G.D. Searle & Co. v. Rick Brewer d/b/a Strategical Networks LLC
Claim Number: FA0209000126644
Complainant is G.D. Searle & Co., Skokie, IL (“Complainant”) represented by Paul D. McGrady, of Ladas & Parry. Respondent is Strategical Networks LLC, McKinley, TX (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <doctorcelebrex.com>, registered with Go Daddy Software.
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.
Tyrus R. Atkinson, Jr., 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, Go Daddy Software confirmed by e-mail to the Forum that the domain name <doctorcelebrex.com> is registered with Go Daddy Software and that Respondent is the current registrant of the name. Go Daddy Software has verified that Respondent is bound by the Go Daddy Software 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 1, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 21, 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 November 11, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., 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 <doctorcelebrex.com> domain name is confusingly similar to Complainant's CELEBREX mark.
Respondent has no rights or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
Respondent failed to submit a Response in this proceeding.
Complainant has registered its CELEBREX mark in 112 countries around the world, including the United States. Complainant’s mark is registered on the Principal Register of the United States Patent and Trademark Office as Registration Number 2,321,622. Complainant’s mark represents “pharmaceutical products in the nature of anti-inflammatory analgesics.” Complainant has promoted its CELEBREX mark on a global scale. Due to its extensive marketing and advertising promoting the CELEBREX mark, the mark has earned worldwide notoriety. The New York Times referred to Complainant’s CELEBREX product as a “blockbuster arthritis drug,” and Forbes referred to CELEBREX as the “sales crown jewel in [Complainant’s] new portfolio.”
Respondent registered the disputed domain name on May 30, 2002. Respondent is using the disputed domain name in order to divert Internet users to <doctorviagra.com> where it has a website that solicits orders for popular drugs such as Viagra and Xenical, as well as Complainant’s CELEBREX brand medication. Respondent does not have permission from Complainant to use the CELEBREX mark, nor does Respondent hold a license to use the CELEBREX mark.
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 that it has rights in the CELEBREX mark through its registration with the United States Patent and Trademark Office as well as through its various international registrations.
Respondent’s <doctorcelebrex.com> domain name is confusingly similar to Complainant’s mark because it includes the entirety of Complainant’s mark and merely adds the generic term “doctor.” The addition of this term does not create a distinct mark because Complainant’s CELEBREX mark is still the dominant element of the disputed domain name. See Pfizer, Inc. v. Papol Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name incorporates the VIAGRA mark in its entirety, and deviates only by the addition of the word “bomb,” the domain name is rendered confusingly similar to Complainant’s mark); see also Treeforms, Inc. v. Cayne Indus. Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that confusion would result when Internet users, intending to access Complainant’s website, think that an affiliation of some sort exists between Complainant and Respondent, when in fact, no such relationship would exist).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Respondent has failed to come forward with a Response. Therefore, the Panel is permitted to make reasonable inferences in favor of Complainant and accept Complainant’s allegations as true. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence); 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”).
Furthermore, based on Respondent’s failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed 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 Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or legitimate interest in the domain name because Respondent never submitted a Response nor provided the Panel with evidence to suggest otherwise).
Respondent is using the disputed domain name in order to attract Internet users to its website to buy various prescription drug products. Respondent is therefore using Complainant’s mark in order to attract Internet users to Respondent’s website for its own commercial gain. Furthermore, there is no way for Internet users to know that Respondent’s website is not endorsed by Complainant. As a result, Respondent is using and potentially tarnishing Complainant’s goodwill for Respondent’s personal financial gain. This type of use is not in considered to be a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where Respondent attempted to profit using Complainant’s mark by redirecting Internet traffic to its own website); see also Household Int’l, Inc. v. Cyntom Enter., FA 95784 (Nat. Arb. Forum Nov. 7, 2000) (inferring that Respondent registered the domain name <householdbank.com>, which incorporates Complainants HOUSEHOLD BANK mark, with hopes of attracting Complainant’s customers and thus finding no rights or legitimate interests).
The disputed domain name redirects Internet users to a website located at <doctorviagra.com>. There is no mention of a “Doctor Celebrex” at this website, nor is the name prominently displayed at the top of the website or anywhere else in Respondent’s presentation. Respondent’s website merely offers Complainant’s CELEBREX product for sale alongside other popular name brand drugs such as Viagra, and Xenical. Respondent’s use of the <doctorcelebrex.com> domain name has not created any evidence that it is commonly known by the disputed domain name. Furthermore, Respondent has not come forward with any evidence that it is commonly known as DOCTOR CELEBREX, CELEBREX, or <doctorcelebrex.com>. Complainant has presented evidence that Respondent does not have a license to use the CELEBREX mark, and Respondent has not come forward with any of its own evidence to refute this assertion. Therefore, Respondent has failed to establish that it has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Nokia Corp. v. Nokiagirls.com, D2000-0102 (WIPO Apr. 18, 2000) (finding that Respondent has no rights or legitimate interests in the <nokiagirls.com> domain name because there was no element on website that would justify use of the word NOKIA within the domain name); see also CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding that Respondent failed to demonstrate any rights or legitimate interests in the <twilight-zone.net> domain name since Complainant had been using the TWILIGHT ZONE mark since 1959).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Based on the fact that Respondent is using the disputed domain name in order to attract Internet users to its website that sells popular name brand drugs it can be inferred that Respondent had knowledge of Complainant’s rights in the CELEBREX mark before it registered <doctorcelebrex.com>. It is reasonable to assume that Respondent would not have registered <doctorcelebrex.com> if it did not know that the domain name would attract Internet users to its website. Registration of an infringing domain name, despite actual knowledge of Complainant’s rights in the mark within the domain name, is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii). See Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that, in light of the notoriety of Complainants' famous marks, Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time she registered the disputed domain name and such knowledge constituted bad faith); see also Yahoo! Inc. v. Ashby, D2000-0241 (WIPO June 14, 2000) (finding that the fame of the YAHOO! mark negated any plausible explanation for Respondent’s registration of the <yahooventures.com> domain name).
Respondent is using the <doctorcelebrex.com> domain name in order to attract Internet users to its website that sells prescription drugs. Therefore, Respondent is using the disputed domain name to attract potential customers and solicit sales. Because there is no way for Internet users to know whether or not Complainant has sanctioned the website located at <doctorcelebrex.com> Respondent is benefiting commercially from the likelihood of confusion created as to the source, sponsorship and affiliation of the disputed domain name. This behavior is evidence of bad faith use pursuant to 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 Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that Respondent acted in bad faith by registering the domain name <fossilwatch.com> and using it to sell various watch brands).
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 <doctorcelebrex.com> be transferred from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: November 22, 2002
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