G.D. Searle & Co. v. Robin Cimock
Claim Number: FA0210000126829
PARTIES
Complainant
is G.D. Searle & Co., Skokie, IL
(“Complainant”) represented by Paul D.
McGrady, of Ladas & Parry. Respondent is Robin Cimock, Las Vegas, NV (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <celebrexrx.com>,
registered with ItsYourDomain.com.
PANEL
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.
Hon.
Ralph Yachnin as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on October 2, 2002; the Forum received a hard copy of the Complaint
on October 1, 2002.
On
October 3, 2002, ItsYourDomain.com confirmed by e-mail to the Forum that the
domain name <celebrexrx.com>
is registered with ItsYourDomain.com and that Respondent is the current
registrant of the name. ItsYourDomain.com
has verified that Respondent is bound by the ItsYourDomain.com 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 3, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of October 23,
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@celebrexrx.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 Hon. Ralph Yachnin 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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
The
<celebrexrx.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.
B.
Respondent
Respondent
failed to submit a Response in this proceeding.
FINDINGS
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 Pharmacia’s (Complainant) new portfolio.”
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.”
Respondent registered the disputed domain
name on October 27, 2001. Complainant’s
investigation has revealed that Respondent used the disputed domain name in
order to solicit orders for Complainant’s CELEBREX brand drug online. Respondent does not have a license or
permission from Complainant to use the CELEBREX mark.
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.
Identical and/or Confusingly Similar
Complainant has established that it has
rights in the CELEBREX mark through its international registrations and through
its registration with the United States Patent and Trademark Office.
Respondent’s <celebrexrx.com>
domain name is confusingly similar to Complainant’s CELEBREX mark because it
incorporates Complainant’s entire mark and merely adds the two letters “rx,”
that is a common abbreviation for “prescription medicine.” The addition of these two letters to
Complainant’s mark does not create a distinct mark capable of overcoming a
claim of confusing similarity because the addition of “rx” merely describes
Complainant’s CELEBREX mark, which is a prescription drug. See 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); see also 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).
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 a domain name
confusingly similar to Complainant’s mark in order to attract Internet users to
its website. Respondent is specifically
targeting Internet users interested in buying Complainant’s CELEBREX product. Therefore, Respondent is attempting to
benefit from Complainant’s goodwill.
This type of behavior is not considered to 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). See G.D. Searle & Co. v. Fred Pelham,
FA 117911 (Nat. Arb. Forum Sept. 19, 2002) (finding that because Respondent is
using the infringing domain name to sell prescription drugs it can be inferred
that Respondent is opportunistically using Complainant’s mark in order to attract
Internet users to its website); see also G.D. Searle & Co. v. Mahoney,
FA 112559 (Nat. Arb. Forum June 12, 2002) (finding Respondent’s use of the
disputed domain name to solicit pharmaceutical orders without a license or
authorization from Complainant does not constitute a bona fide offering of
goods or services under Policy ¶ 4(c)(i)).
Due to the fame of Complainant’s mark
there must be strong evidence that Respondent is commonly known by the disputed
domain name in order to find that Respondent has rights or legitimate interests
in the disputed domain name pursuant to Policy ¶ 4(c)(ii). However, there is no evidence on record, and
Respondent has not come forward with any proof to establish that it is commonly
known as CELEBREXRX or <celebrexrx.com>. 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 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); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc.,
FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights
or legitimate interests in domain names because it is not commonly known by
Complainant’s marks and Respondent has not used the domain names in connection
with a bona fide offering of goods and services or for a legitimate
noncommercial or fair use).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Registration and Use in Bad Faith
Respondent is using a domain name that
incorporates Complainant’s mark in order to attract Internet users to its
website. By using the <celebrexrx.com>
domain name Respondent is able to advertise that it sells Complainant’s brand
name CELEBREX drug at its website.
Internet users are not informed as to the source, sponsorship or
affiliation of the domain name.
Respondent is therefore using the disputed domain name in order to
create a likelihood of confusion for its own commercial gain, which 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 Am. Online,
Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000)
(finding bad faith where Respondent registered and used an infringing domain
name to attract users to a website sponsored by Respondent).
It can be inferred that Respondent had
actual knowledge of Complainant’s rights in the CELEBREX mark when it registered
the disputed domain name because Respondent is using the disputed domain name
to attract Internet users to its website to buy Complainant’s CELEBREX brand
product. Registration of an infringing
domain name, despite actual knowledge of Complainant’s rights, is evidence of
bad faith registration pursuant to Policy ¶ 4(a)(iii). See Red Bull GmbH v. Gutch, D2000-0766 (WIPO Sept. 21, 2000) (finding
that Respondent’s expected use of the domain name <redbull.org> would
lead people to believe that the domain name was connected with Complainant, and
thus is the equivalent to bad faith use); see also Chanel, Inc. AG v. Designer Exposure, D2000-1832 (WIPO Feb. 15,
2001) (finding that Respondent's registration and use of the famous CHANEL mark
suggests opportunistic 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 <celebrexrx.com>
be transferred from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: November 13, 2003