G.D. Searle & Co. v. Zyphen Marketing
Claim Number: FA0212000137036
PARTIES
Complainant is G.D.
Searle & Co., Skokie, IL (“Complainant”) represented by Paul D.
McGrady, of Ladas & Parry. Respondent is Zyphen Marketing, Las Vegas, NV
(“Respondent”).
REGISTRAR AND DISPUTED
DOMAIN NAME
The domain name at issue
is <celebrex-arthritis.com>, registered with BulkRegister.com,
Inc.
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.
Honorable Paul A. Dorf
(Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant submitted a
Complaint to the National Arbitration Forum (the “Forum”) electronically on December
10, 2002; the Forum received a hard copy of the Complaint on December 11, 2002.
On December 10, 2002,
BulkRegister.com, Inc. confirmed by e-mail to the Forum that the domain name <celebrex-arthritis.com>
is registered with BulkRegister.com, Inc. and that Respondent is the current
registrant of the name. BulkRegister.com, Inc. has verified that Respondent is
bound by the BulkRegister.com, 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 December 12, 2002, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of January 2, 2003 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-arthritis.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 January 9, 2003,
pursuant to Complainant’s request to have the dispute decided by a
single-member Panel, the Forum appointed Honorable Paul A. Dorf (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:
1. Respondent’s <celebrex-arthritis.com>
domain name is confusingly similar to Complainant’s CELEBREX mark.
2. Respondent does not have
any rights or legitimate interests in the <celebrex-arthritis.com> domain
name.
3. Respondent registered
and used the <celebrex-arthritis.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, Zyphen
Marketing, registered the <celebrex-arthritis.com> domain name on
June 15, 1999 and is not licensed or otherwise authorized by Complainant to
make use of the CELEBREX mark for any purpose. Respondent’s website has posted
no content since its registration over three and a 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 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 in this proceeding that it has rights in its CELEBREX mark through
registration on the Principal Register of the USPTO as well as by continuous
and widespread use of the mark worldwide.
Respondent’s <celebrex-arthritis.com> domain
name is confusingly similar to Complainant’s fanciful CELEBREX mark. The
dominant feature of the disputed domain name is Complainant’s mark, which the
domain name incorporates in its entirety. The only distinguishing
characteristic is the addition of the word “arthritis,” a word which describes
the malady that Complainant’s drug was designed to combat. The addition of this
word cannot prevent a finding of confusing similarity by the Panel. 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-arthritis.com> domain name is confusingly
similar to Complainant’s fanciful CELEBREX mark under Policy ¶ 4(a)(i).
Rights or Legitimate
Interests
In the present dispute,
Respondent’s lack of a response to the Complaint will be viewed by the Panel as
evidence that it lacks rights and legitimate interests in the disputed 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 BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By
not submitting a response, Respondent has failed to invoke any circumstance
which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or
legitimate interests in the domain name”).
Along with Respondent’s
failure to submit a Response, Complainant can actively demonstrate Respondent’s
lack of rights or legitimate interests in the domain name with a showing that
Respondent does not qualify for the protections offered under Policy ¶
4(c)(i)-(iii). Upon such a showing, Complainant will have successfully met its
burden, shifting the onus to Respondent to rebut Complainant’s allegations. 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 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”).
Respondent has made no
use of the <celebrex-arthritis.com> domain name; as such, it
cannot be said to be making a bona fide offering of goods or services under the
domain name, nor can it be said to be making a legitimate noncommercial or fair
use of the domain name. In these circumstances, Policy ¶ 4(c)(i) and (iii) are
inapplicable to Respondent. See Vestel Elektronik Sanayi ve Ticaret AS v.
Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (finding that “merely registering
the domain name is not sufficient to establish rights or legitimate interests
for purposes of paragraph 4(a)(ii) of the Policy”); 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).
Complainant coined the
fanciful CELEBREX name for use in conjunction with its anti-arthritic
medication. Given the nature of the mark, and Respondent’s lack of response,
the Panel finds that Respondent has never been “commonly known by” the name <celebrex-arthritis.com>,
CELEBREX-ARTHRITIS, or any derivative of Complainant’s CELEBREX mark. Policy ¶
4(c)(ii) is likewise inapplicable to Respondent. 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); 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"); see
also 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 rights or legitimate interests in the <celebrex-arthritis.com>
domain name under Policy ¶ 4(a)(ii).
Registration and Use in
Bad Faith
Respondent has not used
the <celebrex-arthritis.com> domain name since its registration
over three and a half years ago. Nothwithstanding the fact that this Panel
doubts Respondent could find a good faith use for the domain name, or that it
initially registered the domain name in good faith, such passive holding
equates to bad faith use and registration 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).
Accordingly, the Panel
finds that Respondent registered and used the <celebrex-arthritis.com>
domain name in bad faith, and Policy ¶ 4(a)(iii) is satisfied.
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-arthritis.com> domain name be TRANSFERRED
from Respondent to Complainant.
Honorable Paul A. Dorf
(Ret.) Panelist
Dated: January 13, 2003
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