G.D. Searle & Co. v.
24-7-Commerce.com
Claim Number: FA0206000114707
PARTIES
Complainant
is G.D. Searle & Co., Skokie, IL
(“Complainant”) represented by Paul D.
McGrady, of Ladas & Parry. Respondent is 24-7-Commerce.com, Manhattan Beach, CA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <celebrex-vioxx-ultram-super-blue-stuff.com>,
registered with Intercosmos Media Group,
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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on June 28, 2002; the Forum received a hard copy of the
Complaint on June 26, 2002.
On
June 26, 2002, Intercosmos Media Group, Inc. confirmed by e-mail to the Forum
that the domain name <celebrex-vioxx-ultram-super-blue-stuff.com>
is registered with Intercosmos Media Group, Inc. and that Respondent is the
current registrant of the name. Intercosmos
Media Group, Inc. has verified that Respondent is bound by the Intercosmos
Media Group, 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
June 26, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of July 16,
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-vioxx-ultram-super-blue-stuff.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
July 23, 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 name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
The
<celebrex-vioxx-ultram-super-blue-stuff.com> domain name is confusingly similar to
Complainant’s mark.
Respondent has no rights or legitimate interests in
the <celebrex-vioxx-ultram-super-blue-stuff.com> domain name.
Respondent registered and used the <celebrex-vioxx-ultram-super-blue-stuff.com>
domain name in bad faith.
B.
Respondent
Respondent failed to submit a Response in
this proceeding.
FINDINGS
Complainant owns a registered trademark
for the CELEBREX mark, as registered on the Principal Register of the United
States Patent and Trademark Office (“USPTO”) (Reg. No. 2,307,888). The CELEBREX mark is used by Complainant to
market “pharmaceutical products in the nature of anti-inflammatory analgesics.”[1] Moreover, Complainant has successfully used
the CELEBREX mark to market and advertise the sale of anti-arthritic medicine
throughout the world.
Since the inception of the CELEBREX
mark, Complainant has aggressively pursued worldwide trademark protection for
the mark; Complainant has filed for applications to register the mark in over
113 countries.
Complainant’s CELEBREX medication has
been recognized as a “blockbuster arthritis drug” and a “crown jewel in
[Complainant’s] new portfolio” by the New York Times and Forbes,
respectively. Because of Complainant’s
marketing efforts and the popularity of the Complainant’s medication, the
CELEBREX mark enjoys a substantial amount of notoriety.
The marks VIOXX and ULTRAM, which are in
the disputed domain name, are used by Complainant’s competitors to denote
similar pain relieving pharmaceuticals.
Respondent registered the <celebrex-vioxx-ultram-super-blue-stuff.com>
domain name on May 26, 2002.
Respondent has made no use of the domain name but for “placing a ‘coming
soon’ notice on the Internet.”
Complainant never authorized Respondent’s registration of the domain
name containing Complainant’s CELEBREX mark, nor did Complainant ever grant
Respondent permission 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 its rights
in the CELEBREX mark through registration with the USPTO and continuous use
since the marks inception.
Respondent’s
<celebrex-vioxx-ultram-super-blue-stuff.com>
domain name contains Complainant’s entire CELEBREX mark at the
forefront. Respondent uses the CELEBREX
mark along with the VIOXX and ULTRAM marks, which are marks of Complainant’s
competitors, as a string of names in the second level domain. It appears that these marks are used for
identifying purposes, as they conjure up each marks’ source. It has been held that using Complainant’s
mark along with a competitor’s mark in a domain name does not defeat a
confusingly similar claim. See G.D. Searle & Co.
v. Entm’t Hosting Services, Inc.,
FA 110783 (Nat. Arb. Forum June 3, 2002) (“[t]he 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 G.D. Searle & Co. v. Christensen, FA 100647 (Nat. Arb. Forum Dec. 4, 2001) (finding
<celebrexclaritinpharmacy.com> to be confusingly similar to Complainant’s
CELEBREX mark).
Furthermore, Complainant uses the
generic, hyphenated phrase “super-blue-stuff” as a suffix to the source
identifying marks in the second level domain.
The use of the phrase “super-blue-stuff,” which is comprised of three
generic words, fails to detract from the dominating presence of Complainant’s
CELEBREX mark. Complainant’s mark has
an especially dominating presence compared to the use of Complainant’s
competitor’s marks in the domain name because it is the first mark used in the second
level domain. Therefore, the Panel
finds that the <celebrex-vioxx-ultram-super-blue-stuff.com> domain name is confusingly similar to
Complainant’s CELEBREX mark. 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 Sony
Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that
“[n]either the addition of an ordinary descriptive word…nor the suffix ‘.com’
detract from the overall impression of the dominant part of the name in each
case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Rights or Legitimate Interests
In light of Complainant’s assertion that
Respondent has no rights or legitimate interests in the disputed domain name
and Respondent’s failure to submit a Response, the Panel may presume that
Respondent has no such rights or legitimate interests in the 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, since Respondent failed to
come forward to assert any arguments or defenses, all reasonable inferences may
be drawn in favor of Complainant. See
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).
Respondent does not use the <celebrex-vioxx-ultram-super-blue-stuff.com>
domain name in connection with a website other than to provide the message
“coming soon.” However, Respondent has
not come forward to offer any evidence, which corroborates the website message,
of demonstrable preparations to use the domain name. There is no evidence on the record that shows what Respondent will
soon be offering in association with the domain name. Respondent has the burden to prove its rights and legitimate
interests in the domain name in an answer to Complainant’s assertion that
Respondent has no such rights. Because
Respondent does not actively use the domain name and has not demonstrated any
clear plans to use the domain name, Respondent is not in compliance with Policy
¶¶ 4(c)(i) and (iii). See Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under
certain circumstances the mere assertion by the Complainant that the Respondent
has no right or legitimate interest is sufficient to shift the burden of proof
to the Respondent to demonstrate that such a right or legitimate interest does
exist); see also Woolworths plc.
v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that absent evidence
of preparation to use the domain name for a legitimate purpose, the burden of
proof lies with the Respondent to demonstrate that it has rights or legitimate
interests); see also Boeing Co. v.
Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate
interests where Respondent has advanced no basis on which the Panel could
conclude that it has a right or legitimate interest in the domain names, and no
use of the domain names has been established).
Respondent has no connection to
Complainant that would allow Respondent to rightfully use the CELEBREX mark in
the disputed domain name. Complainant
never authorized or licensed Respondent to use the CELEBREX mark for any
reason. Moreover, Respondent’s
purported name “24-7 Commerce.com” does not incorporate the CELEBREX mark. Therefore, from the evidence presented it is
clear that Respondent is not commonly referred to by the <celebrex-vioxx-ultram-super-blue-stuff.com> domain name or any
variation thereof. Thus, Respondent has
no rights or legitimate interests in the domain name pursuant to Policy ¶
4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where
Respondent was not commonly known by the mark and never applied for a license
or permission from Complainant to use the trademarked name); see also Broadcom Corp. v. Intellifone Corp., FA
96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests
because Respondent is not commonly known by the disputed domain name or using
the domain name in connection with a legitimate or fair use); see also 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).
Accordingly, the Panel finds that
Respondent has no rights or legitimate interests in the <celebrex-vioxx-ultram-super-blue-stuff.com> domain name; thus, Policy ¶ 4(a)(ii) has
been satisfied.
The list of bad faith circumstances in
Policy ¶ 4(b) is not an exhaustive representation of what warrants a finding of
bad faith. The Panel must review the
totality of circumstances when determining whether Respondent registered and
used the domain name in bad faith. See
Cellular One Group v. Brien,
D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of
the Policy is not an exhaustive list of bad faith evidence); see also Twentieth Century Fox Film Corp. v. Risser,
FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a
domain name has been registered in bad faith, the Panel must look at the
“totality of circumstances”).
It is evident that Respondent knew of
Complainant’s rights in the CELEBREX mark since Complainant coined CELEBREX and
Respondent uses the mark in conjunction with marks of Complainant’s
competitors. Furthermore, the CELEBREX
mark is registered on the Principal Register of the USPTO and quickly gained a
substantial level of notoriety following its widely publicized approval. Therefore, Respondent’s registration of <celebrex-vioxx-ultram-super-blue-stuff.com>, despite knowledge of Complainant’s rights,
represents bad faith registration pursuant to Policy ¶ 4(a)(iii). See 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); see also Nintendo of Am. Inc v. Pokemon,
D2000-1230 (WIPO Nov. 23, 2000) (finding that Respondent, at the time of
registration, had notice of Complainant’s famous POKÉMON and PIKACHU
trademarks given their extreme popularity); see also Ty Inc. v. Parvin, D2000-0688 (WIPO Nov.
9, 2000) (finding that Respondent’s registration and use of an identical and/or
confusingly similar domain name was in bad faith where Complainant’s BEANIE
BABIES mark was famous and Respondent should have been aware of it); 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).
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 <celebrex-vioxx-ultram-super-blue-stuff.com> be TRANSFERRED from
Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated: July 31, 2002
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