G.D. Searle &
Co. v. !!!#1 Celebres Xenical Online
Claim Number:
FA0210000126837
PARTIES
Complainant is
G.D. Searle & Co., Peapack, NJ (“Complainant”) represented by Paul D. McGrady, Jr., of Ladas & Parry. Respondent is !!!#1 Celebrex Xenical Online, Beverly Hills, CA (“Respondent”).
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <1-celebrex-xenical-online.com>, registered with AllDomains.com, Inc.
PANEL
The undersigned certifies that she has acted
independently and impartially and to the best of her knowledge has no known
conflict in serving as Panelist in this proceeding.
Sandra Franklin as Panelist.
PROCEDURAL
HISTORY
Complainant submitted a Complaint to the National
Arbitration Forum (the “Forum”) electronically on October 3, 2002; the Forum
received a hard copy of the Complaint on .
On October 3, 2002, AllDomains.com, Inc. confirmed by
e-mail to the Forum that the domain name <1-celebrex-xenical-online.com>
is registered with AllDomains.com, Inc. and that Respondent is the current
registrant of the name. AllDomains.com,
Inc. has verified that Respondent is bound by the AllDomains.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@1-celebrex-xenical-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 November 18, 2002, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the Forum
appointed Sandra Franklin 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.
PROCEDURAL ISSUE – MARKS OF MULTIPLE PARTIES
Respondent’s <1-celebrex-xenical-online.com>
domain name incorporates 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), and Roche Laboratories, Inc. (XENICAL). 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 <1-celebrex-xenical-online.com>
domain name is confusingly similar to Complainant's CELEBREX mark.
Respondent has no rights or legitimate interests in
the disputed domain name.
Respondent registered and used the disputed domain
name in bad faith.
B. Respondent
Respondent failed to submit a Response.
FINDINGS
Complainant has
promoted its CELEBREX mark on a global scale.
Due to its extensive marketing and advertising campaigns that promote
the CELEBREX mark, the mark has earned worldwide notoriety. The
New York Times referred to Complainant’s CELEBREX product as a “blockbuster
arthritis drug,” and Forbes referred
to CELEBREX as the “sales crown jewel in [Complainant’s] new portfolio.”
Complainant has
registered its CELEBREX mark in 112 countries around the world, including the
United States. Complainant’s mark is
registered on the Principal Register of the United States Patent and Trademark
Office as Registration Number 2,321,622.
Complainant’s mark represents “pharmaceutical products in the nature of
anti-inflammatory analgesics.”
Respondent
registered the disputed domain name on March 9, 2001. Respondent is using the disputed domain name in order to solicit
drug orders from Internet users.
Respondent does not have a license from Complainant 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 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, through its registration with the United States Patent and
Trademark Office, that it has rights in the CELEBREX mark. Furthermore, Complainant’s wide-spread and
international use of the mark has created significant goodwill and fame for
Complainant’s CELEBREX mark.
Respondent’s <1-celebrex-xenical-online.com> domain
name is confusingly similar to Complainant’s mark because it merely
incorporates the brand name of another popular drug, the numeral “1,” and the
descriptive term “online.”
Complainant’s CELEBREX mark is still one of the more distinctive
characteristics of the domain name despite these additions. The addition of the XENICAL mark merely
contributes to the Internet user confusion as to the source, sponsorship and
affiliation of the disputed domain name.
See G.D. Searle & Co. v. Fred
Pelham, FA 117911 (Nat. Arb. Forum Sept. 19, 2002) (finding that the
addition of other drug names does not create a distinct mark capable of
overcoming a claim of confusing similarity, “it merely creates a domain name
with severe potential to confuse Internet users as to the source, sponsorship
and affiliation of the domain”).
Moreover, the addition of a single number such as “1” does not create a
distinct mark capable of overcoming a claim of confusing similarity. See
Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000)
(finding that a domain name which differs by only one letter from a trademark
has a greater tendency to be confusingly similar to the trademark where the
trademark is highly distinctive).
Finally, the addition of a generic term such as “online” does nothing
other than designate that the marks included in the domain name may be found on
the Internet. The addition of a term
such as “online” does not add any distinctive qualities to the disputed domain
name capable of overcoming a Policy ¶ 4(a)(i) confusingly similar
analysis. See 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).
The addition of
hyphens in-between the words of the disputed domain name also does not create
any distinctive characteristic capable of overcoming a claim on confusing
similarity. See Chernow Communications Inc. v. Kimball, D2000-0119 (WIPO May
18, 2000) (holding “that the use or absence of punctuation marks, such as
hyphens, does not alter the fact that a name is identical to a mark"); see also Dollar Fin. Group, Inc. v. Advanced Legal Sys., Inc., FA 95102
(Nat. Arb. Forum Aug. 14, 2000) (finding that the domain name
<loan-mart.com> is confusingly similar to the Complainant’s mark).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Rights or
Legitimate Interests
Respondent has
failed to respond, therefore it is assumed that Respondent lacks rights and
legitimate interests in the disputed domain name. When Complainant asserts a prima
facie case against Respondent, the burden of proof shifts to Respondent to
show that it has rights or legitimate interests pursuant to Policy ¶
4(a)(ii). 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 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).
Furthermore,
because Respondent has not submitted a Response, it is appropriate for the
Panel to accept all reasonable allegations and inferences in the Complaint 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 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 is
using a confusingly similar domain name in order to attract Internet users
looking for Complainant’s CELEBREX product to Respondent’s website. The use of Complainant’s mark to attract
Internet users to Respondent’s website is not considered to be a use in
connection with a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i), or a legitimate, noncommercial or fair use pursuant to Policy ¶
4(c)(iii). See Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar.
9, 2000) (finding no legitimate use when Respondent was diverting consumers to
its own website by using Complainant’s trademarks); see also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d
110, 114 (D. Mass. 2002) (finding that, because Respondent's sole purpose in
selecting the domain names was to cause confusion with Complainant's website
and marks, it's use of the names was not in connection with the offering of
goods or services or any other fair use).
Based on the fame
of Complainant’s mark, as well as the well-known nature of the XENICAL mark it
would be very difficult for Respondent to establish that it is commonly known
by the disputed domain name. Respondent
has failed to come forward with any evidence in this dispute, therefore there
is no proof on record that Respondent is commonly known by 1-CELEBREX-XENICAL-ONLINE
or <1-celebrex-xenical-online.com>. Therefore, Respondent has not established
that it has rights or legitimate interests in the disputed 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 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).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Registration and
Use in Bad Faith
Respondent’s
website is confusingly similar to Complainant’s CELEBREX mark and therefore, it
can be inferred that Respondent registered the disputed domain name in order to
attract Internet users interested in Complainant to Respondent’s website. This behavior is evidence of bad faith use
pursuant to Policy ¶ 4(b)(iv) because Respondent has created a likelihood of
confusion for its own commercial gain. See Am. Online, Inc. v. Tencent Comm. Corp.,
FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent
registered and used an infringing domain name to attract users to a website
sponsored by Respondent); see also Drs. Foster & Smith, Inc. v. Lalli,
FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent
directed Internet users seeking Complainant’s site to its own website for
commercial gain).
Based on the fact
that Respondent is using Complainant’s CELEBREX mark in order to attract
Internet users to its website it can be inferred that Respondent had knowledge
of Complainant’s rights in the CELEBREX mark when it registered the disputed
domain name. Registration of a domain
name, despite knowledge of Complainant’s rights is evidence of bad faith
pursuant to Policy ¶ 4(a)(iii). 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 <1-celebrex-xenical-online.com>
be transferred from Respondent to
Complainant.
Sandra Franklin,
Panelist
Dated: December
2, 2002
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