G.D. Searle & Co. v. T. DeMaria c/o
Boriqua Enterprizes
Claim Number: FA0210000127704
PARTIES
Complainant
is G. D. Searle & Co., Peapack,
NJ (“Complainant”) represented by Paul
D. McGrady, Jr., of Ladas &
Parry. Respondent is T. DeMaria c/o Boriqua Enterprizes,
Houston, TX (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <celebrex-back-pain.com>,
registered with Domain Bank, Inc.
PANEL
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically
on October 7, 2002; the Forum received a hard copy of the Complaint on October
4, 2002.
On
October 9, 2002, Domain Bank, Inc. confirmed by e-mail to the Forum that the
domain name <celebrex-back-pain.com>
is registered with Domain Bank, Inc. and that Respondent is the current
registrant of the name. Domain Bank, Inc. has verified that Respondent is bound
by the Domain Bank, Inc. 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 10, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of October 30, 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@celebrex-back-pain.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 21, 2002, pursuant to Complainant’s request to have the dispute
decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks
Johnson 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 makes the following
assertions:
The
domain name registered by Respondent, <celebrex-back-pain.com>, is confusingly similar to Complainant’s
registered CELEBREX mark.
Respondent has no rights or legitimate interests in
the <celebrex-back-pain.com> domain
name.
Respondent registered and used the <celebrex-back-pain.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
FINDINGS
Complainant, G.D. Searle & Co., holds
two domestic trademarks for the CELEBREX mark (U.S. Reg. Nos. 2,321,622 and
2,307,888). Complainant registered these marks on February 22, 2000 and January
11, 2000, respectively, on the Principal Register of the United States Patent
and Trademark Office (“USPTO”) and has used them in commerce since at least
February of 1999. Complainant has also applied for or received trademark
registrations in more than 112 countries worldwide.
Complainant adopted the use of its
distinctive CELEBREX mark to market “pharmaceutical products in the nature of
anti-inflammatory analgesics” in a global campaign for its anti-arthritic
medicine. Under the CELEBREX mark, Complainant receives billions of dollars in
annual sales.
Respondent, T. DeMaria c/o Boriqua
Enterprizes, registered the <celebrex-back-pain.com>
domain name on February 2, 2000, but is not licensed or otherwise
authorized to use the CELEBREX mark for any purpose. Respondent’s website has posted
no content since its registration some two and one half years ago.
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 Complainant's undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
will draw such inferences as it considers appropriate pursuant to paragraph
14(b) of the Rules.
Paragraph
4(a) of the Policy requires that 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 to and/or Confusingly Similar
Complainant established in this
proceeding that it has rights in the CELEBREX mark through registration on the
Principal Register of the USPTO, as well as by continuous and widespread
international use of the mark. Complainant’s use of its fanciful and registered
CELEBREX mark demonstrates that it has sufficient rights in the mark to bring
this Complaint against Respondent.
The domain name registered by Respondent,
<celebrex-back-pain.com>, is
confusingly similar to Complainant’s fanciful CELEBREX mark. The only
difference between Respondent’s domain name and Complainant’s registered mark
is the addition of the top-level domain “.com” after the mark and the addition
of the descriptive phrase “back-pain.” As top-level domains are a standard
feature for any domain name, its addition does not prevent a finding of
confusing similarity. See Busy
Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding
that "the addition of the generic top-level domain (gTLD) name ‘.com’ is .
. . without legal significance since use of a gTLD is required of domain name
registrants"); see also Visit
Am., Inc. v. Visit Am., FA 95093 (Nat. Arb. Forum Aug. 14, 2000) (finding
that the “.com” is part of the Internet address and does not add source
identity significance).
The addition of the descriptive phrase
“back-pain” to Complainant’s registered CELEBREX mark also fails to
sufficiently differentiate the disputed domain name from Complainant’s mark.
The dominant feature of the disputed domain name remains Complainant’s fanciful
CELEBREX mark, while the descriptive phrase “back-pain” is only illustrative of
the type of medical symptom that Complainant’s product was designed to
alleviate. 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
Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum
Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is
confusingly similar to Complainant’s HOYLE mark, and that the addition of
“casino,” a generic word describing the type of business in which Complainant
is engaged, does not take the disputed domain name out of the realm of
confusing similarity).
Accordingly, the Panel finds that the <celebrex-back-pain.com> domain
name is confusingly similar to Complainant’s registered and distinctive
CELEBREX mark under Policy ¶ 4(a)(i).
Rights to or Legitimate Interests
The burden of proving a lack of rights or
legitimate interests in a domain name rests initially upon Complainant. Under
Policy ¶¶ 4(c)(i)-(iii), Respondent can rely on a “bona fide offering of goods
or services” connected with the disputed domain name, the fact that it has been
“commonly known by the domain name,” or that it is making a “legitimate
noncommercial or fair use of the domain name” to demonstrate a right or
legitimate interest in a domain name. If Complainant rebuts each of these
elements, it has satisfied its burden by successfully addressing any of the
specified claims Respondent could make under Policy ¶¶ 4(c)(i)-(iii), thereby
shifting the burden to Respondent. 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 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).
Respondent’s
failure to respond to the Complaint is further evidence of a lack of legitimate
rights and interests in its domain name. See Clerical Med. Inv.
Group Ltd. v. Clericalmedical.com,
D2000-1228 (WIPO Nov. 28, 2000) (finding that under certain circumstances the
mere assertion by Complainant that Respondent has no right or legitimate
interest is sufficient to shift the burden of proof to Respondent to
demonstrate that such a right or legitimate interest does exist); see also 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).
Respondent has made no use of the
infringing domain name for more than two and one half years. In registering an
infringing domain name that is confusingly similar with Complainant’s
registered and distinctive mark, while failing to make any use of the domain name,
Respondent is not making a bona fide offering of goods or services and is not
making a legitimate noncommercial or fair use of the domain name under Policy
¶¶ 4(c)(i) and (iii). See 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 Ziegenfelder Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14,
2000) (finding that failure to provide a product or service or to develop the
site demonstrates that Respondents have not established any rights or
legitimate interests in the domain name); see also LFP, Inc. v. B & J
Props., FA 109697 (Nat. Arb. Forum May 30, 2002) (finding that, “the Panel
would not only need to excuse the Respondent’s past 2+ year delay but also
sanction that delay to extend for an indefinite amount of time into the future.
This the Panel will not do”).
Furthermore, given the fanciful nature of
Complainant’s registered CELEBREX mark, it is doubtful that Respondent could
find a legitimate noncommercial fair use of the disputed domain name, or offer
any bona fide goods or services under it. The very nature of Complainant’s mark
shifts the burden to Respondent to prove rights or interests in the infringing
domain name. See 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); see also Body Shop Int’l PLC v. CPIC NET &
Hussain, D2000-1214 (Nov. 26, 2000) (finding bad faith where (1) Respondent
failed to use the domain name and (2) it is clear that Respondent registered
the domain name as an opportunistic attempt to gain from the goodwill of the
Complainant).
As Respondent offered no submission in
this dispute, the Panel draws all appropriate inferences in favor of
Complainant’s submitted facts, and finds that Complainant adequately met its
burden under Policy ¶¶ 4(c)(i) and (iii). See 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); see
also Ziegenfelder Co. v. VMH Enter.,
Inc., D2000-0039 (WIPO Mar. 14, 2000) (drawing two inferences based on
Respondent’s failure to respond: (1) that Respondent does not deny the facts
asserted by Complainant, and (2) Respondent does not deny conclusions that
Complainant asserts can be drawn from the facts).
Complainant has not given Respondent
permission or consent to use its CELEBREX mark and Respondent is not “commonly
known by” the name CELEBREX-BACK-PAIN or <celebrex-back-pain.com>. Furthermore, as Complainant’s mark
is a fanciful term, specifically coined by Complainant, it is doubtful that
anyone other than Complainant could claim to be “commonly known by” the name. See
Stork Rest. 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"). In light of Respondent’s
failure to offer any evidence that it has ever been commonly known by the disputed
domain name, the Panel concludes that Respondent has no rights or legitimate
interests in the disputed domain name under Policy ¶ 4(c)(ii). See RMO,
Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting
Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known
by the domain name prior to registration of the domain name to prevail").
Accordingly, the Panel finds that
Respondent does not have any rights or legitimate interests in the domain name
under Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
While the
Policy lists four examples that will equate to bad faith use and registration
of a domain name, that list is not exclusive. 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 Home Interiors & Gifts, Inc. v. Home
Interiors, D2000-0010 (WIPO Mar. 7, 2000) (“[J]ust because Respondent’s
conduct does not fall within the ‘particular’ circumstances set out in ¶4(b),
does not mean that the domain names at issue were not registered in and are not
being used in bad faith”).
One such example of bad faith
registration not enumerated in the Policy is registration of an infringing
domain name when Respondent had constructive or actual notice of Complainant’s
mark prior to registration. See Pfizer, Inc. v. Papol Suger, D2002-0187
(WIPO Apr. 24, 2002) (finding that because the link between Complainant’s mark
and the content advertised on Respondent’s website was obvious, Respondent
“must have known about the Complainant’s mark when it registered the subject
domain name”); see also 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). In this dispute, Respondent could only have registered a domain name
that included Complainant’s fanciful mark in its entirety, along with a phrase
describing Complainant’s product, with knowledge of Complainant’s mark. The
Panel finds that Respondent’s registration of <celebrex-back-pain.com> was committed with actual knowledge of Complaint’s mark and was done in
bad faith.
Respondent’s
passive holding of the disputed domain name for more than two and a half years
also evidences bad faith use. See Mondich & Am. Vintage Wine
Biscuits, Inc. v. Brown,
D2000-0004 (WIPO Feb. 16, 2000) (holding that Respondent’s failure to develop
its website in a two year period raises the inference of registration in bad
faith); 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”); 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). As Respondent submitted no plan for the domain name to the contrary,
the Panel concludes that Respondent has no good faith use planned for the
disputed domain name and is holding the domain passively, which equates to use
of the domain name in bad faith. See Charles
Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it
appropriate for the Panel to draw adverse inferences from Respondent’s failure
to reply to 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).
Accordingly, the Panel finds that
Respondent both registered and used the domain name in bad faith under Policy ¶
4(a)(iii).
DECISION
Having established all three elements
under ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.
Accordingly, it is Ordered that the <celebrex-back-pain.com> domain
name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks
Johnson, Panelist
Dated: December 4, 2002.
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