DECISION

G.D. Searle & Co. v. 24-dollars-for-3-pill-viagra-trial-pack.com

Claim Number: FA0208000117905

PARTIES

Complainant is G.D. Searle & Co., Skokie, IL (“Complainant”) represented by Paul D. McGrady, of Ladas & Parry.  Respondent is 24-dollars-for-3-pill-viagra-trial-pack.com, Raleigh, NC (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <1st-celebrex-viagra-pharmacy.com>, registered with Tucows.

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding.

Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 8, 2002; the Forum received a hard copy of the Complaint on August 9, 2002.

On August 9, 2002, Tucows confirmed by e-mail to the Forum that the domain name <1st-celebrex-viagra-pharmacy.com> is registered with Tucows and that Respondent is the current registrant of the name.  Tucows has verified that Respondent is bound by the Tucows 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 12, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 3, 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@1st-celebrex-viagra-pharmacy.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 September 18, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson 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 makes the following allegations in this proceeding:

The <1st-celebrex-viagra-pharmacy.com> domain name registered by Respondent is confusingly similar to Complainant’s CELEBREX mark.

Respondent has no rights or legitimate interests in the <1st-celebrex-viagra-pharmacy.com> domain name.

Respondent registered and used the <1st-celebrex-viagra-pharmacy.com> domain name in bad faith.

B. Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant holds Registration Number 2,307,888 with the United States Patent and Trademark Office (“USPTO”) for the CELEBREX mark.  Complainant registered the CELEBREX mark in more than 112 countries around the world and uses the CELEBREX mark in connection with its “pharmaceutical products in the nature of anti-inflammatory analgesics.”

Complainant’s “anti-inflammatory analgesics,” bearing the CELEBREX mark, began receiving media attention as early as December of 1998.  Complainant has developed, by extensive use and broad promotion, the CELEBREX mark and product upon approval of the anti-arthritic medication.  Complainant’s efforts have earned worldwide notoriety for the CELEBREX mark.  In fact, The New York Times called Complainant’s CELEBREX medication a “blockbuster arthritis drug” and Forbes magazine referred to the anti-arthritic medication as a “crown jewel in Pharmacia’s [Complainant’s] new portfolio.” 

Respondent registered the <1st-celebrex-viagra-pharmacy.com> domain name on September 18, 2000.  Respondent has developed a website connected to the domain name for the purpose of soliciting pharmaceutical orders. 

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 as 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.

Identical to and/or Confusingly Similar

Complainant established in this proceeding that it has rights in the CELEBREX mark through proof of its registration with the USPTO, among other authorized trademark registration institutions, and by Complainant’s extensive continuous use of the mark since 1998. 

Respondent’s <1st-celebrex-viagra-pharmacy.com> domain name contains Complainant’s entire CELEBREX mark along with other terms that have an association with Complainant in the industry.  The term “pharmacy” used in the second level domain has a direct relation to Complainant’s area of commerce.  Also, the word “viagra” is a mark coined by a pharmaceutical competitor of Complainant, which fails to detract from the dominating presence of the CELEBREX mark.  Moreover, the addition of the prefix first (“1st”) is without significance because it merely enhances Respondent’s search hits. Therefore, Respondent’s domain name is confusingly similar to Complainant’s CELEBREX mark as there is no introduction of a distinguishing characteristic.  See G.D. Searle & Co.  v. Christensen, FA 100647 (finding <celebrexclaritinpharmacy.com> to be confusingly similar to Complainant’s CELEBREX mark); see also 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 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).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights to or Legitimate Interests

Complainant presents a prima facie case by alleging all the required elements, including Complainant’s assertion that Respondent has no rights or legitimate interests in the subject domain name.  Complainant’s allegations shift the burden to Respondent to articulate its rights or legitimate interests in the subject domain name.  Respondent, however, has failed to appear in this proceeding.  Therefore, the Panel is permitted to presume that Respondent has no rights or legitimate interests in the subject 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).

In addition, because Respondent failed to come forward and answer the Complaint, the Panel may draw all reasonable inferences in Complainant’s favor.  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 <1st-celebrex-viagra-pharmacy.com> domain name to resolve to an online pharmaceutical website where Respondent solicits pharmaceutical orders.  Since the domain name prominently displays Complainant’s CELEBREX mark, Respondent is using Complainant’s mark as a tool to attract Internet users searching for Complainant’s products.  This is an unauthorized use of the CELEBREX mark designed to captivate part of Complainant’s market.  Respondent’s use is not in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it does not represent a legitimate noncommercial or fair use under 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); see also MBS Computers Ltd. v. Workman, FA 96632 (Nat. Arb. Forum Mar. 16, 2001) (finding no rights or legitimate interests when Respondent is using a domain name identical to Complainant’s mark and is offering similar services).

Respondent has no affiliation with Complainant and is not a pharmacy that is authorized to use Complainant’s CELEBREX mark to promote its business.  This Panel knows Respondent only by the name submitted on the WHOIS registration information, “24-dollars-for-3-pill-viagra-trial-pack.com.”  Respondent has not come forward to establish that it is commonly known by the <1st-celebrex-viagra-pharmacy.com> domain name.  Therefore, 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 Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).

Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the <1st-celebrex-viagra-pharmacy.com> domain name; thus, Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Complainant asserts that Respondent registered and used the domain name at issue in bad faith. The following circumstances support the finding that Respondent registered the <1st-celebrex-viagra-pharmacy.com> domain name with at least constructive knowledge of Complainant’s rights in the CELEBREX mark:  (1) the CELEBREX mark had gained worldwide fame and notoriety by the time Respondent registered the domain name, and (2) Respondent used Complainant’s pharmaceutical related CELEBREX mark to attract Internet users to a website that sells pharmaceutical products.  Thus, because of Respondent’s apparent knowledge of Complainant’s rights in the CELEBREX mark, Respondent registered a domain name that incorporates the mark in its entirety, which constitutes bad faith registration.  See Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the worldwide prominence of the mark and thus Respondent registered the domain name in bad faith); 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 Chanel, Inc. AG v. Designer Exposure, D2000-1832 (WIPO Feb. 15, 2001) (finding that Respondent's registration and use of the famous CHANEL mark suggests opportunistic bad faith).

Respondent’s diversionary use of the confusingly similar <1st-celebrex-viagra-pharmacy.com> domain name also constitutes bad faith under Policy ¶ 4(b)(iv).  Respondent is commercially gaining from the established goodwill associated with the CELEBREX mark by using the mark to attract Internet users to its website that solicits pharmaceutical orders.  Respondent’s website will likely confuse Internet users as to Complainant’s affiliation or sponsorship since the CELEBREX mark is prominently displayed in the corresponding domain name.  Thus, Respondent is using Complainant’s mark in bad faith.  See State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where Respondent registered the domain name <bigtex.net> to infringe on Complainant’s goodwill and attract Internet users to Respondent’s website); see also Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that Respondent acted in bad faith by registering the domain name <fossilwatch.com> and using it to sell various watch brands).

Furthermore, Respondent qualifies as Complainant’s competitor in the pharmaceutical industry because both parties distribute pharmaceutical medication.  As a competitor, Respondent disrupts Complainant’s business by attracting consumers to its website by way of using Complainant’s CELEBREX mark.  Therefore, the Panel finds that Respondent uses the domain name in bad faith pursuant to Policy ¶ 4(b)(iii).  See Mission Kwa Sizabantu v. Rost, D2000-0279 (WIPO June 7,2000) (defining “competitor” as "…one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor”); see also Lubbock Radio Paging v. Venture Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000) (concluding that domain names were registered and used in bad faith where Respondent and Complainant were in the same line of business in the same market area); see also Nokia Corp. v. Uday Lakhani, D2000-0833 (WIPO Oct. 19, 2000) (transferring <nokias.com> from Respondent cellular phone dealer to Complainant).

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 <1st-celebrex-viagra-pharmacy.com> be transferred from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated: October 2, 2002.

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2002/1401.html