G.D. Searle & Co. v. Robin Cimock
Claim Number: FA0210000126829
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.
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.
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 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.
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.
Complainant requests that the domain name be transferred from Respondent to 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.
Respondent failed to submit a Response in this proceeding.
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.
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