G. D. Searle & Co. v. SHg d/b/a SHG
Resources
Claim Number: FA0209000125755
PARTIES
Complainant
is G.D. Searle & Co., Peapack,
NJ (“Complainant”) represented by Paul
D. McGrady, Jr., of Ladas &
Parry. Respondent is SHg d/b/a SHG Resources, Cross
Lanes, WV (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <celebrex24.com>,
registered with eNom.com, Inc.
PANEL
On
November 15, 2002, pursuant to Complainant’s request to have the dispute
decided by a single-member Panel, the Forum appointed James P. Buchele as
Panelist. The
undersigned
Panelist 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.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on September 24, 2002; the Forum received a hard copy of the
Complaint on September 24, 2002.
On
September 25, 2002, eNom.com, Inc. confirmed by e-mail to the Forum that the
domain name <celebrex24.com>
is registered with eNom.com, Inc. and that Respondent is the current registrant
of the name. eNom.com, Inc. has
verified that Respondent is bound by the eNom.com, 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
October 8, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of October 28,
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@celebrex24.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.
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
<celebrex24.com> domain name
is confusingly similar to Complainant’s CELEBREX mark.
Respondent
has no rights or legitimate interests in the <celebrex24.com> domain name.
Respondent registered and used the <celebrex24.com> domain name in
bad faith.
B.
Respondent
Respondent has failed to submit a
Response in this action.
FINDINGS
Complainant holds a United States Patent
and Trademark Office (“USPTO”) registration for the CELEBREX mark, which is
registered on the Principal Register (Reg. No. 2,307,888). Complainant has actively sought trademark
protection of its CELEBREX mark in over 112 countries worldwide. Complainant started seeking trademark
protection for its CELEBREX mark as early as February 10, 1998.
The CELEBREX mark was coined to denote
Complainant’s arthritis drug.
Complainant began receiving press for its CELEBREX arthritis medication
as early as December of 1998. The
CELEBREX mark and related pharmaceutical product have been widely promoted by
Complainant as representing medicine intended as an anti-inflammatory
analgesic. As a result of Complainant’s
developmental and advertising efforts the CELEBREX mark holds a substantial
amount of goodwill for Complainant. In
fact, the CELEBREX mark has been praised by The New York Times
and Forbes magazine as a “blockbuster arthritis drug” and as a “crown
jewel in [Complainant’s] new portfolio,” respectively.
Respondent registered the <celebrex24.com> domain name on
April 10, 2002. Respondent has made no
active use of the domain name.
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 Respondent
is identical or confusingly similar to a trademark or service mark in which
Complainant has rights; and
(2)
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 by proof of trademark registration with the USPTO among other
governing trademark bodies. Complainant
has also demonstrated its rights in the CELEBREX mark through substantial use
of the mark since at least as early as 1998.
Respondent’s <celebrex24.com> domain name contains Complainant’s entire
unique CELEBREX mark with the mere addition of “24.” Adding numbers to a trademark in a domain name does not create a
distinct mark. The dominant portion of
the <celebrex24.com> domain
name remains Complainant’s CELEBREX mark.
Therefore, Respondent’s <celebrex24.com>
domain name is confusingly similar to Complainant’s CELEBREX mark. 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 Omnitel Pronto Italia S.p.A. v. Carlo Dalla
Bella, D2000-1641 (WIPO Mar. 12, 2001) (finding that the contested
<omnitel2000.com> domain name is confusingly similar to the OMNITEL
trademark); see also Hitachi, Ltd.
v. Fortune Int’l Dev. Ent, D2000-0412 (WIPO July 2, 2000) (finding that the
domain name <hitachi2000.net> is confusingly similar to Complainant’s
mark).
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Complainant carries the burden of
establishing Respondent’s lack of rights or legitimate interests in the <celebrex24.com> domain
name. Complainant has effectively
discharged this burden by alleging that Respondent has no rights or legitimate
interests in the domain name.
Therefore, the burden shifts to Respondent to articulate its rights or
legitimate interests in the domain name.
Respondent, however, has failed to submit a Response and the Panel will
therefore presume that Respondent has no rights or legitimate interests in the
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 Canadian
Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution
Sept. 23, 2000) (finding no rights or legitimate interests where no such right
or interest was immediately apparent to the Panel and Respondent did not come
forward to suggest any right or interest it may have possessed).
Furthermore, Respondent’s failure to
contest the Complaint allows the Panel to accept Complainant’s allegations as
true and to draw all reasonable inferences in favor of Complainant. 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
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 has never developed an active
use for the <celebrex24.com>
domain name since registering it in April 2002. While Respondent has not held the domain name passively for a
substantial amount of time, circumstances suggest that Respondent could not
possibly have a valid use for the domain name that would constitute rights or
legitimate interests under Policy ¶ 4(a)(ii).
First, Respondent has not come forward with demonstrable plans to use
the domain name. This suggests that
Respondent has no planned use of the domain name that is a fair non-infringing
use. Second, Respondent’s <celebrex24.com> domain name
wholly incorporates Complainant’s established and unique CELEBREX mark. Complainant’s mark is distinctive and any
foreseeable use of the domain name without any “license or quality controls” by
Complainant would most likely cause confusion.
Respondent has failed to fulfill its burden to produce a legitimate
non-infringing use of Complainant’s coined CELEBREX mark. Therefore, when
considering all relevant circumstances, Respondent’s passive holding of the <celebrex24.com> domain name for
nearly seven months evidences a lack of rights or legitimate interests in the
domain name pursuant to Policy ¶¶ 4(c)(i) and (iii). See Pharmacia &
Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or
legitimate interests where Respondent failed to submit a Response to the
Complaint and had made no use of the domain name in question); see also Ritz-Carlton Hotel v. Club Car Executive,
D2000-0611 (WIPO Sept. 18, 2000) (finding that prior to any notice of the
dispute, Respondent had not used the domain names in connection with any type
of bona fide offering of goods and services).
There exits no evidence that supports a
finding of Respondent’s common identity as CELEBREX24 or <celebrex24.com>. Furthermore, because of the established
goodwill and notoriety of the CELEBREX mark, presumably no other entity is
commonly known by the CELEBREX mark or any similar variation thereof. Therefore, Respondent has no rights or
legitimate interests in the <celebrex24.com>
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 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).
Accordingly, the Panel finds that Respondent
has no rights or legitimate interests in the <celebrex24.com> domain
name; thus, Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
The Policy paragraph 4(b) lists a set of
circumstances that warrant a finding of bad faith. However, the analysis for bad faith is without limitation as the
Policy paragraph 4(b) circumstances are intended to be merely
illustrative. Therefore, the Panel is
permitted to look at the totality of circumstances in order to determine
whether bad faith registration and use exists.
See Educ. Testing Serv. v.
TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (finding that the Policy
“[I]ndicates that its listing of bad faith factors is without limitation”); 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”).
Complainant’s CELEBREX mark is registered
on the Principal Register of the USPTO.
Such registration imparts constructive knowledge upon all subsequent
users of the CELEBREX mark. Hence,
Respondent was charged with the responsibility of clearing the rights in the <celebrex24.com> domain name
prior to registering it. Furthermore,
Complainant coined the CELEBREX mark, which has achieved a substantial amount
of notoriety through Complainant’s extensive campaign and widespread consumer
use of the CELEBREX medication. Thus,
it is presumed that Respondent had knowledge of Complainant’s interest in the
CELEBREX mark prior to registering the <celebrex24.com> domain
name. Moreover, such constructive
knowledge means that Respondent registered the <celebrex24.com> domain name in bad faith. 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
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 has not actively used the <celebrex24.com> domain name
since registering it in April 2002, nearly seven months ago. Given Respondent’s constructive knowledge of
Complainant’s interest in the CELEBREX mark and the confusing similarity of the
domain name, it is evident that the domain name could not be used for a valid
non-infringing purpose. While seven
months is not usually sufficient to find bad faith passive holding, the
notoriety of Complainant’s mark and Respondent’s failure to come forward to
establish a planned use warrants a finding of bad faith use. See E. & J. Gallo Winery v. Oak Inv. Group, D2000-1213 (WIPO Nov.
12, 2000) (finding bad faith where (1) Respondent knew or should have known of
Complainant’s famous GALLO marks and (2) Respondent made no use of the domain
name <winegallo.com>); see also Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260
(WIPO Nov. 23, 2000) (finding bad faith where Respondent made no use of the
domain name in question and there are no other indications that Respondent could
have registered and used the domain name in question for any non-infringing
purpose).
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 <celebrex24.com>
be transferred from Respondent to Complainant.
James P. Buchele, Panelist
Dated:
November 18, 2002
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