G.D. Searle
& Co. v. Celebrex Medication
Claim
Number: FA0302000146219
Complainant is
G.D. Searle & Co., Skokie, IL (“Complainant”) represented
by Paul D. McGrady, of Ladas & Parry. Respondent is
Celebrex Medication, Pasadena, CA (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <celebrex-medication.com>, registered with
Bulkregister.Com, Inc.
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known conflict in serving as
Panelist in this proceeding.
Tyrus
R. Atkinson, Jr., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on February 18, 2003; the Forum received a hard copy of the
Complaint on February 19, 2003.
On
February 19, 2003, Bulkregister.Com, Inc. confirmed by e-mail to the Forum that
the domain name <celebrex-medication.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
February 19, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of March 11, 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-medication.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
March 18, 2003, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., 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.
A. Complainant makes the following assertions:
1. Respondent’s <celebrex-medication.com>
domain name is confusingly similar to Complainant’s CELEBREX mark.
2. Respondent does not have any rights or
legitimate interests in the <celebrex-medication.com> domain name.
3. Respondent registered and used the <celebrex-medication.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
G.D. Searle, is the holder of numerous registrations and applications for the
CELEBREX trademark. Complainant has filed applications to register the CELEBREX
mark in more than 112 countries. More specifically, Complainant holds U.S.
Patent and Trademark Office (“USPTO”) Reg. No. 2,321,622 for the CELEBREX mark,
registered on the Principal Register on February 22, 2000. Complainant’s
CELEBREX mark denotes “pharmaceutical products in the nature of
anti-inflammatory analgesics.”
Complainant has
made extensive use of the CELEBREX mark through marketing anti-arthritic
medicine internationally under the moniker. Due to Complainant’s extensive
marketing and advertising, the CELEBREX mark has earned worldwide notoriety for
the purpose of protection under the Paris Convention[1]
and the U.S. Trademark Dilution Act.[2]
Complainant’s
CELEBREX mark began receiving extensive media attention as early as February
10, 1998 in the United States and abroad.
Respondent,
Celebrex Medication, registered the <celebrex-medication.com> domain
name on February 12, 2002. Complainant’s investigation of Respondent reveals
that Respondent’s domain name resolves to a website that solicits drug orders
from Internet users. Respondent is not licensed or authorized to make use of
Complainant’s CELEBREX mark.
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
draw such inferences 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.
Complainant has
established rights in the CELEBREX mark by successfully registering the mark
with the USPTO and other internationally authorized trademark authorities.
Complainant has continuously used the CELEBREX mark in connection with the
marketing of the anti-arthritic product since at least 1998.
Respondent’s <celebrex-medication.com>
domain name is confusingly similar to Complainant’s CELEBREX mark. Respondent’s
second-level domain incorporates Complainant’s fanciful mark in its entirety
and adds the word “medication,” a term of significant relevance because it
describes Complainant’s CELEBREX product. The addition of an industry-related
word to a famous mark fails to create a distinguishable domain name under
Policy ¶ 4(a)(i), and increases confusion among Internet users. Because
Complainant’s mark constitutes the focus of Respondent’s domain name, the
domain name is rendered confusingly similar under Policy ¶ 4(a)(i). 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 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).
Additionally,
because top-level domains (such as “.com”) are required in domain names, their
presence is inconsequential when determining if a domain name infringes on a
mark under the Policy. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding
<pomellato.com> identical to Complainant’s mark because the generic
top-level domain “.com” after the name POMELLATO is not relevant).
Accordingly,
the Panel finds that Policy ¶ 4(a)(i) is satisfied.
Respondent
failed to submit a Response in this proceeding and Complainant’s assertions are
unopposed. Because Complainant’s submission constitutes a prima facie case, Respondent has an obligation to rebut
Complainant’s supported arguments and to present circumstances that
substantiate its rights and legitimate interests in the domain name. 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 with respect to 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”).
The
Panel may draw such inferences as it considers appropriate if a respondent
fails to submit a response. Because Respondent failed to respond, all
inferences in the Complaint may be accepted as true, unless clearly
contradicted by the evidence. See
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); 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).
Complainant has
submitted uncontested evidence that indicates Respondent’s <celebrex-medication.com>
domain name resolves to a commercial website that solicits drug orders from
interested Internet users. Respondent’s unauthorized use of Complainant’s
CELEBREX mark to generate Internet interest in its pharmaceutical sales fails
to establish rights or legitimate interests in the domain name under Policy ¶¶
4(c)(i) or (iii). See G.D. Searle & Co. v. Fred Pelham, FA 117911
(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,
FA 112559 (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)).
Although
Respondent is listed as “Celebrex Medication” in BulkRegister.Com’s
registration agreement, the Panel finds Respondent’s representation insincere.
Complainant remains the senior user of the CELEBREX mark and there is no
evidence that indicates Respondent is authorized or licensed to use the mark in
a domain name. Because Complainant’s mark is fanciful and famous, there is a
presumption that Respondent is not commonly known by a domain name that
incorporates the CELEBREX mark. Therefore, Respondent fails to establish rights
in the <celebrex-medication.com> domain name under Policy ¶
4(c)(ii). See Compagnie de Saint
Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no
rights or legitimate interest where Respondent was not commonly known by the
mark and never applied for a license or permission from Complainant to use the
trademarked name); see also Charles
Jourdan Holding AG v. AAIM, D2000-0403 (WIPO
June 27, 2000) (finding no rights or legitimate interests where (1) Respondent
is not a licensee of Complainant; (2) Complainant’s prior rights in the domain
name precede Respondent’s registration; (3) Respondent is not commonly known by
the domain name in question).
Accordingly, the
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
registered the <celebrex-medication.com> domain name in bad faith
because it had constructive knowledge of Complainant’s rights in the mark prior
to registering the infringing domain name. Complainant’s CELEBREX mark is a
coined term, referring only to Complainant’s product. Fanciful
marks are referred to as the “strongest” of all marks, in that their novelty
creates a substantial impact on the buyer’s mind, if sufficiently advertised
and recognized. Being a “strong” mark holds
significance in that the mark will then be given an expansive scope of judicial
protection into different product or geographical markets and as to more
variations of format. McCarthy on Trademarks and Unfair Competition,
§ 11:6 (4th Ed. 2002). Because Complainant’s mark is fanciful and is
registered on the Principal Register of the USPTO, Respondent had constructive
notice of Complainant’s claim of ownership. Respondent’s subsequent
registration of the subject domain name, despite knowledge of Complainant’s
rights, constitutes bad faith registration under Policy ¶ 4(a)(iii). See 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); see also 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”).
Respondent’s bad
faith use of the domain name is articulated under Policy ¶ 4(b)(iv).
Complainant has provided the Panel with uncontested evidence that indicates
Respondent is using the <celebrex-medication.com> domain name to
solicit drug orders over the Internet. Respondent is opportunistically trading
on the fame of Complainant’s mark by incorporating the mark in its entirety
into an infringing domain name; therefore, Respondent’s actions constitute bad
faith use pursuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co. v.
Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that
Respondent registered and used the domain name in bad faith pursuant to Policy
¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to
attract Internet users to its commercial website where it solicited
pharmaceutical orders); see also Chanel,
Inc. AG v. Designer Exposure, D2000-1832 (WIPO Feb. 15, 2001) (finding that
Respondent's registration and use of the famous CHANEL mark suggests
opportunistic bad faith).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <celebrex-medication.com> domain name be TRANSFERRED
from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated:
March 25, 2003
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[1] The Paris Convention for the Protection of Industrial Property: An agreement concluded in 1883 and updated several times since. It provides common rules between the member states for designs and other forms of intellectual property; an international treaty that enables residents of member countries to file patent applications in other member countries.
[2] A mark that commands a wide degree of familiarity receives special protection under the Federal Trademark Dilution Act. The Act specifies that when determining whether or not a mark is famous, the following factors should be considered: (1) the degree of inherent or acquired distinctiveness in the mark; (2) the duration and extent of use of the mark in connection with the goods or services on which the mark is used; (3) the duration and extent of advertising and publicity of the mark; (4) the geographical extent of the trading area in which the mark is used; (5) the channels of trade for the goods or services with which the mark is used; (6) the degree of recognition of the mark in the trading areas and channels of trade used by the marks' owner and the person against whom the injunction is sought; (7) the nature and extent of use of the same or similar marks by third parties; and (8) whether the mark was registered under the Act of March 3, 1881, or the Act of February 20, 1905, or on the Principal Register. (15 U.S.C. § 1125(c)(1)(a-h)).