G. D. Searle & Co. v. SHg d/b/a SHG Resources
Claim Number: FA0209000125755
Complainant is G.D. Searle & Co., Peapack, NJ (“Complainant”) represented by Paul D. McGrady, Jr., of Ladas & Parry. Respondent is SHg d/b/a SHG Resources, Cross Lanes, WV (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <celebrex24.com>, registered with eNom.com, Inc.
On November 15, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James P. Buchele as Panelist. The
undersigned Panelist 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.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on September 24, 2002; the Forum received a hard copy of the Complaint on September 24, 2002.
On September 25, 2002, eNom.com, Inc. confirmed by e-mail to the Forum that the domain name <celebrex24.com> is registered with eNom.com, Inc. and that Respondent is the current registrant of the name. eNom.com, Inc. has verified that Respondent is bound by the eNom.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 8, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 28, 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.
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 <celebrex24.com> domain name is confusingly similar to Complainant’s CELEBREX mark.
Respondent has no rights or legitimate interests in the <celebrex24.com> domain name.
Respondent registered and used the <celebrex24.com> domain name in bad faith.
Respondent has failed to submit a Response in this action.
Complainant holds a United States Patent and Trademark Office (“USPTO”) registration for the CELEBREX mark, which is registered on the Principal Register (Reg. No. 2,307,888). Complainant has actively sought trademark protection of its CELEBREX mark in over 112 countries worldwide. Complainant started seeking trademark protection for its CELEBREX mark as early as February 10, 1998.
The CELEBREX mark was coined to denote Complainant’s arthritis drug. Complainant began receiving press for its CELEBREX arthritis medication as early as December of 1998. The CELEBREX mark and related pharmaceutical product have been widely promoted by Complainant as representing medicine intended as an anti-inflammatory analgesic. As a result of Complainant’s developmental and advertising efforts the CELEBREX mark holds a substantial amount of goodwill for Complainant. In fact, the CELEBREX mark has been praised by The New York Times and Forbes magazine as a “blockbuster arthritis drug” and as a “crown jewel in [Complainant’s] new portfolio,” respectively.
Respondent registered the <celebrex24.com> domain name on April 10, 2002. Respondent has made no active use of the domain name.
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 by proof of trademark registration with the USPTO among other governing trademark bodies. Complainant has also demonstrated its rights in the CELEBREX mark through substantial use of the mark since at least as early as 1998.
Respondent’s <celebrex24.com> domain name contains Complainant’s entire unique CELEBREX mark with the mere addition of “24.” Adding numbers to a trademark in a domain name does not create a distinct mark. The dominant portion of the <celebrex24.com> domain name remains Complainant’s CELEBREX mark. Therefore, Respondent’s <celebrex24.com> domain name is confusingly similar to Complainant’s CELEBREX mark. See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that adding the suffixes "502" and "520" to the ICQ trademark does little to reduce the potential for confusion); see also Omnitel Pronto Italia S.p.A. v. Carlo Dalla Bella, D2000-1641 (WIPO Mar. 12, 2001) (finding that the contested <omnitel2000.com> domain name is confusingly similar to the OMNITEL trademark); see also Hitachi, Ltd. v. Fortune Int’l Dev. Ent, D2000-0412 (WIPO July 2, 2000) (finding that the domain name <hitachi2000.net> is confusingly similar to Complainant’s mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant carries the burden of establishing Respondent’s lack of rights or legitimate interests in the <celebrex24.com> domain name. Complainant has effectively discharged this burden by alleging that Respondent has no rights or legitimate interests in the domain name. Therefore, the burden shifts to Respondent to articulate its rights or legitimate interests in the domain name. Respondent, however, has failed to submit a Response and the Panel will therefore presume 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 Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed).
Furthermore, Respondent’s failure to contest the Complaint allows the Panel to accept Complainant’s allegations as true and to draw all reasonable inferences 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 has never developed an active use for the <celebrex24.com> domain name since registering it in April 2002. While Respondent has not held the domain name passively for a substantial amount of time, circumstances suggest that Respondent could not possibly have a valid use for the domain name that would constitute rights or legitimate interests under Policy ¶ 4(a)(ii). First, Respondent has not come forward with demonstrable plans to use the domain name. This suggests that Respondent has no planned use of the domain name that is a fair non-infringing use. Second, Respondent’s <celebrex24.com> domain name wholly incorporates Complainant’s established and unique CELEBREX mark. Complainant’s mark is distinctive and any foreseeable use of the domain name without any “license or quality controls” by Complainant would most likely cause confusion. Respondent has failed to fulfill its burden to produce a legitimate non-infringing use of Complainant’s coined CELEBREX mark. Therefore, when considering all relevant circumstances, Respondent’s passive holding of the <celebrex24.com> domain name for nearly seven months evidences a lack of rights or legitimate interests in the domain name 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 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).
There exits no evidence that supports a finding of Respondent’s common identity as CELEBREX24 or <celebrex24.com>. Furthermore, because of the established goodwill and notoriety of the CELEBREX mark, presumably no other entity is commonly known by the CELEBREX mark or any similar variation thereof. Therefore, Respondent has no rights or legitimate interests in the <celebrex24.com> 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); see also Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well-established use of the mark).
Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the <celebrex24.com> domain name; thus, Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
The Policy paragraph 4(b) lists a set of circumstances that warrant a finding of bad faith. However, the analysis for bad faith is without limitation as the Policy paragraph 4(b) circumstances are intended to be merely illustrative. Therefore, the Panel is permitted to look at the totality of circumstances in order to determine whether bad faith registration and use exists. See Educ. Testing Serv. v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (finding that the Policy “[I]ndicates that its listing of bad faith factors is without limitation”); 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”).
Complainant’s CELEBREX mark is registered on the Principal Register of the USPTO. Such registration imparts constructive knowledge upon all subsequent users of the CELEBREX mark. Hence, Respondent was charged with the responsibility of clearing the rights in the <celebrex24.com> domain name prior to registering it. Furthermore, Complainant coined the CELEBREX mark, which has achieved a substantial amount of notoriety through Complainant’s extensive campaign and widespread consumer use of the CELEBREX medication. Thus, it is presumed that Respondent had knowledge of Complainant’s interest in the CELEBREX mark prior to registering the <celebrex24.com> domain name. Moreover, such constructive knowledge means that Respondent registered the <celebrex24.com> domain name in bad faith. See 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 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).
Respondent has not actively used the <celebrex24.com> domain name since registering it in April 2002, nearly seven months ago. Given Respondent’s constructive knowledge of Complainant’s interest in the CELEBREX mark and the confusing similarity of the domain name, it is evident that the domain name could not be used for a valid non-infringing purpose. While seven months is not usually sufficient to find bad faith passive holding, the notoriety of Complainant’s mark and Respondent’s failure to come forward to establish a planned use warrants a finding of bad faith use. See E. & J. Gallo Winery v. Oak Inv. Group, D2000-1213 (WIPO Nov. 12, 2000) (finding bad faith where (1) Respondent knew or should have known of Complainant’s famous GALLO marks and (2) Respondent made no use of the domain name <winegallo.com>); 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).
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 <celebrex24.com> be transferred from Respondent to Complainant.
James P. Buchele, Panelist
Dated: November 18, 2002
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page