G.D. Searle & Co. v. Fred Pelham
Claim Number: FA0208000117911
PARTIES
Complainant
is G.D. Searle & Co., Skokie, IL
(“Complainant”) represented by Paul D.
McGrady, of Ladas & Parry. Respondent is Fred Pelham, South Pittsburg, TN (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <doctorslink-viagra-xenical-propecia-celebrex.com>,
registered with Tucows, 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.
Hon.
Ralph Yachnin as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on August 8, 2002; the Forum received a hard copy of the
Complaint on August 9, 2002.
On
August 9, 2002, Tucows, Inc. confirmed by e-mail to the Forum that the domain
name <doctorslink-viagra-xenical-propecia-celebrex.com>
is registered with Tucows, Inc. and that Respondent is the current registrant
of the name. Tucows, Inc. has verified
that Respondent is bound by the Tucows, 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
August 9, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of August 29,
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@doctorslink-viagra-xenical-propecia-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
September 17, 2002, pursuant to Complainant’s request to have the dispute
decided by a single-member Panel, the Forum appointed Hon. Ralph Yachnin 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
<doctorslink-viagra-xenical-propecia-celebrex.com>
domain name is confusingly similar to Complainant's CELEBREX mark.
Respondent
has no rights or legitimate interests in the disputed domain name.
Respondent
registered and used the disputed domain name in bad faith.
B.
Respondent
Respondent
failed to submit a Response.
FINDINGS
Complainant has registered its CELEBREX
mark in 112 countries around the world including the United States. Complainant’s mark is registered on the
Principal Register of the United States Patent and Trademark Office as
Registration Number 2,321,622.
Complainant’s mark represents “pharmaceutical products in the nature of anti-inflammatory
analgesics.” Complainant has promoted the mark and its products on a global
scale. Due to the extensive marketing
and advertising expended by Complainant on the promotion of its CELEBREX mark,
the mark has earned worldwide notoriety.
The New York Times has referred to Complainant’s CELEBREX
product as a “blockbuster arthritis drug.”
Complainant operates a website located at <celebrex.com>.
Respondent registered the disputed
domain name on January 1, 2002.
Respondent is using the disputed domain name in order to solicit drug
orders from Internet users. Respondent
does not have a license from Complainant to use the CELEBREX mark.
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.
Identical and/or Confusingly Similar
Complainant has established that it has
rights in the CELEBREX mark through registration with the United States Patent
and Trademark Office. Furthermore,
Respondent’s domain name is confusingly similar to Complainant’s mark because
it incorporates Complainant’s entire mark and merely adds other well-known drug
names with hyphens. The addition of the
other drug names does not create a distinct mark capable of overcoming a claim
of confusingly similarity, it merely creates a domain name with severe
potential to confuse Internet users as to the source, sponsorship and
affiliation of the domain. This type of
confusion is exactly the type that Policy ¶ 4(a)(i) is intended to prevent.
Therefore, despite the variety of drugs named in Respondent’s <doctorslink-viagra-xenical-propecia-celebrex.com>
domain name, the domain name is not distinct enough to overcome a Policy ¶
4(a)(i) “confusingly similar” analysis.
See Sunkist Growers, Inc.
v. S G & Delmonte-Asia.com, D2001-0432 (WIPO May 22, 2001) (finding
that the domain names <sunkistgrowers.org>, <sunkistgrowers.net>
and <sunkistasia.com> are confusingly similar to Complainant’s registered
SUNKIST mark and identical to Complainant’s common law SUNKIST GROWERS mark); see
also Body Shop Int’l PLC v. CPIC NET
& Hussain, D2000-1214 (WIPO Nov. 26, 2000) (finding that the domain
name <bodyshopdigital.com> is confusingly similar to the Complainant’s
THE BODY SHOP trademark).
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Rights or Legitimate Interests
Complainant has presented a prima
facie case against Respondent and as a result shifts the burden to
Respondent to establish that it does have rights and legitimate interests in
the disputed domain name. Respondent has failed to come forward with a
Response, therefore, it is presumed that Respondent lacks rights and legitimate
interests in the disputed domain name. 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 Geocities v.
Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has
no rights or legitimate interest in the domain name because Respondent never
submitted a Response nor provided the Panel with evidence to suggest
otherwise).
Furthermore, when Respondent fails to
come forward with a Response, the Panel is permitted to accept Complainant’s
reasonable allegations as true and make inferences in favor of
Complainant. See Desotec N.V. v. Jacobi Carbons AB,
D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a
presumption that Complainant’s allegations are true unless clearly contradicted
by the evidence); see also 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”).
Respondent is using the disputed domain
name in order to sell prescription drugs to Internet users. It can be inferred
that Respondent is using Complainant’s mark in order to attract Internet users
interested in Complainant’s product to Respondent’s website. Respondent is therefore commercially
benefiting from the use of Complainant’s mark in its domain name. This type of use is not considered to be in
relation to a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii). See Big Dog Holdings, Inc. v. Day, FA 93554
(Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was
diverting consumers to its own website by using Complainant’s trademarks); see
also Household Int’l, Inc. v. Cyntom
Enter., FA 95784 (Nat. Arb. Forum Nov. 7, 2000) (inferring that Respondent
registered the domain name <householdbank.com>, which incorporates
Complainants HOUSEHOLD BANK mark, with hopes of attracting Complainant’s
customers and thus finding no rights or legitimate interests); see also Telstra Corp. v. Nuclear Marshmallow,
D2000-0003 (WIPO Feb.18, 2000) (finding (i) the fact that Complainant has not
licensed or otherwise permitted Respondent to use any of its trademarks and
(ii) the fact that the word TELSTRA appears to be an invented word, and as such
is not one traders would legitimately choose unless seeking to create an
impression of an association with Complainant, demonstrate that Respondent
lacks rights or legitimate interests in the domain name).
Respondent has not come forward with any
evidence that proves that it is commonly known by <doctorslink-viagra-xenical-propecia-celebrex.com> or any one or two of the prescription drug
brand names included within the domain name.
The Panel has no proof that
Respondent is known by any other name than Fred Pelham and, therefore, finds
that Respondent has no rights or legitimate interests in the disputed 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); 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).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Based on the fact that Complainant’s
CELEBREX mark is registered on the Principal Register of the United States
Patent and Trademark Office and is internationally recognized, it can be
inferred that Respondent had knowledge of Complainant’s rights when it
registered the disputed domain name. It
can also be inferred that Respondent had knowledge of Complainant’s rights in
the CELEBREX mark because Respondent is using the CELEBREX mark as a means to
sell prescription drugs, including Complainant’s CELEBREX drug. Registration of a domain name that infringes
on Complainant’s mark, despite knowledge of Complainant’s rights in that mark,
is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii). See Entrepreneur Media, Inc. v. Smith,
279
F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an
alleged infringer chooses a mark he knows to be similar to another, one can
infer an intent to confuse"); see also Samsonite
Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding
that evidence of bad faith includes actual or constructive knowledge of a
commonly known mark at the time of registration).
Respondent is using Complainant’s
CELEBREX mark in the disputed domain name in order attract Internet users to
Respondent’s website for Respondent’s commercial gain. Respondent is selling prescription drugs
over the Internet and as a result, it benefits every time a search engine leads
an Internet user to Respondent’s website instead of Complainant’s. As a result, Respondent is commercially
benefiting form the likelihood of confusion its <doctorslink-viagra-xenical-propecia-celebrex.com> domain name is creating. This type of behavior is evidence of bad
faith use pursuant to Policy ¶ 4(b)(iv). See America
Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21,
2000) (finding bad faith where Respondent registered and used an infringing
domain name to attract users to a website sponsored by Respondent); see also
State Farm Mut. Auto. Ins. Co. v.
Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that Respondent
registered the domain name <statefarmnews.com> in bad faith because
Respondent intended to use Complainant’s marks to attract the public to the web
site without permission from 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
shall be hereby granted.
Accordingly, it is Ordered that the
domain name <doctorslink-viagra-xenical-propecia-celebrex.com> be transferred from
Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: September 19, 2002
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