G.D. Searle & Co. v. Timothy Brennan d/b/a Chance Technologies, LLC
Claim Number: FA0210000126828
Complainant is G.D. Searle & Co., Skokie, IL (“Complainant”) represented by Paul D. McGrady, of Ladas & Parry. Respondent is Timothy Brennan d/b/a Chance Technologies, LLC, San Francisco, CA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <celebrex-prescriptions-online.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.
Honorable Paul A. Dorf (Ret.) as Panelist.
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 2, 2002, Go Daddy Software confirmed by e-mail to the Forum that the domain name <celebrex-prescriptions-online.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 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 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 12, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Honorable Paul A. Dorf (Ret.) 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 <celebrex-prescriptions-online.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.
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, Complainant’s CELEBREX 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 March 3, 2002. Respondent has made no use of the disputed domain name since it registered the domain name in March. Respondent has not established a website at the domain name. Respondent does not have permission from Complainant to use the CELEBREX mark, nor does it hold a license.
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 registration with the United States Patent and Trademark Office. Furthermore, Respondent’s <celebrex-prescriptions-online.com> domain name is confusingly similar to Complainant’s CELEBREX mark because it merely adds the descriptive terms “prescriptions,” and “online” in combination with hyphens. The addition of hyphens does not add any distinctive characteristics to a domain name. See InfoSpace.com v. Tenenbaum Ofer, D2000-0075 (WIPO Apr. 27, 2000) (finding that “[t]he domain name ‘info-space.com’ is identical to Complainant’s INFOSPACE trademark. The addition of a hyphen and .com are not distinguishing features”). The addition of terms such as “prescriptions” and “online” merely describe a place where an Internet user could find Complainant’s product, and therefore do not take away from the fact that Complainant’s mark is still the dominant element of the domain name. Therefore, Respondent’s domain name does not overcome a Policy ¶ 4(a)(i) confusingly similar analysis. See Down East Enter. Inc. v. Countywide Communications, FA 96613 (Nat. Arb. Forum Apr. 5, 2001) (finding the domain name <downeastmagazine.com> confusingly similar to Complainant’s common law mark DOWN EAST, THE MAGAZINE OF MAINE); see also Microsoft Corp. v. Montrose Corp., D2000-1568 (WIPO Jan. 25, 2001) (finding the domain name <ms-office-2000.com> to be confusingly similar even though the mark MICROSOFT is abbreviated).
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 it is presumed that Respondent has no rights or legitimate interests in the disputed domain name. See 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).
Furthermore, when Respondent fails to submit a Response the Panel is permitted to make all 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”).
Respondent registered the disputed domain name in March of 2002 and has not developed a website or used the domain name for any purpose since its registration. Failure to use a domain name for an extended period of time is considered to be passive holding and does not give rise to rights or legitimate interests. There is no evidence on record that Respondent has used, or is planning to use the disputed domain name in connection with 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). As a result of the aforementioned circumstances, there is no evidence to establish that Respondent has rights or legitimate interests in the disputed domain name. See 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); see also Bloomberg L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001) (finding that no rights or legitimate interest can be found when Respondent fails to use disputed domain names in any way); see also Flor-Jon Films, Inc. v. Larson, FA 94974 (Nat. Arb. Forum July 25, 2000) (finding that Respondent’s failure to develop the site demonstrates a lack of legitimate interest in the domain name).
Respondent has failed to come forward with any evidence to establish that it is commonly known by any other name than “Chance Technologies” or “Timothy Brennan.” Furthermore, based on the fame of Complainant’s CELEBREX mark it can be inferred that Respondent is not commonly known as CELEBREX-PRESCRIPTIONS-ONLINE or <celebrex-prescriptions-online.com>. Therefore, as there is no evidence on record, and Respondent has not come forward with any evidence to prove that it is commonly known by the disputed domain name, Respondent has failed to establish that it has rights or legitimate interests in the disputed 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 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).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
The circumstances listed in Policy paragraph 4(b) that constitute bad faith are not exclusive. The UDRP Policy recognizes that there are other situations that can give rise to bad faith. 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 Channel Tunnel Group Ltd. v. Powell, D2000-0038 (WIPO Mar. 17, 2000) (“[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in ¶4(b) of the Policy, is not conclusive that the Euro-tunnel.com domain name in issue was registered and is being used in bad faith”).
Based on the fame of Complainant’s mark it can be inferred that Respondent had knowledge of Complainant’s rights when it registered the disputed domain name. The domain name <celebrex-prescriptions-online.com> itself is evidence that Respondent had knowledge of Complainant’s products because it signifies to Internet users that they can obtain CELEBREX at Respondent’s domain name and corresponding website. Registration of a domain name, despite knowledge of Complainant’s rights is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii). 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 Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse").
Furthermore, Respondent has held the disputed domain name for over six months and has failed to create a website or establish any other business or other purpose for the domain name. Passive holding of a domain name is evidence of bad faith use pursuant to Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the Respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
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 <celebrex-prescriptions-online.com> be transferred from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.) Panelist
Dated: November 25, 2002
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