DECISION

G.D. Searle & Co. v. Damien Wallace

Claim Number: FA0208000118181

PARTIES

Complainant is G.D. Searle & Co., Skokie, IL, USA (“Complainant”) represented by Paul D. McGrady, of Ladas & Parry.  Respondent is Damien Wallace, Newton, AUSTRALIA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <order-viagra-propecia-celebrex-xenical-online-discreet-shop.com>, registered with DomainPeople Inc.

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.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 12, 2002; the Forum received a hard copy of the Complaint on August 13, 2002.

On August 12, 2002, DomainPeople Inc. confirmed by e-mail to the Forum that the domain name <order-viagra-propecia-celebrex-xenical-online-discreet-shop.com> is registered with DomainPeople Inc. and that Respondent is the current registrant of the name.  DomainPeople Inc. has verified that Respondent is bound by the DomainPeople 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 August 15, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 4, 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@order-viagra-propecia-celebrex-xenical-online-discreet-shop.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 25, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (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.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

The <order-viagra-propecia-celebrex-xenical-online-discreet-shop.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’s CELEBREX mark is registered on the Principal Register of the United States Patent and Trademark Office as Registration Number 2,321,622.  Complainant has also registered its CELEBREX mark in 111 other countries throughout the world.  Complainant’s mark represents “pharmaceutical products in the nature of anti-inflammatory analgesics.”  Due to the extensive marketing and advertising by Complainant for its 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 called it the “sales crown jewel in Pharmacia’s [Complainant] new portfolio.”

Respondent registered the disputed domain name on September 5, 2000.  Respondent does not have a license from Complainant to use the CELEBREX mark. Respondent has not created a website at the disputed domain name.  Respondent has merely posted an “under construction” sign at 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(2) the 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 that it has rights in the CELEBREX mark through registration with the United States Patent and Trademark Office and continuous use.  Furthermore, the <order-viagra-propecia-celebrex-xenical-online-discreet-shop.com> domain name is confusingly similar to Complainant’s mark because it incorporates Complainant’s mark and merely adds a string of other drug brand names and descriptive terms.  The addition of descriptive terms such as “order,” “online,” “shop,” and “discreet,” does not create a distinct mark 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); see also Westfield Corp., Inc. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element). 

Furthermore, the addition of other well-known drug brand names does not diminish the capacity of the disputed domain name to confuse Internet users, therefore it does not create a distinct mark capable of overcoming a claim of confusing similarity.  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”); see also G.D. Searle & Co. v. Entm’t Hosting Servs., Inc., FA 110783 (Nat. Arb. Forum June 3, 2002) (“The Panel concludes that the <viagra-propecia-xenical-celebrex-claritin-prescriptions.com> domain name is confusingly similar to Complainant’s CELEBREX mark because the mere addition of related competing products’ names in the domain name does not defeat a confusing similarity claim”).

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

Rights or Legitimate Interests

Complainant has presented a prima facie case against Respondent, and as a result, the burden shifts to Respondent to establish that it has rights and legitimate interests in the disputed domain name.  Respondent has failed to come forward with a Response, therefore, it is presumed that Respondent lacks rights and legitimate interests in the disputed 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 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).

Furthermore, when Respondent fails to come forward with a Response, the Panel is permitted to accept Complainant’s reasonable allegations as true and make inferences in favor of Complainant.  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 has not used the disputed domain name for any purpose other than the to post an “under construction” sign.  Respondent has held <order-viagra-propecia-celebrex-xenical-online-discreet-shop.com> for two years.  The passive holding of a domain name for such a length of time is not considered to be in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).  See Am. Home Prod. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the domain name <solgarvitamins.com> where Respondent merely passively held the domain name); see also Chanel, Inc. v. Heyward, D2000-1802 (WIPO Feb. 23, 2001) (finding no rights or legitimate interests where “Respondent registered the domain name and did nothing with it”).

There is no evidence on record, and Respondent has not come forward with any evidence to establish that it is commonly known as <order-viagra-propecia-celebrex-xenical-online-discreet-shop.com>.  Therefore, Respondent has failed to establish that it has rights and 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).

Furthermore, any use of the disputed domain name by Respondent will likely be to attract Internet users interested in Complainant to Respondent’s website for Respondent’s commercial gain.  This type of behavior is not considered to be a legitimate, noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); 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 Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Based on the fame of Complainant’s CELEBREX mark it can be inferred that Respondent was on notice of Complainant’s mark when it registered the disputed domain name.  Registration of a domain name incorporating Complainant’s mark despite notice is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii).  See Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 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).

Furthermore, Respondent has held the disputed domain name for two years and has failed to use it for any reason.  Passive holding of a domain name for such a length of time is considered to be evidence of bad faith use pursuant to Policy ¶ 4(a)(iii).  See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that Respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that Respondent made no use of the domain name or website that connects with the domain name, and that passive holding of a domain name permits an inference of registration and use in bad faith).

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 <order-viagra-propecia-celebrex-xenical-online-discreet-shop.com> be transferred from Respondent to Complainant.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated: October 7, 2002

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