G.D. Searle & Co. v. 24-7-Commerce.com
Claim Number: FA0210000126657
Complainant is G.D. Searle & Co., Peapack, NJ (“Complainant”) represented by Paul D. McGrady, Jr., of Ladas & Parry. Respondent is 24-7-commerce.com, Manhattan Beach, CA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cheapest-celebrex-vioxx-ultram-super-blue-stuff.com>, registered with Intercosmos Media Group, Inc.
On November 18, 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 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 October 1, 2002; the Forum received a hard copy of the Complaint on October 2, 2002.
On October 1, 2002, Intercosmos Media Group, Inc. confirmed by e-mail to the Forum that the domain name <cheapest-celebrex-vioxx-ultram-super-blue-stuff.com> is registered with Intercosmos Media Group, Inc. and that Respondent is the current registrant of the name. Intercosmos Media Group, Inc. has verified that Respondent is bound by the Intercosmos Media Group, 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 7, 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 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.
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.
Respondent’s <cheapest-celebrex-vioxx-ultram-super-blue-stuff.com> domain name incorpates numerous parties’ marks and interests. More specifically, the following drug companies are implicated by way of Respondent’s domain name: G.D. Searle (Complainant) (CELEBREX), Ortho-McNeil Pharmaceutical (ULTRAM), and Merck (VIOXX). Due to practical difficulties inherent in the UDRP, cooperative complaint initiation is unlikely and unfeasible. Because Complainant initiated this dispute prior to any other interested party it has the opportunity to acquire the domain name, while seeking to protect its CELEBREX mark from an infringing use. However, due to the procedural complexities presented by the current dispute the following issue must be addressed: that Complainant seeks acquisition of the subject domain name in good faith, and will forfeit its interest in the contested domain name if the other represented marks are infringed upon following a transfer of the domain name registration to Complainant. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (Complainant’s continuing control of the <viagra-xenical-celebrex-propecia-meridia-zyban.com> domain name is contingent upon good faith possession, and Complainant will forfeit its interest in the domain name if it infringes on the other represented marks); see also G.D. Searle v. Dunham, FA 123901 (Nat. Arb. Forum Oct. 9, 2002).
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <cheapest-celebrex-vioxx-ultram-super-blue-stuff.com> domain name is confusingly similar to Complainant’s CELEBREX registered mark.
2. Respondent does not have any rights or legitimate interests in the <cheapest-celebrex-vioxx-ultram-super-blue-stuff.com> domain name.
3. Respondent registered and used the <cheapest-celebrex-vioxx-ultram-super-blue-stuff.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Pharmacia, is the owner of numerous applications and registrations for its fanciful CELEBREX mark. Complainant has filed applications to register the CELEBREX mark in more than 112 countries around the world. An example of Complainant’s registration is U.S. Patent and Trademark Office (“USPTO”) Reg. No. 2,307,888 registered on the Principal Register January 11, 2000 reflecting the CELEBREX mark.
Complainant’s CELEBREX mark began receiving media attention as early as December of 1998 and Complainant filed its applications for registration of the mark as early as February 10, 1998 in the U.S., and internationally as early as February 16, 1998.
Complainant’s CELEBREX mark denotes “pharmaceutical products in the nature of anti-inflammatory analgesics” to the international consuming public. Complainant has made extensive use of its CELEBREX mark by using it in connection with the sale of anti-arthritic medicine on an international scale. Complainant’s CELEBREX drug was referred to in an article for The New York Times as a “blockbuster arthritis drug,” and Forbes magazine featured Complainant’s CELEBREX drug, referring to it as “the $2 billion (sales) crown jewel in [Complainant’s] new portfolio.”
Due to Complainant’s extensive marketing campaign and substantial advertising resources expended on the CELEBREX mark, it has earned (1) worldwide notoriety for the purpose of protection under the Paris Convention, and (2) fame in the U.S. for the purpose of protection under the Trademark Dilution Act.
Respondent registered the <cheapest-celebrex-vioxx-ultram-super-blue-stuff.com> domain name on June 3, 2002. Complainant’s investigation of Respondent’s use of the domain name indicates that Respondent has yet to make any 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.
Complainant has established rights in the CELEBREX mark by registration with the USPTO and subsequent continuous use of the mark in connection with its pharmaceutical development and products.
Respondent’s <cheapest-celebrex-vioxx-ultram-super-blue-stuff.com> domain name is confusingly similar to Complainant’s CELEBREX mark. Respondent’s second-level domain includes Complainant’s mark in its entirety, while also incorporating the marks of Complainant’s competitors. Previous Panels have determined that the inclusion of other industry related products to the fanciful CELEBREX mark fails to create a distinct and separate domain name. See G.D. Searle & Co. v. Fred Pelham, FA 117911 (Nat. Arb. Forum Sept. 19, 2002) (finding that the addition of other drug names does not create a distinct mark capable of overcoming a claim of confusing similarity, “it merely creates a domain name with severe potential to confuse Internet users as to the source, sponsorship and affiliation of the domain”); see also G.D. Searle & Co. v. Entm’t Hosting Servs., Inc., FA 110783 (Nat. Arb. Forum June 3, 2002) (“The Panel concludes that the <viagra-propecia-xenical-celebrex-claritin-prescriptions.com> domain name is confusingly similar to Complainant’s CELEBREX mark because the mere addition of related competing products’ names in the domain name does not defeat a confusing similarity claim”).
Furthermore, Respondent’s addition of “super-blue-stuff” is inconsequential to a Policy ¶ 4(a)(i) confusingly similar analysis because it is a reference to one of the aforementioned companies’ drugs. The addition of industry related words, especially if representative of the mark in question, fails to alleviate the confusion produced by Respondent’s use of Complainant’s CELEBREX mark in the domain name. See 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).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
As stated, Respondent failed to submit a Response in this proceeding and Complainant’s assertions have gone unopposed. Because Complainant’s Submission represents a prima facie case under the Policy, the burden is on Respondent to assert rights or legitimate interests in the subject domain name. Due to Respondent’s failure to contest Complainant’s Submission, the Panel will draw all reasonable inferences in favor of Complainant. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding where Complainant has asserted that Respondent has no rights or legitimate interests in respect of the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); 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).
Uncontested evidence indicates that Respondent is utilizing Complainant’s mark, among others, and diverting Internet users to its website. Although Respondent has yet to manufacture a purpose for the domain name, Internet users are still being diverted from Complainant’s <celebrex.com> website to Respondent’s website. Respondent’s use of the domain name has opportunistic undertones and is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor is Respondent making a noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). Because Respondent has not developed a purpose for the domain name, and has failed to enunciate a purpose to this Panel, Respondent has failed to establish rights or legitimate interests in the subject domain name. 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 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 name, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name).
No evidence suggests Respondent is commonly known by the <cheapest-celebrex-vioxx-ultram-super-blue-stuff.com> domain name. Further, Complainant’s CELEBREX mark is fanciful and unique to Complainant’s drug development and product. Therefore, Respondent would have difficulty establishing rights or legitimate interests in a domain name that incorporates Complainant’s mark in its entirety under 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 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).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant’s Submission indicates that Respondent has yet to designate a purpose for the infringing domain name. Respondent’s inclusion of famous marks in the domain name, absent legitimate interests or authorization from the drug companies represented in the second-level domain, represents bad faith under Policy ¶ 4(b)(iv). Fanciful marks are referred to as the "strongest" of all marks, in that their novelty creates a substantial impact on the buyer's mind – if sufficiently advertised and recognized. Being a "strong" mark has significance, in that the mark will then be given an expansive scope of judicial protection. McCarthy on Trademarks and Unfair Competition, § 11:6 (4th ed. 2002). Further, circumstances indicate that Respondent registered the subject domain name to support an infringing activity. See G.D. Searle & Co. v. 24-7-Commerce.com, FA 114707 (Nat. Arb. Forum July 31, 2002) (finding that although Respondent failed to come forward and provide evidence of a planned use for the <celebrex-vioxx-ultram-super-blue-stuff.com> domain name, due to the fact that the domain name incorporates marks of competing pharmaceutical products, it can be inferred that Respondent registered the domain name for ultimate use as an online pharmacy); see also Phat Fashions v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even though Respondent has not used the domain name because “It makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”).
Additionally, Respondent’s bad faith intentions are evidenced by the fact that Respondent knowingly registered an infringing domain name. Despite knowledge of Complainant’s rights in the CELEBREX mark, Respondent sought registration of the subject domain name; thus, Respondent’s actions constitute bad faith registration under Policy ¶ 4(a)(iii). See Pfizer, Inc. v. Internet Gambiano Prods., D2002-0325 (WIPO June 20, 2002) (finding Respondent “was aware of and had knowledge of” Complainant’s mark when registering the domain name because Complainant’s mark was a coined arbitrary term with no meaning apart from Complainant’s products).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements requisite under ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.
Accordingly, it is Ordered that the <cheapest-celebrex-vioxx-ultram-super-blue-stuff.com> domain name be TRANSFERRED from Respondent to Complainant.
James P. Buchele, Panelist
Dated: December 5, 2002
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