G.D. Searle & Co. v. Caroline Street Clinic
Claim Number: FA0303000151543
Complainant is G.D.
Searle & Co., Peacock, NJ (“Complainant”) represented by
Paul D. McGrady, Jr. of Ladas & Parry. Respondent is Caroline
Street Clinic, Key West, FL (“Respondent”).
REGISTRAR AND DISPUTED
DOMAIN NAME
The domain name at issue
is <buy-ultram-celebrex-vioxx-flexeril-soma-medication-online.com>
registered with Bulkregister.com, Inc.
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.
Honorable Paul A. Dorf
(Ret.) as Panelist.
Complainant submitted a
Complaint to the National Arbitration Forum (the "Forum")
electronically on March 25, 2003; the Forum received a hard copy of the
Complaint on March 26, 2003.
On March 26, 2003, Bulkregister.com,
Inc. confirmed by e-mail to the Forum that the domain name <buy-ultram-celebrex-vioxx-flexeril-soma-medication-online.com>
is registered with Bulkregister.com, Inc. and that Respondent is the current
registrant of the name. Bulkregister.com, Inc. has verified that Respondent is
bound by the Bulkregister.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 March 31, 2003, a
Notification of Complaint and Commencement of Administrative Proceeding (the
"Commencement Notification"), setting a deadline of April 21, 2003 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-ultram-celebrex-vioxx-flexeril-soma-medication-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 April 28, 2003,
pursuant to Complainant's request to have the dispute decided by a
single-member Panel, the Forum appointed Honorable Paul A. Dorf (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.
Complainant requests
that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <buy-ultram-celebrex-vioxx-flexeril-soma-medication-online.com>
domain name is confusingly similar to Complainant’s CELEBREX mark.
2. Respondent does not have
any rights or legitimate interests in the <buy-ultram-celebrex-vioxx-flexeril-soma-medication-online.com>
domain name.
3. Respondent registered
and used the <buy-ultram-celebrex-vioxx-flexeril-soma-medication-online.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant holds a
trademark registration with the United States Patent and Trademark Office
(“USPTO”) for the CELEBREX mark (Reg. No. 2,307,888 registered January 11,
2000) related to pharmaceuticals in the nature of anti-inflammatory analgesics.
Complainant has also filed applications to register the CELEBREX mark in more
than 112 countries worldwide. Complainant operates a website at
<celebrex.com> where Internet users can gather information about
Complainant’s products.
Respondent registered
the <buy-ultram-celebrex-vioxx-flexeril-soma-medication-online.com>
domain name on January 26, 2002. Respondent is using the disputed domain name
to redirect Internet users to <prescriptionskeywest.com>, a website that
offers medications for sale online.
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 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 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.
Complainant has
established that it has rights in the CELEBREX mark through registration with
the USPTO and continuous use in commerce.
Respondent’s <buy-ultram-celebrex-vioxx-flexeril-soma-medication-online.com>
domain name is confusingly similar to Complainant’s CELEBREX mark because the
disputed domain name incorporates Complainant’s entire mark and adds the
descriptive terms “buy,” “medication” and “online,” and the trademarks ULTRAM,
VIOXX, FLEXERIL and SOMA. The addition of descriptive terms such as “buy,”
“medication” and “online” to a famous mark does not sufficiently differentiate
the disputed domain name from Complainant’s mark, especially when those terms
clearly relate to the business of the trademark holder. See Space Imaging
LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where Respondent’s domain name combines Complainant’s mark with a
generic term that has an obvious relationship to Complainant’s business); see
also Marriott Int’l v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13,
2000) (finding that Respondent’s domain name <marriott-hotel.com> is
confusingly similar to Complainant’s MARRIOTT mark).
The inclusion of the
names of other trademarked medications in the disputed domain name increases
the likelihood of confusion among Internet users. 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. Mahoney, FA 112559 (Nat. Arb. Forum June 12,
2002) (holding the domain name to be confusingly similar where
<e-viagra-xenical-celebrex-propecia.com> merely includes the addition of
related industry-specific words, namely, the marks of Complainant’s
competitors).
The Panel finds that
Policy ¶ 4(a)(i) has been established.
Respondent
has not taken its opportunity to answer the Complaint. Therefore, the Panel is
permitted to accept all reasonable allegations and inferences in the Complaint
as true. 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 Bayerische Motoren Werke AG v. Bavarian AG,
FA110830 (Nat. Arb. Forum June 17, 2002) (finding that in the absence of a
Response the Panel is free to make inferences from the very failure to respond
and assign greater weight to certain circumstances than it might otherwise do).
Furthermore,
because of Respondent’s failure to answer, the Panel may presume that
Respondent lacks any rights to or legitimate interests in the disputed domain
name pursuant to Policy ¶ 4(a)(ii). See Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response,
Respondent has failed to invoke any circumstance which could demonstrate any
rights or legitimate interests in the domain name); see also BIC Deutschland
GmbH & Co. KG v. Tweed, D2000-0418 (WIPO
June 20, 2000) (“By not submitting a response, Respondent has failed to invoke
any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any
rights or legitimate interests in the domain name”).
Respondent
is using the disputed domain name to redirect Internet traffic to its website,
<prescriptionskeywest.com>, which offers medications for sale online in
competition with Complainant. The Panel infers that Respondent is using
Complainant’s mark to divert Internet users who are interested in Complainant’s
product to Respondent’s website, which is neither a bona fide offering of goods
or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use
under Policy ¶ 4(c)(iii). See N. Coast Med., Inc. v. Allegro Med., FA
95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no bona fide use where Respondent
used the domain name to divert Internet users to its competing website); see
also 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).
The
Respondent has provided the Panel with no evidence and there is nothing in the
record to suggest that Respondent is commonly known by the disputed domain
name. Thus, Respondent has failed to demonstrate that it has any rights to or
legitimate interests in the disputed domain with regard to Policy ¶ 4(c)(ii). See
RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001)
(Interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been
commonly known by the domain name prior to registration of the domain name to
prevail"); see also Medline, Inc. v. Domain Active Pty. Ltd., FA
139718 (Nat. Arb. Forum Feb. 6, 2003) (“Considering the nonsensical nature of
the [<wwwmedline.com>] domain name and its similarity to Complainant’s
registered and distinctive [MEDLINE] mark, the Panel concludes that Policy ¶
4(c)(ii) does not apply to Respondent”).
Therefore,
the Panel concludes that Complainant has established Policy ¶ 4(a)(ii).
Respondent
is using the disputed domain name to divert Internet users to its website,
which sells medications in direct competition with Complainant. The
registration and use of a domain name confusingly similar to a registered mark
primarily for the purpose of disrupting the business of a competitor is
evidence of bad faith pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb.
Forum July 18, 2000) (finding Respondent acted in bad faith by attracting
Internet users to a website that competes with Complainant’s business); see
also EBAY, Inc. v. MEOdesigns & Matt Oettinger, D2000-1368 (Dec. 15,
2000) (finding that the Respondent registered and used the domain name
<eebay.com> in bad faith where Respondent has used the domain name to
promote competing auction sites).
Moreover, by
registering and using a domain name confusingly similar to Complainant’s mark
to compete directly with Complainant, Respondent’s behavior indicates that it
intentionally attempted to attract Internet users to its website for commercial
gain by creating a likelihood of confusion with Complainant’s mark, which is
evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). 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
G.D. Searle & Co. v. 24-7-Commerce.com, FA 114707 (Nat. Arb. Forum July
31, 2002) (finding that although Respondent failed to come forward and provide
evidence of a planned use for the
<celebrex-vioxx-ultram-super-blue-stuff.com> domain name, due to the fact
that the domain name incorporates marks of competing pharmaceutical products,
it can be inferred that Respondent registered the domain name for ultimate use
as an online pharmacy).
Accordingly,
the Panel finds that Complainant has established Policy ¶ 4(a)(iii).
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly,
it is Ordered that the <buy-ultram-celebrex-vioxx-flexeril-soma-medication-online.com>
domain name be TRANSFERRED from Respondent to Complainant.
Honorable
Paul A. Dorf (Ret.) Panelist
Dated: April 30, 2003
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