G.D. Searle & Co. v. Joann Hefelinger
Claim Number: FA0210000126839
Complainant is G.D. Searle & Co., Skokie, IL (“Complainant”) represented by Paul D. McGrady, of Ladas & Parry. Respondent is Joann Hefelinger, Spring Hill, FL (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <celebrex4life.com>, registered with BulkRegister.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on October 3, 2002; the Forum received a hard copy of the Complaint on October 4, 2002.
On October 4, 2002, BulkRegister confirmed by e-mail to the Forum that the domain name <celebrex4life.com> is registered with BulkRegister and that Respondent is the current registrant of the name. BulkRegister has verified that Respondent is bound by the BulkRegister 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 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 19, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (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 <celebrex4life.com> domain name is confusingly similar to Complainant’s CELEBREX mark.
Respondent has no rights or legitimate interests in the <celebrex4life.com> domain name.
Respondent registered and used the <celebrex4life.com> domain name in bad faith.
Respondent failed to submit a Response in this proceeding.
Complainant holds a United States Patent and Trademark Office (“USPTO”) registration for the CELEBREX mark, which is registered on the Principal Register (Reg. No. 2,307,888). Complainant has actively sought trademark protection of its CELEBREX mark in over 112 countries worldwide. Complainant started seeking trademark protection for its CELEBREX mark as early as February 10, 1998.
The CELEBREX mark was coined to denote Complainant’s arthritis drug. Complainant began receiving press for its CELEBREX arthritis medication as early as December of 1998. The CELEBREX mark and related pharmaceutical product have been widely promoted by Complainant as representing medicine intended as an anti-inflammatory analgesic. As a result of Complainant’s developmental and advertising efforts the CELEBREX mark holds a substantial amount of goodwill for Complainant. In fact, the CELEBREX mark has been praised by The New York Times and Forbes magazine as a “blockbuster arthritis drug” and as a “crown jewel in [Complainant’s] new portfolio,” respectively.
Respondent registered the domain name on November 13, 2000. Respondent has made no active use of the domain name.
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 its rights in the CELEBREX mark through proof of trademark registration with the USPTO.
Respondent’s <celebrex4life.com> domain name incorporates Complainant’s entire CELEBREX mark. The only difference between the CELEBREX mark and the <celebrex4life.com> domain name is the addition of the suffix “4life” to the mark. This “4life” suffix has a connotation that relates to Complainant’s CELEBREX medication, because the medication is promoted as improving the lifestyle of people inflicted with arthritis. Hence, the dominant portion of the <celebrex4life.com> domain name remains Complainant’s CELEBREX mark and the domain name is confusingly similar to the mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of Complainant combined with a generic word or term); see also 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).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Complainant has alleged a prima facie case, including its allegation that Respondent has no rights or legitimate interests in the <celebrex4life.com> domain name because it is not actively used. Complainant has discharged its burden under the Policy, which effectively shifts the burden on Respondent to articulate rights or legitimate interests in the <celebrex4life.com> domain name. Under Policy ¶ 4(a)(ii), Respondent has three ways to show rights or legitimate interests in a domain name. Respondent, however, has failed to submit a Response and therefore the Panel presumes that Respondent lacks rights or legitimate interests in the <celebrex4life.com> 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 Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate interests where Respondent has advanced no basis on which the Panel could conclude that it has a right or legitimate interest in the domain names, and no use of the domain names has been established).
Furthermore, since Respondent has failed to rebut the Complaint, the Panel accepts all allegations as true and will draw all reasonable 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”); 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).
Respondent has never actively used the <celebrex4life.com> domain name. Respondent has held the <celebrex4life.com> domain name for two years and has been given the opportunity to respond and provide demonstrable plans to use the domain name in this dispute. Respondent has failed to come forward and, as Complainant suggests, Respondent apparently registered the <celebrex4life.com> domain name solely based on the value of the CELEBREX mark. Passive holding of a <celebrex4life.com> domain name that contains another entity’s mark does not constitute a bona fide offering of goods or service pursuant to Policy ¶ 4(c)(i), nor does its represent a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(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 Chanel, Inc. v. Heyward, D2000-1802 (WIPO Feb. 23, 2001) (finding no rights or legitimate interests where “Respondent registered the domain name and did nothing with it”).
Respondent has no express or implied consent to use Complainant’s CELEBREX mark. Respondent has not come forward with any evidence and Complainant has alleged that Respondent is not commonly known by the <celebrex4life.com> domain name. There is no evidence to suggest otherwise, so the Panel finds that Respondent lacks rights or legitimate interests in the <celebrex4life.com> 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).
Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the <celebrex4life.com> domain name; thus, Policy ¶ 4(a)(ii) has been established.
Registration and Use in Bad Faith
A list of bad faith circumstances is found in Policy paragraph 4(b). This list, however, is merely intended to be illustrative of the types of situations bad faith may be found. Thus, it is not exhaustive and the Panel may look at the totality of circumstances upon undertaking the bad faith issue. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“the examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive”); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”).
Complainant’s CELEBREX mark is well established on an international scale. The CELEBREX mark also enjoys USPTO trademark protection as a mark registered with the Principal Register. The USPTO registration status imparts constructive knowledge of Complainant’s CELEBREX mark upon all subsequent domestic users of the mark, like Respondent. Furthermore, Respondent’s suffix “4life” suggests that Respondent had knowledge of Complainant’s CELEBREX anti-inflammatory medication. Moreover, Complainant coined the fanciful CELEBREX mark for its pharmaceutical product. Hence, it is evident Respondent had knowledge of Complainant’s interests in the CELEBREX mark prior to registering the <celebrex4life.com> domain name. Therefore, the Panel finds that Respondent registered the domain name in bad faith under Policy ¶ 4(a)(iii). See 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); see also Am. Online Inc. v. Shenzhen JZT Computer Software Co. Ltd, D2000-0809 (WIPO Sept. 6, 2000) (finding that <gameicq.com> and <gameicq.net> are obviously connected with services provided with the world-wide business of ICQ and that the use of the domain names by someone with no connection to the product suggests opportunistic bad faith); see also 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 registered the <celebrex4life.com> domain name two years ago and has not provided any content at the domain name. Respondent has not provided an explanation for the delay of website development in association with the <celebrex4life.com> domain name. In the absence of a Response and given the passive holding and substantial similarity of the <celebrex4life.com> domain name and CELEBREX mark, it can be inferred that any future use of the domain name would be an infringement upon Complainant’s interests in the mark. Inactive use of a domain name that prominently features another entity’s mark is evidence of bad faith use, and therefore the Panel finds bad faith use on the part of Respondent under Policy ¶ 4(a)(iii). See 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”); see also Alitalia–Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where Respondent made no use of the domain name in question and there are no other indications that Respondent could have registered and used the domain name in question for any non-infringing purpose).
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 <celebrex4life.com> be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: November 25, 2002
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