G.D. Searle & Co. v.
24-7-Commerce.com
Claim Number: FA0210000126657
PARTIES
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.
PANEL
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.
PROCEDURAL HISTORY
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 postmaster@cheapest-celebrex-vioxx-ultram-super-blue-stuff.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.
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).
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
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.
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.
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.
DECISION
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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