Merrell Pharmaceuticals Inc. v. Alex
Fisher c/o Rx Online Inc
Claim Number: FA0502000420655
PARTIES
Complainant
is Merrell Pharmaceuticals Inc. (“Complainant”),
represented by Baila H. Celedonia, of Cowan, Liebowitz and Latman, P.C., 1133 Avenue of the Americas, New York, NY
10036. Respondent is Alex Fisher c/o Rx Online Inc (“Respondent”), 213 Sommer Street, Nashville, TN 37203.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <buy-allegra.us>,
registered with Enom, 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.
James
A. Carmody, Esq., as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on February 14, 2005; the Forum received a hard copy of the
Complaint on February 17, 2005.
On
February 15, 2005, Enom, Inc. confirmed by e-mail to the Forum that the domain
name <buy-allegra.us> is
registered with Enom, Inc. and that Respondent is the current registrant of the
name. Enom, Inc. has verified that
Respondent is bound by the Enom, Inc. registration agreement and has thereby
agreed to resolve domain-name disputes brought by third parties in accordance
with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the
“Policy”).
On
February 24, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of March 16, 2005 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules
for usTLD Dispute Resolution Policy (the “Rules”).
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 21, 2005, 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. Therefore, the Panel may
issue its decision based on the documents submitted and in accordance with the
Policy, the 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 <buy-allegra.us>
domain name is confusingly similar to Complainant’s ALLEGRA mark.
2. Respondent does not have any rights or
legitimate interests in the <buy-allegra.us> domain name.
3. Respondent registered or used the <buy-allegra.us>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
FINDINGS
Complainant, Merrell Pharmaceuticals
Inc., is a subsidiary of Aventis Inc.
Aventis Inc. is one of the pharmaceutical companies that comprise
Sanofi-Aventis, the third largest pharmaceutical company worldwide.
Complainant sells the drug Allegra for
the treatment of allergic rhinitis.
Complainant has registered the ALLEGRA mark with the United States
Patent and Trademark Office (“USPTO”) (Reg. No. 2,067,728 issued June 3, 1997). In addition, millions of dollars are spent
each year to promote and advertise the ALLEGRA mark though various media,
including television, magazines and product displays.
Respondent registered the <buy-allegra.us>
domain name on December 6, 2004.
Respondent’s domain name resolves to a website the purports to sell
ALLEGRA products.
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(f), 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 or is being used in bad faith.
Given
the similarity between the Uniform Domain Name Dispute Resolution Policy
(“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as
applicable in rendering its decision.
Complainant has established rights in the
ALLEGRA mark through registration of the mark with the USPTO. See Men’s Wearhouse, Inc. v. Wick, FA
117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered
marks hold a presumption that they are inherently distinctive and have acquired
secondary meaning.”); see also Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001)
(finding that successful trademark registration with the United States Patent
and Trademark Office creates a presumption of rights in a mark).
Respondent’s
<buy-allegra.us> domain name is confusingly similar to
Complainant’s ALLEGRA mark.
Respondent’s domain name incorporates Complainant’s mark in its entirety
and merely adds the generic term “buy” and a hyphen. Such minor additions are insufficient to negate a finding of
confusing similarity pursuant to Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin)
Ltd. v. Healy/BOSTH,
D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain
name in dispute contains the identical mark of the complainant combined with a
generic word or term); see also Quixtar
Inv., Inc. v. Smithberger, D2000-0138 (WIPO Apr. 19, 2000) (finding that
because the domain name <quixtar-sign-up.com> incorporates in its
entirety the complainant’s distinctive mark, QUIXTAR, the domain name is
confusingly similar); see also Health Devices Corp. v. Aspen S T C, FA
158254 (Nat. Arb. Forum July 1, 2003) (“[T]he
addition of punctuation marks such as hyphens is irrelevant in the
determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”).
Furthermore,
the addition of the country code top-level domain “.us” to Complainant’s mark
is not enough to overcome a finding of confusing similarity pursuant to Policy
¶ 4(a)(i). See Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4,
2002) (finding that since the addition of the country-code “.us” fails to add
any distinguishing characteristic to the domain name, the <tropar.us>
domain name is identical to the complainant’s TROPAR mark); see also Gardline Surveys Ltd. v.
Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition
of a top-level domain is irrelevant when establishing whether or not a mark is
identical or confusingly similar, because top-level domains are a required
element of every domain name.”).
The
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent has failed to respond to the
Complaint. Thus, the Panel may accept
all reasonable allegations and assertions set forth by Complainant as true and
accurate. See Bayerische Motoren
Werke AG v. Bavarian AG, FA 110830 (Nat. Arb. Forum June 17, 2002)
(finding that in the absence of a response the Panel is free to make inferences
from the very failure to respond and assign greater weight to certain
circumstances than it might otherwise do); 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.”).
Complainant
has asserted that Respondent has no rights or legitimate interests in the
disputed domain name, and Respondent, in not submitting a response, has failed
to rebut this assertion. Thus, the
Panel may interpret Respondent’s failure to respond as evidence that Respondent
lacks rights and legitimate interests in the <buy-allegra.us>
domain name pursuant to Policy ¶ 4(a)(ii).
See Parfums Christian Dior
v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not
submitting a response, the respondent has failed to invoke any circumstance
which could demonstrate any rights or legitimate interests in the domain name);
see also Bank of Am.
Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's
failure to respond not only results in its failure to meet its burden, but also
will be viewed as evidence itself that Respondent lacks rights and legitimate
interests in the disputed domain name.”).
Furthermore,
nothing in the record indicates that Respondent is either the owner or
beneficiary of a trade or service mark that is identical to the <buy-allegra.us>
domain name pursuant to Policy ¶ 4(c)(i) or commonly known by the domain name
pursuant to Policy ¶ 4(c)(iii). Thus,
the Panel finds that Respondent lacks rights and legitimate interests in the
domain name under Policy ¶ 4(a)(ii). See
Compagnie de Saint Gobain v.
Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or
legitimate interests where the respondent was not commonly known by the mark
and never applied for a license or permission from the complainant to use the
trademarked name); see also Gallup
Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001)
(finding that the respondent does not have rights in a domain name when the
respondent is not known by the mark).
Moreover,
Respondent is using the confusingly similar domain name to operate a website
that purports to sell Complainant’s ALLEGRA products. Such use is not a use in connection with a bona fide offering of
goods or services pursuant to Policy ¶ 4(c)(ii) or a legitimate noncommercial
or fair use pursuant to Policy ¶ 4(c)(iv).
See Vapor Blast Mfg. Co. v.
R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding
that the respondent, a reseller of the complainant’s products, did not have
rights or legitimate interests in a domain name that was confusingly similar to
the complainant’s mark); see also G.D. Searle & Co. v. Mahoney, FA
112559 (Nat. Arb. Forum June 12, 2002) (finding the respondent’s use of the
disputed domain name to solicit pharmaceutical orders without a license or
authorization from the complainant does not constitute a bona fide offering of
goods or services).
The
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration or Use in Bad Faith
Since Respondent’s <buy-allegra.us>
domain name is confusingly similar to Complainant’s ALLEGRA mark, consumers
accessing Respondent’s domain name may become confused as to the affiliation
between Respondent’s website and Complainant.
Thus, Respondent’s use of the disputed domain name to sell Complainant’s
ALLEGRA products is evidence of bad faith registration and use pursuant to
Policy ¶ 4(b)(iv). See Fanuc Ltd v. Mach. Control Serv., FA
93667 (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent violated
UDRP ¶ 4(b)(iv) by selling used Fanuc parts and robots on website
<fanuc.com> because customers visiting the site were confused as to the
relationship between the respondent and the complainant); see also Reuters Ltd. v. Global Net 2000, Inc.,
D2000-0441 (WIPO July 13, 2000) (finding bad faith where the respondent
attracted users to a website sponsored by the respondent and created confusion
with the complainant’s mark as to the source, sponsorship, or affiliation of
that website).
Additionally, Respondent’s use of the
confusingly similar domain name to sell Complainant’s ALLEGRA products
constitutes disruption and is evidence that Respondent registered and used the <buy-allegra.us>
domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat.
Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to
sell Complainant’s products represents bad faith use under Policy ¶
4(b)(iii).”); see also Caterpillar Inc. v. Vine,
FA 97097 (Nat. Arb. Forum June 22, 2001) (“Respondent registered each of the
disputed domain names in order to gain customers and to disrupt Complainant's
business of authorizing dealers to sell its CATERPILLAR equipment.”).
Furthermore, Respondent registered the <buy-allegra.us>
domain name with actual or constructive knowledge of Complainant’s rights in
the ALLEGRA mark due to Complainant’s registration of the mark with the USPTO. Moreover, the Panel infers actual knowledge
due to the fact that Respondent is using the domain name to sell Complainant’s
ALLEGRA products. Registration of a
domain name featuring another’s mark, despite actual or constructive knowledge
of another’s rights in the mark, is evidence of bad faith registration and use
pursuant to Policy ¶ 4(a)(iii). See
Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here
is a legal presumption of bad faith, when Respondent reasonably should have been
aware of Complainant’s trademarks, actually or constructively.”); see also
Orange Glo Int’l v. 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.”); see also G.D.
Searle & Co. v. Pelham, FA 117911 (Nat. Arb. Forum Sept. 19, 2002) (“It
can 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.”).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
DECISION
Having
established all three elements required under the usTLD Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <buy-allegra.us>
domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: April 4, 2005
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