G.D. Searle & Co. v. Martin Marketing
Claim Number: FA0208000118277
PARTIES
Complainant
is G.D. Searle & Co., Skokie, IL
(“Complainant”) represented by Paul D.
McGrady, of Ladas & Parry. Respondent is Martin Marketing, New York, NY (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <viagra-xenical-celebrex-propecia-meridia-zyban.com>,
registered with Intercosmos Media Group.
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 August 15, 2002; the Forum received a hard copy of the
Complaint on August 19, 2002.
On
August 15, 2002, Intercosmos Media Group confirmed by e-mail to the Forum that
the domain name <viagra-xenical-celebrex-propecia-meridia-zyban.com>
is registered with Intercosmos Media Group and that Respondent is the current
registrant of the name. Intercosmos
Media Group has verified that Respondent is bound by the Intercosmos Media
Group 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 20, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of September
9, 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@viagra-xenical-celebrex-propecia-meridia-zyban.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 26, 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.
Respondent’s <viagra-xenical-celebrex-propecia-meridia-zyban.com> domain name incorpates numerous parties’
marks and interests. More specifically, the following drug companies are
implicated by way of Respondent’s domain name: Pfizer (VIAGRA), Roche
(XENICAL), G.D. Searle (Complainant) (CELEBREX), Merck (PROPECIA), Abbott
Laboratories (MERIDIA), and GlaxoSmithKline (ZYBAN). Due to practical
difficulties inherent in the UDRP, cooperative complaint initiation is unlikely
and unfeasible. Because Complainant initiated this dispute prior to any other
interested party it has the opportunity to acquire the domain name, while
seeking to protect its CELEBREX mark from an infringing use. However, due to
the procedural complexities presented by the current dispute the following
issue must be addressed: that Complainant seeks acquisition of the subject
domain name in good faith, and will forfeit its interest in the contested domain
name if the other represented marks are infringed upon following a transfer of
the domain name registration to Complainant.
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
<viagra-xenical-celebrex-propecia-meridia-zyban.com>
domain name is confusingly similar
to Complainant’s CELEBREX mark.
2.
Respondent does not have any rights or legitimate interests in the <viagra-xenical-celebrex-propecia-meridia-zyban.com>
domain name.
3.
Respondent registered and uses the <viagra-xenical-celebrex-propecia-meridia-zyban.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, Pharmacia, is the owner of
numerous applications and registrations for its fanciful CELEBREX mark.
Complainant has filed applications to register the CELEBREX mark in more than
112 countries around the world. An example of Complainant’s registration is
U.S. Patent and Trademark Office Reg. No. 2,307,888 registered on January 11,
2000 reflecting the CELEBREX mark.
Complainant’s CELEBREX mark began
receiving media attention as early as December of 1998 and Complainant filed
its applications for registration of the mark as early as February 10, 1998 in
the U.S., and internationally as early as February 16, 1998.
Complainant’s CELEBREX mark denotes
“pharmaceutical products in the nature of anti-inflammatory analgesics” to the
international consuming public. Complainant has made extensive use of its
CELEBREX mark by using it in connection with the sale of anti-arthritic
medicine on an international scale. Complainant’s CELEBREX drug was referred to
in an article for The New York Times as a “blockbuster arthritis
drug,” and Forbes Magazine featured Complainant’s CELEBREX drug,
referring to it as “the $2 billion (sales) crown jewel in Pharmacia’s new
portfolio.”
Due to Complainant’s extensive marketing
and advertising resources expended on the CELEBREX mark, it has earned (1)
worldwide notoriety for the purpose of protection under the Paris Convention,
and (2) fame in the U.S. for the purpose of protection under the Trademark
Dilution Act.
Respondent registered the <viagra-xenical-celebrex-propecia-meridia-zyban.com>
domain name on September 18, 2000.
Complainant’s investigation of Respondent’s use of the domain name indicates
the subject domain resolves to a website that solicits pharmaceutical orders.
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.
Complainant has established rights in the
CELEBREX mark by fashioning the fanciful term in connection with its
pharmaceutical research, development and distribution business. Complainant has
also registered or applied for registration of the CELEBREX mark in 112
countries, including the United States, Respondent’s place of domicile.
Respondent’s <viagra-xenical-celebrex-propecia-meridia-zyban.com> domain name is confusingly similar to
Complainant’s CELEBREX mark. Although Respondent’s domain name incorporates the
marks of Complainant’s competitors, Complainant’s CELEBREX mark is represented
in its entirety without any deviation or variation. As stated under Procedural
Issue, Respondent’s use of numerous marks that represent various entities
introduces a relatively new complexity to the Policy ¶ 4(a)(i) analysis.
However, Complainant has the right to protect its trademark whether standing
alone, or included in a string of industry-related marks. Respondent’s
inclusion of other drug-related marks only increases the likelihood that
confusion will result from use of the domain name. Because Respondent operates
in a similar field as Complainant, a percentage of Internet users will falsely
presume an affiliation between Respondent and Complainant exists. See G.D.
Searle & Co. v. Entm’t Hosting Servs., Inc., FA 110783 (Nat. Arb. Forum
June 3, 2002) (“The Panel concludes that the
<viagra-propecia-xenical-celebrex-claritin-prescriptions.com> domain name
is confusingly similar to Complainant’s CELEBREX mark because the mere addition
of related competing products’ names in the domain name does not defeat a
confusing similarity claim”); see also Oki Data Americas, Inc. v. ASD Inc.,
D2001-0903 (WIPO Nov. 6, 2001) (“the fact that a domain name incorporates a
Complainant’s registered mark is sufficient to establish identical or confusing
similarity for purposes of the Policy despite the addition of other words to
such marks”).
Accordingly, the Panel finds that Policy
¶ 4(a)(i) has been satisfied.
Significantly, Respondent has not
submitted a Response in this proceeding. Therefore, it is proper for the Panel
to resolve all reasonable inferences and allegations in favor of Complainant.
Furthermore, the Panel is allowed to draw adverse inferences from Respondent’s
failure to respond. See 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”); see also Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw
adverse inferences from Respondent’s failure to reply to the Complaint).
Because Complainant’s Submission
constitutes a prima facie case under the Policy, the burden effectively
shifts to Respondent. Respondent’s failure to respond means that Respondent has
not presented any circumstances that would promote its rights or legitimate
interests in the subject domain name under Policy ¶ 4(a)(ii). 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 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).
Complainant has produced uncontested
evidence that indicates Respondent’s <viagra-xenical-celebrex-propecia-meridia-zyban.com>
domain name resolves to a website that offers similar services and products
as Complainant. Respondent’s use of Complainant’s famous and fanciful mark in
its domain name suggests opportunistic motivations. It is evident from the
evidence presented in this proceeding that Respondent is attempting to
capitalize from the goodwill and brand recognition associated with the marks
represented in the subject domain name. Respondent’s infringing use does not
constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i),
nor is it a noncommercial or fair use of the domain name under Policy ¶
4(c)(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 N. Coast Med., Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct.
2, 2000) (finding no bona fide use where Respondent used the domain name to
divert Internet users to its competing website).
There is no evidence before the Panel
that would suggest Respondent is commonly referred to by the complicated <viagra-xenical-celebrex-propecia-meridia-zyban.com>
domain name pursuant to Policy ¶
4(c)(ii). Numerous factors support a finding to the contrary. Respondent’s
WHOIS name, Martin Marketing, has no apparent affiliation or connection with
Complaiant’s CELEBREX mark or the aforementioned domain name. Furthermore,
Complainant’s CELEBREX mark is a coined term, meaning that, barring the
possible exception that the mark becomes so well-known it becomes generic
(e.g., Thermos), Complainant holds exclusive rights to the use and licensing of
its mark to supposed junior users seeking to use the mark. Therefore,
Respondent fails to establish rights or legitimate interests in the domain
name. 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 Pfizer, Inc. v. Internet Gambiano Prods.,
D2002-0325 (WIPO June 20, 2002) (finding that because the VIAGRA mark was
clearly well-known at the time of Respondent’s registration of the domain name
it can be inferred that Respondent is attempting to capitalize on the confusion
created by the domain name’s similarity to the mark).
Accordingly, the Panel finds that Policy
¶ 4(a)(ii) has been satisfied.
From the facts and information presented
in Complainant’s uncontested Submission, it is evident that Respondent had
knowledge of Complainant’s CELEBREX mark prior to seeking registration of the
infringing domain name. The following factors are determinative in analyzing
Respondent’s bad faith motivations: (1) as stated, Complainant’s mark is a
fanciful term, seemingly meaningless apart from Complainant’s products; (2)
Complainant’s CELEBREX mark is listed on the Principal Register of the USPTO,
constituting constructive notice; and, (3) Respondent is conspicuously involved
in the same field of business as Complainant, and has utilized other famous
drug monikers in fashioning the infringing domain name. Respondent’s deliberate
registration of Complainant’s mark, despite knowledge of the infringing nature
of its domain name, constitutes bad faith registration under Policy ¶
4(a)(iii). 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 Victoria’s Cyber Secret Ltd. P’ship v. V Secret
Catalogue, Inc., 161 F.Supp.2d 1339, 1349
(S.D.Fla. 2001) (noting that “a Principal Register registration [of a trademark
or service mark] is constructive notice of a claim of ownership so as to
eliminate any defense of good faith adoption” pursuant to 15 U.S.C. § 1072).
Respondent’s bad faith use of
the <viagra-xenical-celebrex-propecia-meridia-zyban.com> domain name is
illustrated by Respondent’s opportunistic diversionary use of the domain name.
As stated, the subject domain name resolves to a pharmaceutical website
dedicated to soliciting orders and, presumably, creating profit. Respondent
registered Complainant’s CELEBREX mark, as well as other famous marks, in its
domain name in order to benefit from the false perception that its
pharmaceutical services were somehow related to Complainant, or Pfizer, Roche,
Merck, Abbott Laboratories, or GlaxoSmithKline (GSK); thus, Respondent’s domain
name has been registered and used in bad faith pursuant to Policy ¶ 4(b)(iv). See
Am.
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 Drs.
Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000)
(finding bad faith where Respondent directed Internet users seeking
Complainant’s site to its own website for commercial gain).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
DECISION
Having established all three elements
required under ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.
Accordingly, it is Ordered that the <viagra-xenical-celebrex-propecia-meridia-zyban.com>
domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: October 1, 2002
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