered
ROBOHELP trademark, and that the "addition of .com is not a distinguishing
difference").
The addition of the descriptive word
“arthritis” to Complainant’s registered CELEBREX mark also fails to
sufficiently differentiate the disputed domain name from Complainant’s mark.
The dominant feature of the disputed domain name remains Complainant’s
distinctive CELEBREX mark, while the word “arthritis” simply describes the
product that Complainant’s mark represents. 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 the Respondent’s domain name combines
the Complainant’s mark with a generic term that has an obvious relationship to
the Complainant’s business); see also Brown
& Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5,
2001) (finding that the <hoylecasino.net> domain name is confusingly similar
to Complainant’s HOYLE mark, and that the addition of “casino,” a generic word
describing the type of business in which Complainant is engaged, does not take
the disputed domain name out of the realm of confusing similarity).
Accordingly, the Panel finds that the <celebrex-arthritis.net> domain
name is confusingly similar to Complainant’s registered and distinctive
CELEBREX mark under Policy ¶ 4(a)(i).
Rights or Legitimate Interests
The burden of proving lack of rights or
legitimate interests in a domain name rests initially upon a complainant. Under
Policy ¶¶ 4(c)(i-iii), a respondent can rely on a “bona fide offering of goods
or services” connected with the disputed domain name, the fact that it has been
“commonly known by the domain name,” or that it is making a “legitimate
noncommercial or fair use of the domain name” to demonstrate a right or
legitimate interest in a domain name. If a complainant rebuts each of these
elements, it has satisfied its burden by successfully addressing any of the specified
claims a respondent could make under Policy ¶¶ 4(c)(i-iii), thereby shifting
the burden to the respondent. 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).
It is neither a bona fide offering of
goods or services, nor an example of a legitimate noncommercial or fair use
under Policy ¶¶ 4(c)(i) and (iii) when the holder of a domain name that is
confusingly similar to an established mark fails to develop the domain name. See
Ziegenfelder Co. v. VMH Enter., Inc.,
D2000-0039 (WIPO Mar. 14, 2000) (finding that failure to provide a product or
service or develop the site demonstrates that Respondents have not established
any rights or legitimate interests in the domain name); see also Chanel, Inc. v. Heyward, D2000-1802
(WIPO Feb. 23, 2001) (finding no rights or legitimate interests where
“Respondent registered the domain name and did nothing with it”); see also Am. Home Prod. Corp. v. Malgioglio,
D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in
the domain name <solgarvitamins.com> where Respondent merely passively
held the domain name). Respondent has not developed a website associated with
the disputed domain name since its registration over two years ago. This
passive holding of the <celebrex-arthritis.net>
domain name is not a bona fide offering of goods or services nor use of the
domain name for noncommercial or fair use.
Complainant has not given Respondent
permission or consent to use its CELEBREX mark, and has shown that Respondent
is not “commonly known by” the name CELEBREX-ARTHRITIS or <celebrex-arthritis.net>. Furthermore, as Complainant’s mark is highly distinctive and
specifically coined by Complainant, it is doubtful that anyone other than
Complainant could claim to be “commonly known by” the name. See Nike, Inc. v. B. B. de Boer, D2000-1397
(WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one
“would be hard pressed to find a person who may show a right or legitimate
interest” in a domain name containing Complainant's distinct and famous NIKE
trademark); see also Nokia Corp.
v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding that Respondent is not
commonly known by the mark contained in the domain name where Complainant has
not permitted Respondent to use the NOKIA mark and no other facts or elements
can justify prior rights or a legitimate connection to the name).
In light of Respondent’s failure to offer
any evidence that it has ever been commonly known by the disputed domain name,
The Panel concludes that Complainant has adequately met its burden under Policy
¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb.
Forum May 16, 2001) (Interpreting Policy ¶ 4(c)(ii) "to require a showing
that one has been commonly known by the domain name prior to registration of
the domain name to prevail").
Accordingly, the Panel finds that
Respondent does not have any rights or legitimate interests in its domain name
under Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Respondent both registered and used the <celebrex-arthritis.net> domain name in bad faith. While Policy
paragraph 4(b) lists four circumstances evidencing bad faith registration and
use of a domain name by a respondent, that list not exhaustive. 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 Home Interiors & Gifts, Inc. v. Home
Interiors, D2000-0010 (WIPO Mar. 7, 2000) (“[J]ust because Respondent’s
conduct does not fall within the ‘particular’ circumstances set out in ¶4(b),
does not mean that the domain names at issue were not registered in and are not
being used in bad faith”).
In determining what circumstances entail
bad faith use and registration, the Panel will look at the “totality of the
circumstances” before reaching a conclusion. See 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”).
Registering an infringing domain name
despite the fame of Complainant’s distinctive and registered mark qualifies as
evidence of bad faith use and registration.
See Cellular One Group v.
Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding bad faith when (1) the
domain name contains Complainant’s mark in its entirety, (2) the mark is a
coined word, well-known and in use prior to Respondent’s registration of the
domain name, and (3) Respondent fails to allege any good faith basis for use of
the domain name); 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 world-wide prominence of the mark and thus Respondent registered the
domain name in bad faith). Under the “totality of the circumstances,” the Panel
concludes that Respondent registered the disputed domain name, which includes
in its entirety Complainant’s distinctive CELEBREX mark, in bad faith. This
conclusion is supported by the fact that Respondent did not submit a Response
to the Complaint in this proceeding. 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 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).
By passively holding onto the infringing
domain name, Respondent used its domain name in bad faith. See Body Shop Int’l PLC v. CPIC NET &
Hussain, D2000-1214 (Nov. 26, 2000) (finding bad faith where (1) Respondent
failed to use the domain name and (2) it is clear that Respondent registered
the domain name as an opportunistic attempt to gain from the goodwill of the
Complainant); see also Alitalia
–Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23,
2000) (finding bad faith where Respondent made no use of the domain name in
question and there are no other indications that Respondent could have
registered and used the domain name in question for any non-infringing
purpose). In light of the distinctive quality of the CELEBREX mark, the Panel
finds it difficult to imagine a circumstance where Respondent would be able to
use its domain name without violating the Policy. Without a submission by
Respondent to the contrary, the Panel concludes that Respondent’s passive holding
of the disputed domain name is bad faith use by Respondent. See Hewlett-Packard Co. v. Martineau, FA
95359 (Nat. Arb. Forum Aug. 30, 2000) (finding that Respondent’s failure to
submit an assertion of good faith intent to use the domain name, in addition to
the passive holding of the domain name, reveal that Respondent registered and
uses the domain name in bad faith).
Accordingly, the Panel finds that
Respondent both registered and used its <celebrex-arthritis.net>
domain name in bad faith, and Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three elements
under ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.
Accordingly, it is Ordered that the <celebrex-arthritis.net> domain
name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: November 20, 2002
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