G.D. Searle & Co. v. Universal Medical Alliance
Claim Number: FA0209000126632
Complainant is G.D. Searle & Co., Skokie, IL (“Complainant”) represented by Paul D. McGrady, of Ladas & Parry. Respondent is Universal Medical Alliance, Davie, FL (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <celebrexdirectonline.com>, registered with Network Solutions.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on September 27, 2002; the Forum received a hard copy of the Complaint on September 30, 2002.
On September 30, 2002, Network Solutions confirmed by e-mail to the Forum that the domain name <celebrexdirectonline.com> is registered with Network Solutions and that Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 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 firstname.lastname@example.org 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 13, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq., 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.
A. Complainant makes the following assertions:
Respondent’s <celebrexdirectonline.com> domain name is confusingly similar to Complainant’s registered CELEBREX mark.
Respondent does not have any rights or legitimate interests in the <celebrexdirectonline.com> domain name.
Respondent registered and used the <celebrexdirectonline.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
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, Universal Medical Alliance, registered the <celebrexdirectonline.com> domain name on January 23, 2001 and is not licensed or otherwise authorized to make use of the CELEBREX mark for any purpose. Currently, Respondent’s website states to Internet users that “You are not authorized to view this page,” and displays no original content, implying to the Panel that Respondent either has made no use of the disputed domain name since registration, or as Complainant asserts, was “most likely offer[ing] goods or services” in violation of Complainant’s rights.
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 the 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 <celebrexdirectonline.com> 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 “.com” after the mark, and the addition of the descriptive words “direct” and “online.” 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 generic words “direct” and “online” 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, and the generic words “direct” and “online” do nothing to detract from this distinction. See Broadcom Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001) (finding the <broadcomonline.com> domain name is confusingly similar to Complainant’s BROADCOM mark); see also State Farm Mut. Auto. Ins. Co. v. Kaufman, FA 94335 (Nat. Arb. Forum Apr. 24, 2000) (finding that <statefarmdirect.com> is confusingly similar to Complainant’s registered mark); see also Gen. Elec. Co. v. Forddirect.com, Inc., D2000-0394 (WIPO June 22, 2000) (finding that adding the generic term “direct” on to Complainant’s marks (GE CAPTIAL and GECAL) does not alter the underlying mark held by Complainant, and thus Respondent’s domain names are confusingly similar).
Accordingly, the Panel finds that the <celebrexdirectonline.com> domain name is confusingly similar to Complainant’s registered and distinctive CELEBREX mark under Policy ¶ 4(a)(i).
Rights or Legitimate Interests
Respondent’s lack of a Response to the Complaint is in and of itself evidence of a lack of legitimate rights and interests in its domain name. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under certain circumstances the mere assertion by Complainant that Respondent has no right or legitimate interest is sufficient to shift the burden of proof to Respondent to demonstrate that such a right or legitimate interest does exist); 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).
It is neither a bona fide offering of goods or services, nor 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). Complainant has asserted that Respondent has not developed a website associated with the disputed domain name since its registration over twenty-one months ago, an averment that is not contradicted by Respondent. Therefore, Respondent’s holding of the <celebrexdirectonline.com> domain name is neither 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 CELEBREXDIRECTONLINE or <celebrexdirectonline.com>. Furthermore, as Complainant’s mark is highly distinctive, 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 Respondent has no rights or legitimate interests in the disputed domain name 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 <celebrexdirectonline.com> 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 to 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 distinct 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 the 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 failing to use its infringing domain name, Respondent used the disputed 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). Furthermore, 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 that rebuts the allegations and inferences made by Complainant, the Panel concludes that Respondent’s failure to use the disputed domain name is bad faith use by Respondent pursuant to Policy ¶ 4(a)(iii). 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 <celebrexdirectonline.com> domain name in bad faith, and Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements under ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.
Accordingly, it is Ordered that the <celebrexdirectonline.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: November 15, 2002
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