G.D. Searle & Co. v. David Gregg
Claim Number: FA0210000128077
PARTIES
Complainant
is G.D. Searle & Co., Skokie, IL
(“Complainant”) represented by Paul D.
McGrady, Jr., of Ladas & Parry. Respondent is David Gregg, Riverside, CA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <guide-to-celebrex.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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on October 15, 2002; the Forum received a hard copy of the
Complaint on October 16, 2002.
On
October 16, 2002, ItsYourDomain.com confirmed by e-mail to the Forum that the
domain name <guide-to-celebrex.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 17, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of November 6, 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@guide-to-celebrex.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
December 2, 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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
The
<guide-to-celebrex.com> domain
name is confusingly similar to Complainant’s CELEBREX mark.
Respondent
has no rights or legitimate interests in the <guide-to-celebrex.com> domain name.
Respondent
registered and used the <guide-to-celebrex.com>
domain name in bad faith.
B.
Respondent
Respondent failed to submit a Response in
this proceeding.
FINDINGS
Complainant, G.D. Searle, 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 Complainant’s registration is
U.S. Patent and Trademark Office 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 and 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 coined the CELEBREX mark for
use in connection with its “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 substantial advertising resources expended on the CELEBREX mark,
it 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 domain name on
August 2, 2002. Respondent has yet to
develop a website with content in association with the subject domain
name.
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 standing by
submitting proof of its trademark registrations for the CELEBREX mark. In addition, Complainant has extensively
used the fanciful CELEBREX mark in commerce since adopting it in 1998.
Respondent’s <guide-to-celebrex.com> domain name incorporates Complainant’s
entire CELEBREX mark with the mere addition of the prefix “guide-to.” The prefix adds no distinguishing qualities
to the <guide-to-celebrex.com> domain
name because it merely suggests that information about the CELEBREX medication
can be found at the domain name address.
Since the prefix is suggestive of Complainant’s fanciful CELEBREX mark,
the dominant portion of the <guide-to-celebrex.com>
domain name remains the mark
itself. Therefore, Respondent’s <guide-to-celebrex.com> domain
name is confusingly similar to Complainant’s CELEBREX mark. See Quixtar Inv., Inc. v. Smithberger and QUIXTAR-IBO, D2000-0138 (WIPO
Apr. 19, 2000) (finding that because the domain name
<quixtar-sign-up.com> incorporates in its entirety Complainant’s
distinctive mark, QUIXTAR, the domain name is confusingly similar); see also
Am. Online, Inc. v. iDomainNames.com,
FA 93766 (Nat. Arb. Forum Mar. 24, 2000) (finding that Respondent’s domain name
<go2AOL.com> was confusingly similar to Complainant’s AOL mark).
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Rights or Legitimate Interests
Complainant carries the initial burden of
establishing Respondent’s lack of rights and legitimate interests in the <guide-to-celebrex.com> domain
name under Policy ¶ 4(a)(ii). Complainant
has fulfilled its burden by alleging and arguing Respondent has no such right
or interests pursuant to Policy ¶¶ 4(c)(i)-(iii). Hence, the burden shifts to Respondent to come forward and
produce evidence showing its rights or legitimate interests in the <guide-to-celebrex.com> domain
name. Respondent has failed to even
submit a Response. Therefore, the Panel
presumes that Respondent has no such rights or legitimate interests. 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 does not use the <guide-to-celebrex.com> domain
name in connection with a website.
Respondent is merely holding onto the registration rights in the <guide-to-celebrex.com> domain
name. Respondent only registered the <guide-to-celebrex.com> domain
name four months ago, and such a short amount of time is usually not sufficient
to find passive holding lack of rights or legitimate interests. Normally, a respondent is afforded a grace
period to develop a use for the domain name because website development may
demand time and the accumulation of resources.
It is taken into account that registering a domain name is a part of a
business process and the creation of content associated with a domain name may
take some time and effort. However,
Complainant actively seeks protection of its valuable CELEBREX mark and by
bringing a Complaint the duty of establishing demonstrable business plans in
connection with the <guide-to-celebrex.com>
domain name is on Respondent. Since
Respondent has not come forward, all reasonable inferences of fact from the
Complaint will be accepted as true and drawn 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).
The circumstances of the present case
permit the Panel to infer that Respondent lacks rights or legitimate interests
in the <guide-to-celebrex.com> domain
name because of its inactive use.
First, the <guide-to-celebrex.com>
domain name predominantly displays Complainant’s fanciful CELEBREX mark
along with a suggestive phrase. Since
Complainant coined the CELEBREX mark, it is hard to imagine a non-infringing
use of the domain name by Respondent.
Second, Respondent has not come forward to provide evidence of a planned
use that would not infringe on Complainant’s fanciful CELEBREX mark. Since Complainant has sufficiently
challenged Respondent’s interests in the domain name, the Panel need not wait
for an infringing use to develop in order to find that no possible valid use of
the domain name exists. Therefore, the
strength of Complainant’s mark and Respondent’s failure to defend its interests
allow the Panel to conclude that Respondent has no rights or legitimate
interests pursuant to Policy ¶¶ 4(c)(i) and (iii). See 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"); see also Phat Fashions v. Kruger, FA 96193 (Nat.
Arb. Forum Dec. 29, 2000) (“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”).
Furthermore, the CELEBREX mark was
specifically adopted by Complainant to denote its arthritis medication, and
therefore, it is highly unlikely that Respondent is known by any confusingly
similar version of the mark, such as the <guide-to-celebrex.com>
domain name. Respondent has not
argued that it is commonly known by the <guide-to-celebrex.com>
domain name. The only information
about Respondent’s identity is provided by the WHOIS information submitted by
Respondent, which identifies Respondent as David Gregg. Therefore, the Panel finds that Respondent
lacks rights or legitimate interests in the <guide-to-celebrex.com> domain name pursuant to 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 has no rights or legitimate interests in the domain name; thus,
Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
A list of circumstances that warrant a
finding of bad faith can be found in Policy paragraph 4(b). This list is intended to be a guide to the
bad faith analysis but it is merely illustrative. Hence, the Panel is permitted to look at the totality of
circumstances while conducting a bad faith analysis. 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 has actively sought trademark
protection of its CELEBREX mark since its inception, as evidenced by registration
of the mark in over 112 countries. The
CELEBREX mark enjoys protection by the USPTO under the Principal Register. This trademark registration imparts
constructive knowledge upon all secondary users, such as Respondent, of the
CELEBREX mark. Respondent had a duty to
clear the rights in its <guide-to-celebrex.com>
domain name prior to registering it.
A rudimentary trademark search would have produced evidence showing
Complainant’s interest in the CELEBREX mark.
Furthermore, as previously mentioned, Complainant adopted the CELEBREX
mark for exclusive use in connection with its arthritis medication. Thus, it is highly unlikely that Respondent
randomly selected the term for use in the <guide-to-celebrex.com>
domain name without knowledge of Complainant’s preexisting rights. Therefore, the Panel concludes that
Respondent clearly registered the <guide-to-celebrex.com>
domain name with knowledge of Complainant’s interests in the CELEBREX mark,
which constitutes bad faith registration under Policy ¶ 4(a)(iii). See Orange Glo Int’l v. Jeff Blume,
FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is
listed on the Principal Register of the USPTO, a status that confers
constructive notice on those seeking to register or use the mark or any
confusingly similar variation thereof”); 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).
Respondent’s lack of use of the <guide-to-celebrex.com> domain
name, and previously mentioned failure to come forward with demonstrable plans
to use the domain name, allows the Panel to infer that the domain name could
not be used for any non-infringing purpose.
Hence, the Panel finds Respondent’s inactive use, failure to provide
evidence of a valid planned use and surrounding circumstances warrants a
finding of bad faith use. See Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely
holding an infringing domain name without active use can constitute use in bad
faith); see also E. & J. Gallo
Winery v. Oak Inv. Group, D2000-1213 (WIPO Nov. 12, 2000) (finding bad
faith where (1) Respondent knew or should have known of Complainant’s famous
GALLO marks and (2) Respondent made no use of the domain name
<winegallo.com>); see also ”); 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.
DECISION
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 <guide-to-celebrex.com>
be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated: December 4, 2002
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