G.D. Searle & Co. v. MedScripts, LLC a/k/a Elizabeth Skinner
Claim Number: FA0210000126830
Complainant is G.D. Searle & Co., Peapack, NJ (“Complainant”) represented by Paul D. McGrady, Jr., of Ladas & Parry. Respondent is MedScripts, LLC a/k/a Elizabeth Skinner, Birmingham, AL (“Respondent”).
The domain name at issue is <4-celebrex.com>, registered with Register.com.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra Franklin 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 2, 2002.
On October 3, 2002, Register.com confirmed by e-mail to the Forum that the domain name <4-celebrex.com> is registered with Register.com and that Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.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 8, 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.
On November 18, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Sandra Franklin 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.
A. Complainant makes the following averments:
1. Respondent’s <4-celebrex.com> domain name is confusingly similar to Complainant’s CELEBREX mark.
2. Respondent does not have any rights or legitimate interests in the <4-celebrex.com> domain name.
3. Respondent registered and used the <4-celebrex.com> domain name in bad faith.
A. Respondent failed to submit a Response in this proceeding.
Complainant, G.D. Searle and Co., 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 one of Complainant’s registrations 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. 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 the substantial advertising resources it has expended on the CELEBREX mark, Complainant’s CELEBREX mark 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 <4-celebrex.com> domain name on July 10, 2002. Complainant’s investigation of Respondent’s use of the domain name indicates that Respondent has yet to use the domain name in connection with a website or purpose.
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 through registration with the USPTO and subsequent continuous use of the mark in relation to its pharmaceutical development and distribution services. Further, Complainant’s CELEBREX mark is considered a fanciful mark that is particular to Complainant and its product. See Stork Restaurant v. Sahati, 166 F.2d 348, 76 U.S.P.Q. 374 (9th Cir. 1948) (greater degree of protection given to fanciful marks than to names in common use); Aveda Corp. v. Evita Mktg., Inc., 706 F. Supp. 1419, 12 U.S.P.Q.2d 1091, 1098 (D. Minn. 1989) (quoting treatise: "Fanciful marks, if adopted in a bona fide first use, are considered the strongest of marks because their inherent novelty creates a substantial impact on the buyer's mind").
Respondent’s <4-celebrex.com> domain name is confusingly similar to Complainant’s CELEBREX mark. Respondent’s domain name incorprates the inconsequential addition of the number “4” with a hyphen into the second-level domain. Both deviations fail to make the domain name separate and distinct from Complainant’s CELEBREX mark because Complainant’s mark remains the dominant element in the second-level domain. Therefore, Respodent’s domain name is rendered confusingly similar. See 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); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that adding the suffixes "502" and "520" to the ICQ trademark does little to reduce the potential for confusion).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent failed to contest Complainant’s assertions that, inter alia, Respondent lacks rights and legitimate interests. Because Complainant’s evidence and arguments are unopposed the Panel is permitted to accept all reasonable inferences made in the Complaint as true. 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”); see also 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).
Furthermore, Complainant has submitted a prima facie case to the Panel, thereby shifting the burden to Respondent. Respondent’s failure to respond means that Respondent has failed to invoke any circumstances that could demonstrate rights or legitimate interests in the domain name. See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name); 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, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name).
Uncontested allegations reveal that Respondent is not using the disputed domain name in connection with any purpose. In response to the Complaint, it is incumbent on Respondent to present evidence corroborating demonstrable preparations to use the domain name for some valid purpose. Respondent’s failure to contest Complainant’s allegations, taken in conjunction with Respondent’s lack of articulation of a purpose for the domain name, is evidence that Respondent lacks rights and legitimate interests in the domain name under Policy ¶¶ 4(c)(i) and (iii). 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 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).
Significantly, Respondent has submitted no evidence that would suggest a legitimate connection exists between it and the <4-celebrex.com> domain name. Complainant’s CELEBREX mark represents a fanciful term unique to Complainant’s product and services, and it is therefore unlikely that Respondent is commonly known by a domain name that incorporates Complainant’s mark in its entirety. Fanciful marks are referred to as the "strongest" of all marks, in that their novelty creates a substantial impact on the buyer's mind – when 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. 2000). Reasonable inferences indicate that Respondent is not commonly known by the infringing domain name 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).
Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the domain name pursuant to Policy ¶ 4(a)(ii).
Because Complainant’s CELEBREX mark is represented on the Principal Register of the USPTO it is presumed that Respondent was aware of Complainant’s rights in the mark. Further, because Complainant’s mark represents an arbitrary word lacking any meaning apart from Complainant’s product, Respondent’s use of the CELEBREX mark in the subject domain name evidences bad faith registration under Policy ¶ 4(a)(iii). Respondent’s registration of a domain name that infringes on Complainant’s mark, despite knowledge of Complainant’s rights, evidences bad faith. 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); see also Victoria’s Cyber Secret Ltd. P’ship v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a Principal Register registration [of a trademark or service mark] is constructive notice of a claim of ownership so as to eliminate any defense of good faith adoption” pursuant to 15 U.S.C. § 1072).
Because Complainant’s CELEBREX mark is a unique mark denoting specific goods, it is likely that any use Respondent designates for the domain name will inevitably mislead Internet users. The more distinctive the trademark is, the greater its influence in stimulating sales, its hold on the memory of the purchaser and the likelihood of associating similar designations on other goods with the same source. If the trademark is a coined word such as CELEBREX, it is more plausible that all goods on which a similar designation is used will be regarded as emanating from the same source than when the trademark is one in common use on a variety of goods. McCarthy on Trademarks and Unfair Competition, § 11:6 (4th ed. 2000).
Although Respondent has yet to develop a use for the domain name and the requisite amount of time necessary to determine passive holding has not transpired, bad faith use can be implied from the nature of the domain name. It is evident that Respondent’s eventual use of the domain name would constitute an infringing activity, and precedent has determined that such certainty warrants a finding of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). 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 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”).
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 <4-celebrex.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra Franklin, Panelist
Dated: December 2, 2002
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 The Paris Convention for the Protection of Industrial Property: An agreement concluded in 1883 and updated several times since. It provides common rules between the member states for designs and other forms of intellectual property; an international treaty that enables residents of member countries to file patent applications in other member countries.