G.D. Searle & Co. v. Entertainment
Hosting Services, Inc.
Claim Number: FA0204000110783
PARTIES
Complainant
is G.D. Searle & Co., Skokie, IL
(“Complainant”) represented by Paul D.
McGrady, of Ladas & Parry. Respondent is Entertainment Hosting Services, Inc., Glendale, CA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <celebrex-pain-relief.com>, <arthritis-celebrex.com>, <0-celebrex.com> and <viagra-propecia-xenical-celebrex-claritin-prescriptions.com>,
registered with BulkRegister.
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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on April 22, 2002; the Forum received a hard copy of the
Complaint on April 23, 2002.
On
April 24, 2002, BulkRegister confirmed by e-mail to the Forum that the domain
names <celebrex-pain-relief.com>, <arthritis-celebrex.com>, <0-celebrex.com> and <viagra-propecia-xenical-celebrex-claritin-prescriptions.com>
are registered with BulkRegister and that Respondent is the current registrant
of the names. BulkRegister has verified
that Respondent is bound by the BulkRegister 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
April 25, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of May 15,
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@celebrex-pain-relief.com,
postmaster@arthritis-celebrex.com, postmaster@0-celebrex.com and
postmaster@viagra-propecia-xenical-celebrex-claritin-prescriptions.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 28, 2002, pursuant to Complainant’s request to have the dispute decided by
a single-member Panel, the Forum appointed the Honorable Charles K. McCotter,
Jr. (Ret.) 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 names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. The disputed domain names <celebrex-pain-relief.com>, <arthritis-celebrex.com>, <0-celebrex.com> and <viagra-propecia-xenical-celebrex-claritin-prescriptions.com>
are confusingly similar to Complainant’s CELEBREX mark.
2. Respondent has no rights or legitimate
interests in the disputed domain names.
3. Respondent registered and used the
disputed domain names in bad faith.
B. Respondent did not submit a Response in
this proceeding.
FINDINGS
Complainant holds international rights in the
CELEBREX mark, including 112 ongoing applications worldwide to register the
mark. Specifically, Complainant registered CELEBREX (Reg. No. 2,307,888) in the
United States in February 2000 and first used it in commerce in February 1999.
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
disputed domain names on November 5, 2001 and has been using them in
conjunction with websites to sell 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 names are confusingly
similar to Complainant’s registered CELEBREX mark because they incorporate the
Complainant’s entire mark with the addition of a generic word, an
industry-specific word or a competitor’s identity.
The dominant element CELEBREX appears at
least once in each of the disputed domain names. The contested <celebrex-pain-relief.com> and <arthritis-celebrex.com> domain names merely include the
addition of a descriptive industry-specific word or a generic word. Neither the
addition of an ordinary generic word nor the addition of an industry-specific
word detract from the overall impression that the dominant part of the domain
name is still the CELEBREX mark. See G.D.
Searle & Co. v. Christensen, FA 100647 (finding <celebrexclaritinpharmacy.com>
to be confusingly similar to Complainant’s CELEBREX mark); see also 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 Perot Sys.
Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding that,
given the similarity of the Complainant’s marks with the domain name, consumers
will presume the domain name is affiliated with the Complainant). Furthermore,
the addition of a hyphenated generic word that relates to the CELEBREX mark or
Complainant’s competitors’ products 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).
Additionally, Respondent’s <0-celebrex.com>
domain name is confusingly similar to Complainant’s mark since the
addition of a number does little to reduce confusion among Internet users; the
dominant CELEBREX mark’s impact is still present. See Am.
Online, Inc. v. Fu,
D2000-1374 (WIPO Dec. 11, 2000) (finding that adding the suffixes
"502" and "520" to the ICQ trademark does little to reduce
the potential for confusion); see also Am. Online Inc. v. Chinese ICQ Network, D2000-0808 (WIPO Aug. 31,
2000) (finding that the addition of the numeral 4 in the domain name
<4icq.com> does nothing to deflect the impact on the viewer of the mark
ICQ and the domain name is therefore confusingly similar).
One
of the domain names <viagra-propecia-xenical-celebrex-claritin-prescriptions.com>, however, includes the trademarks
of other entities, Pfizer, Merck, Roche Laboratories, Inc. and Shering
Corporation, respectively. This
presents a unique situation since the domain name appears to infringe on the
rights of multiple trademark holders, but only one party can hold registration
of the domain name. 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 G.D. Searle & Co.
v. Christensen, FA 100647 (finding
<celebrexclaritinpharmacy.com> to be confusingly similar to Complainant’s
CELEBREX mark); 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”); see also Nintendo of
Am. Inc v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing
similarity where the Respondent combined the Complainant’s POKEMON and PIKACHU
marks to form the <pokemonpikachu.com> domain name). However, the
Panel’s decision is based solely upon confusingly similarity to Complainant’s
mark CELEBREX and does not establish any rights of Complainant in the other
trademarks.
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 names. 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
names 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 also
fails to succeed under a Policy ¶ 4(c)(i) 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).
There is no evidence that suggests
Respondent is commonly known by any of the disputed domain names pursuant to
Policy ¶ 4(c)(ii). 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).
The fact that the word CELEBREX is an
invented word, and as such is not a word 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 under Policy ¶ 4(c)(iii). See MBS
Computers Ltd. v. Workman, FA
96632 (Nat. Arb. Forum Mar. 16, 2001) (finding no rights or legitimate
interests when Respondent is using a domain name identical to Complainant’s
mark and is offering similar services); see also Caterpillar Inc. v. Quin, D2000-0314
(WIPO June 12, 2000) (finding that Respondent does not have a legitimate
interest in using the domain names <caterpillarparts.com> and
<caterpillarspares.com> to suggest a connection or relationship, which
does not exist, with Complainant's mark CATERPILLAR).
Accordingly, the Panel finds that Policy
¶4(a)(ii) has been satisfied.
Respondent registered the four contested
domain names as a means to prevent Complainant from utilizing its CELEBREX mark
in corresponding domain names by registering multiple variations of addresses
containing the mark in its entirety; thus, Respondent’s behavior evidences bad
faith under Policy ¶ 4(b)(ii). See Harcourt,
Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one
instance of registration of several infringing domain names satisfies the
burden imposed by the Policy ¶ 4(b)(ii)); see also YAHOO! Inc. v. Syrynx, Inc., D2000-1675 (WIPO Jan. 30, 2001) (finding a bad
faith pattern pursuant to Policy ¶ 4(b)(ii) in Respondent's registration of two
domain names incorporating Complainant's YAHOO! mark).
Respondent registered and used the
contested domain names in an effort to confuse Internet users and disrupt
Complainant’s competing pharmaceutical business, actions constituting bad faith
pursuant to Policy ¶ 4(b)(iii). See Mission
Kwa Sizabantu v. Rost, D2000-0279 (WIPO June 7,2000) (defining “competitor”
as "…one who acts in opposition to another and the context does not imply
or demand any restricted meaning such as commercial or business competitor”); see
also Nokia Corp. v. Uday Lakhani,
D2000-0833 (WIPO Oct. 19, 2000) (transferring <nokias.com> from
Respondent cellular phone dealer to Complainant); see also Puckett
v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that Respondent
has diverted business from the Complainant to a competitor’s website in
violation of Policy 4(b)(iii)).
Lastly, Respondent’s contested domain names
are 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 websites. Respondent’s manufactured confusion
results in its sites 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).
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 relief should be hereby GRANTED.
Accordingly, it is Ordered that the <celebrex-pain-relief.com>, <arthritis-celebrex.com>, <0-celebrex.com> and <viagra-propecia-xenical-celebrex-claritin-prescriptions.com> domain
names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated: June 3, 2002
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