G.D. Searle & Co. v. Balloon Junction
Marketing
Claim Number: FA0210000128144
PARTIES
Complainant
is G.D. Searle & Co., Skokie, IL
(“Complainant”) represented by Paul D.
McGrady, Jr., of Ladas & Parry. Respondent is Balloon Junction Marketing, Pasadena, CA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <celebrex-prescriptions-information.org>,
registered with Bulkregister.
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 15, 2002, Bulkregister confirmed by e-mail to the Forum that the domain
name <celebrex-prescriptions-information.org>
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 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@celebrex-prescriptions-information.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 25, 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 makes the following
assertions:
Respondent’s
<celebrex-prescriptions-information.org>
domain name is confusingly similar
to Complainant’s registered CELEBREX mark.
Respondent does not have any rights or legitimate
interests in the <celebrex-prescriptions-information.org> domain
name.
Respondent registered and used the <celebrex-prescriptions-information.org>
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, Balloon Junction Marketing,
registered the <celebrex-prescriptions-information.org>
domain name on March 19, 2002 and is not licensed or otherwise authorized
to make use of the CELEBREX mark for any purpose. Respondent uses its website
to solicit drug orders for VIAGRA.
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.
Complainant has established rights in its
CELEBREX mark through registration on the Principal Register of the USPTO, as
well as via continuous and widespread use of the mark worldwide. Complainant’s consistent use of its fanciful
CELEBREX mark demonstrates that it has sufficient rights in the mark to bring
this Complaint against Respondent. See
Wal-Mart Stores, Inc. v. MacLeod,
D2000-0662 (WIPO Sept. 19, 2000) (finding that the failure of the Complainant
to register all possible domain names that surround its substantive mark does
not hinder Complainant’s rights in the mark.
“Trademark owners are not required to create ‘libraries’ of domain names
in order to protect themselves”).
Respondent’s <celebrex-prescriptions-information.org> domain name is
confusingly similar to Complainant’s fanciful CELEBREX mark. The only difference between Respondent’s
domain name and the registered mark of Complainant is the addition of the
top-level domain “.org” after the mark and the addition of the descriptive
phrase “prescriptions-information.” As
top-level domains are a required feature for each domain name, the “.org” in
the disputed domain name 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., FA95093
(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
“prescriptions-information” to Complainant’s registered CELEBREX mark also
fails to sufficiently differentiate the disputed domain name from Complainant’s
mark. As Complainant’s CELEBREX is a
pharmaceutical product, this phrase implies to an Internet user that
Respondent’s website is somehow affiliated with or licensed by
Complainant. The dominant feature of
the disputed domain name remains Complainant’s fanciful CELEBREX mark, while
the additional phrase only adds confusion to the established similarity between
the domain name and Complainant’s mark.
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 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 the Complainant combined with a generic
word or term).
Accordingly, the Panel finds that the <celebrex-prescriptions-information.org>
domain name is confusingly similar to Complainant’s registered and
distinctive CELEBREX mark under Policy ¶ 4(a)(i).
The burden of proving a lack of rights or
legitimate interests in a domain name rests initially upon a complainant. Under Policy ¶¶ 4(c)(i)-(iii), a 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 a complainant rebuts each of
these elements, it has satisfied its burden by successfully addressing any of
the specified claims a respondent could make under Policy ¶¶ 4(c)(i)-(iii),
thereby shifting the burden to the respondent.
See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct.
1, 2002) (holding where a 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 evidence of a lack of rights and
legitimate interests in the <celebrex-prescriptions-information.org> 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 uses the infringing domain
name to solicit drug orders for the prescription drug VIAGRA. In registering an
infringing domain name that is confusingly similar to Complainant’s registered
and distinctive mark for its commercial operation in a similar industry,
namely, drug sales, Respondent is not making a bona fide offering of goods or
services, or legitimate noncommercial or fair use of the domain name under
Policy ¶¶ 4(c)(i) and (iii). See
G.D. Searle & Co. v. Fred Pelham, FA117911 (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, FA112559 (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)); see also Big Dog
Holdings, Inc. v. Day, FA93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no
legitimate use when Respondent was diverting consumers to its own website by
using Complainant’s trademarks).
Complainant has not authorized Respondent
to use its CELEBREX mark and Respondent’s contact information implies that it
is not “commonly known by” the name CELEBREX-PRESCRIPTIONS-INFORMATION or <celebrex-prescriptions-information.org>.
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” a derivative of the mark. 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"). 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, FA96949 (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 <celebrex-prescriptions-information.org>
domain name under Policy ¶ 4(a)(ii).
Registering and using an infringing
domain name to “intentionally attempt to attract, for commercial gain, Internet
users…by creating a likelihood of confusion…as to the source, sponsorship,
affiliation, or endorsement of…a product of service on your website,”
exemplifies bad faith under Policy ¶ 4(b)(iv).
In the present dispute, Respondent’s <celebrex-prescriptions-information.org> domain name, used to solicit offers for the
drug VIAGRA, fits sqaurely within this provision of the Policy. By registering a domain name that infringes
on Complainant’s mark, and using that domain name to gain commercial profit
from drug sales, Respondent both registered and used its domain name in bad
faith. See Fossil Inc. v.
NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that Respondent
acted in bad faith by registering the domain name <fossilwatch.com> and
using it to sell various watch brands); see also Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 WIPO Apr. 22,
2000) (finding bad faith where Respondent attempted to attract customers to its
website, <efitnesswholesale.com>, and created confusion by offering
similar products for sale as Complainant); see also G.D. Searle & Co. v.
Fred Pelham, FA117911 (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).
Furthermore, registration of an infringing domain name
when Respondent had constructive or actual notice of Complainant’s mark prior
to registration is evidence of bad faith 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-prescriptions-information.org>
was committed with actual knowledge
of Complaiant’s mark, and was done in bad faith.
Accordingly, the Panel finds that
Respondent registered and used the <celebrex-prescriptions-information.org>
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-prescriptions-information.org>
domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated: December 1, 2002
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