DECISION

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.

PROCEDURAL ISSUE – MARKS OF MULTIPLE PARTIES

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, [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).

Respondent’s use of the subject domain name as an advertising tool to attract Internet users to its commercial pharmaceutical website is bad faith under Policy ¶ 4(b)(iv).  Respondent’s use of the CELEBREX mark is designed to draw Internet users to its website where it then sells CELEBREX medication.  Such a use carries with it a high probability of confusing Internet users as to Complainant’s association with Respondent’s pharmaceutical solicitation website.  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).

            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

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