G.D. Searle & Co. v. Kevin Dunham
Claim Number: FA0208000123901
PARTIES
Complainant
is G.D. Searle & Co., Skokie,
IL, USA (“Complainant”) represented by Paul
D. McGrady, of Ladas & Parry. Respondent is Kevin Dunham, Penticton, BC, CANADA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <buy-celebrex-ultram-vioxx-zyban-propecia-drugs-order-online.com>,
registered with Enom.
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 28, 2002; the Forum received a hard copy of the
Complaint on August 29, 2002.
On
August 29, 2002, Enom confirmed by e-mail to the Forum that the domain name <buy-celebrex-ultram-vioxx-zyban-propecia-drugs-order-online.com>
is registered with Enom and that Respondent is the current registrant of the
name. Enom has verified that Respondent
is bound by the Enom 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 30, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of September
19, 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@buy-celebrex-ultram-vioxx-zyban-propecia-drugs-order-online.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
October 4, 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
<buy-celebrex-ultram-vioxx-zyban-propecia-drugs-order-online.com>
domain name incorpates numerous
parties’ marks and interests. More
specifically, the following drug companies are implicated by way of Respondent’s
domain name: G.D. Searle (Complainant) (CELEBREX), Ortho-McNeil Pharmaceutical
(ULTRAM), Merck (VIOXX), GlaxoSmithKline (ZYBAN), and Merck (PROPECIA). 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. See G.D.
Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002)
(Complainant’s continuing control of the <viagra-xenical-celebrex-propecia-meridia-zyban.com>
domain name is contingent upon good faith possession, and Complainant will
forfeit its interest in the domain name if it infringes on the other
represented marks).
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
The
<buy-celebrex-ultram-vioxx-zyban-propecia-drugs-order-online.com>
domain name is confusingly similar to Complainant’s CELEBREX mark.
Respondent
has no rights or legitimate interests in the <buy-celebrex-ultram-vioxx-zyban-propecia-drugs-order-online.com>
domain name.
Respondent
registered the <buy-celebrex-ultram-vioxx-zyban-propecia-drugs-order-online.com>
domain name in bad faith.
B.
Respondent
Respondent failed to submit a Response in
this proceeding.
FINDINGS
Complainant owns Reg. No. 2,307,888
with the United States Patent and Trademark Office for the CELEBREX mark. In an effort to proactively safeguard its
rights in the CELEBREX mark, Complainant has filed trademark applications in
more than 112 countries around the world.
Complainant coined the CELEBREX mark for use in connection with its
“pharmaceutical products in the nature of anti-inflammatory analgesics.” Complainant began seeking trademark
protection in 1998, when it filed applications for registration in the United
States on February 10, 1998 and abroad on February 16, 1998.
Complainant has extensively used the
CELEBREX mark for the past four years on a global scale marketing and
distributing its anti-arthritic medicine.
The CELEBREX anti-arthritic medicine has gained recognition by The
New York Times and Forbes magazine, each labeling the medicine a
“blockbuster arthritis drug” and “the $2 billion (sales) crown jewel in
[Complainant’s] new portfolio,” respectively.
As evidenced by Complainant’s extensive use of the fanciful CELEBREX
mark in commerce and the attention given to the CELEBREX medicine, the CELEBREX
mark is well-known in the United States and abroad.
Respondent registered the <buy-celebrex-ultram-vioxx-zyban-propecia-drugs-order-online.com>
domain name on December 14, 2001.
Respondent uses the domain name to attract Internet users to its website
where Respondent solicits drug orders online.
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 demonstrated its rights
in the CELEBREX mark through proof of ownership of numerous international
trademark registrations, including registration with the USPTO, along with
substantial use of the fanciful CELEBREX mark.
Respondent’s domain name incorporates
Complainant’s CELEBREX mark along with other pharmaceutical-related marks that
do not belong to Complainant. The
incorporation of an entity’s mark combined with industry related marks in a
domain name falls within the purview of a “confusingly similar” analysis. The fact that the CELEBREX mark appears in
the domain name with other medicine-related trademarks does not create a
distinct domain name; rather, it enhances the consumer confusion and the domain
name’s dilution capacity. See G.D.
Searle & Co. v. Paramount Mktg., FA 118307 (Nat. Arb. Forum Sept. 27,
2002) (holding that the addition of other well-known pharmaceutical drug brand
names to the <viagra-xenical-propecia-meridia-bontril-phentermine-celebrex.com>
domain name does not diminish the capacity of the disputed domain name to
confuse Internet users, but actually “adds to the potential to confuse”); see
also G.D. Searle & Co. v. Christensen, FA 100647 (finding <celebrexclaritinpharmacy.com>
to be confusingly similar to Complainant’s CELEBREX mark).
Furthermore, the addition of the
suggestive words “buy,” “drugs,” “order” and “online” enhance the domain name’s
capacity to confuse Internet users.
These words all suggest a connection to Complainant’s CELEBREX mark. Therefore, the fanciful CELEBREX mark
remains a dominant portion of the domain name and thus the domain name is
confusingly similar to the 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 Complainant combined with a generic word
or term); see also Broadcom Corp.
v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001) (finding the
<broadcomonline.com> domain name is confusingly similar to Complainant’s
BROADCOM mark); 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
Complainant has successfully alleged a prima
facie case, which includes Complainant’s contention that Respondent has no
rights or legitimate interests in the subject domain name. Complainant’s burden of production has been
satisfied and the burden is shifted to Respondent to demonstrate its rights and
legitimate interests in the domain name.
Respondent, however, has failed to come forward to challenge the
Complaint. Therefore, the Panel
presumes 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 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, Respondent’s failure to
rebut Complainant’s allegations allows all reasonable inferences to be drawn in
Complainant’s favor and the Panel accepts the allegations as true. 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); 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”).
Respondent uses the <buy-celebrex-ultram-vioxx-zyban-propecia-drugs-order-online.com>
domain name to attract Internet users to its website where it solicits drug
orders. Respondent is engaging in the
practice of using well-known trademarks to advertise its service of offering
the products associated with the trademarks for sale. Respondent has no authorization to use the CELEBREX mark for such
a use, let alone any use. Respondent’s
use of Complainant’s trademark to attract Internet users to its commercial
website does not represent a bona fide offering of goods or services pursuant
to Policy ¶ 4(c)(i), nor does it constitute a legitimate noncommercial or fair
use pursuant to Policy ¶ 4(c)(iii). 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 bona fide use).
The evidence on record suggests
Respondent is known as Kevin Dunham and is not commonly referred to by the
subject domain name. Also, as
previously mentioned, Respondent has not been granted authority to use
Complainant’s CELEBREX mark. 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 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 subject domain name;
thus, Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Policy paragraph 4(b) contains a list of
non-exclusive circumstances that are examples of bad faith use and registration
of a domain name. Since the list is not
exclusive, the Panel may look at the totality of circumstances in order to
decipher whether the subject domain name was registered and used in bad faith. See Do The Hustle, LLC v. Tropic
Web, D2000-0624 (WIPO Aug. 21, 2000) (“the examples [of bad faith]
in Paragraph 4(b) are intended to be illustrative, rather than exclusive”); 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”).
The circumstances of the present case
make it evident that Respondent incorporated Complainant’s CELEBREX mark in the
domain name with knowledge of Complainant’s rights in order to trade off of the
goodwill of the mark. The CELEBREX mark
has achieved an international level of fame since its inception. In addition, Respondent is using the mark
and other industry related marks to sell pharmaceutical products. Since Respondent is in the pharmaceutical
business, it may be inferred that Respondent was aware of Complainant’s
interests in the CELEBREX mark, especially in light of Respondent’s use of the
mark as an advertising tool. Therefore,
Respondent’s registration of the domain name, despite knowledge of
Complainant’s interest in the CELEBREX mark, constitutes bad faith
registration. See Entrepreneur
Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that
"[w]here an alleged infringer chooses a mark he knows to be similar to
another, one can infer an intent to confuse"); see also 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).
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 <buy-celebrex-ultram-vioxx-zyban-propecia-drugs-order-online.com>
be transferred from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: October 9, 2002
Click Here to
return to the main Domain Decisions Page.
Click Here to return to our Home Page