G.D. Searle & Co. v. James Mahony
Claim Number: FA0204000112559
PARTIES
Complainant
is G.D. Searle & Co., Skokie, IL
(“Complainant”) represented by Paul D.
McGrady, of Ladas & Parry. Respondent is James Mahony, Roslindale, MA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <e-viagra-xenical-celebrex-propecia.com>,
registered with iaregistry.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.
James
A. Carmody, Esq., as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on April 29, 2002; the Forum received a hard copy of the
Complaint on April 30, 2002.
On
April 29, 2002, iaregistry.com confirmed by e-mail to the Forum that the domain
name <e-viagra-xenical-celebrex-propecia.com>
is registered with iaregistry.com and that Respondent is the current registrant
of the name. iaregistry.com has
verified that Respondent is bound by the iaregistry.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
May 1, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of May 21,
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@e-viagra-xenical-celebrex-propecia.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
May 31, 2002, pursuant to Complainant’s request to have the dispute decided by
a single-member Panel, the Forum appointed James A. Carmody, Esq., 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
1.
The
disputed domain name <e-viagra-xenical-celebrex-propecia.com>
is confusingly similar to
Complainant’s CELEBREX mark.
2.
Respondent has no rights or legitimate interests in the disputed domain
name.
3.
Respondent registered and used the disputed domain name in bad faith.
B.
Respondent did not submit a Response in this proceeding.
FINDINGS
Complainant holds U.S. Patent and Trademark Office
Registration No. 2,307,888 issued February 2000 for the CELEBREX mark.
Complainant also holds international rights in the CELEBREX mark and is
pursuing 112 ongoing registration applications worldwide.
The CELEBREX
mark is used to market pharmaceutical products in the nature of
“anti-inflammatory analgesics” throughout the world. The drug that CELEBREX
denotes has been referred to as a “blockbuster arthritis drug” and a “crown
jewel in Pharmacia’s new portfolio” by the New York Times and Forbes,
respectively. Complainant began its media campaign to market the
anti-inflammatory analgesics, using the CELEBREX mark, as early as December
1998. Complainant’s active marketing tactics have led to worldwide notoriety of
the CELEBREX mark.
Respondent registered the contested
domain name on January 29, 2002 and has been using it in conjunction with a
website that sells pharmaceutical products of the Complainant and the
Complainant’s competitors.
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 the
Respondent is identical or confusingly similar to a trademark or service mark
in which the Complainant has rights; and
(2) the 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.
The disputed domain name is confusingly
similar to Complainant’s registered CELEBREX mark because it incorporates the
Complainant’s entire mark with the addition of competitors’ marks and the
letter “e.”
Complainant’s CELEBREX mark is
incorporated in Respondent’s disputed domain name in its entirety. The
contested <e-viagra-xenical-celebrex-propecia.com>
domain name merely includes the addition of related industry-specific
words, namely, the marks of Complainant’s competitors. The addition of a
competitor’s product label that relates to the CELEBREX mark and Complainant’s
industry fails to defeat a confusingly similar claim. See Slep-Tone Entm't Corp. v. Sounds Choice Disc
Jockeys, Inc., FA 93636 (Nat. Arb. Forum Mar. 13, 2000) (stating that
“likelihood of confusion is further increased by the fact that the Respondent
and [Complainant] operate within the same industry”); see also Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where the Respondent’s domain name combines the Complainant’s mark with
a generic term that has an obvious relationship to the Complainant’s business).
Respondent’s addition of a
hyphenated “e” as a prefix to the contested domain name makes the domain name
confusingly similar to Complainant’s mark since the addition of a letter does
little to reduce confusion among Internet users; the CELEBREX mark’s impact is
still present. See Canadian Tire Corp. v. 849075 Alberta
Ltd., D2000-0985 (WIPO
Oct. 19, 2000) (finding that the domain names <ecanadiantire.com> and
<e-canadiantire.com> are confusingly similar to Canadian Tire’s
trademarks); see also EBAY, Inc.
v. MEOdesigns & Matt Oettinger, D2000-1368 (WIPO Dec. 15, 2000)
(finding that Respondent’s domain name <eebay.com> is confusingly similar
to the Complainant’s registered EBAY trademark).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant has demonstrated its rights
to and interests in the CELEBREX mark. Because Respondent has not submitted a
Response in this proceeding, the Panel may presume it has no such rights or
interests in the disputed domain name. 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).
Furthermore, when Respondent fails to submit a Response the Panel is permitted
to make all inferences in favor of Complainant. 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).
Respondent’s use of the disputed domain
name to solicit pharmaceutical orders without a license or authorization to use
the CELEBREX mark is not a bona fide offering of goods and services under
Policy ¶ 4(c)(i). See Nat’l
Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000)
(finding that domain names used to sell Complainant’s goods without
Complainant’s authority, as well as others’ goods is not bona fide use); see
also Chanel, Inc. v. Cologne Zone,
D2000-1809 (WIPO Feb. 22, 2001) (finding that use of Complainant’s mark to sell
Complainant’s perfume, as well as other brands of perfume, is not a bona fide
use). Furthermore, using Complainant’s CELEBREX mark to attract potential
consumers to Respondent’s website while offering competitor’s products fails to
succeed under a Policy ¶ 4(c)(iii) analysis. See Chip Merchant, Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21,
2000) (finding that the disputed domain names were confusingly similar to
Complainant’s mark and that Respondent’s use of the domain names to sell
competing goods was illegitimate and not a bona fide offering of goods); see
also Ticketmaster Corp. v.
DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or
legitimate interests where Respondent generated commercial gain by
intentionally and misleadingly diverting users away from Complainant's site to
a competing website). The fact that the word CELEBREX is an invented word, and
as such is not one domain name registrants would legitimately choose unless
seeking to create an impression of an association with the Complainant,
demonstrates that Respondent lacks rights or legitimate interests in the domain
name
There is no evidence that suggests
Respondent is commonly known by the disputed domain name pursuant to Policy ¶
4(c)(ii). Respondent is known to this Panel only as James Mahony. See Victoria’s Secret v. Asdak, FA 96542
(Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was
not commonly known by a domain name confusingly similar to Complainant’s
VICTORIA’S SECRET mark because of Complainant’s well-established use of the
mark).
Accordingly, the Panel finds that Policy
¶4(a)(ii) has been satisfied.
Additionally, Respondent’s contested
domain name is used to divert consumer interest from Complainant’s
<celebrex.com> website by confusing Internet users as to the source,
sponsorship, affiliation or endorsement of Respondent’s website. Respondent’s
manufactured confusion results in its site accruing commercial benefits from
the established goodwill of Complainant’s mark. Such use demonstrates bad faith
under Policy ¶ 4(b)(iv). See TM
Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001)
(finding bad faith where Respondent used the domain name, for commercial gain,
to intentionally attract users to a direct competitor of Complainant); see also
Fossil Inc. v. NAS, FA 92525
(Nat. Arb. Forum Feb. 23, 2000) (finding that the 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).
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 should be
hereby GRANTED.
Accordingly, it is Ordered that the <e-viagra-xenical-celebrex-propecia.com>
domain name be TRANSFERRED from Respondent
to Complainant.
James A. Carmody, Esq., Panelist
Dated: June 12, 2002
Click Here to
return to the main Domain Decisions Page.
Click
Here to return to our Home Page