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Generic Top Level Domain Name (gTLD) Decisions |
G.D. Searle & Co. v. Celebrex Cox-2
Vioxx.com
Claim Number: FA0209000124508
PARTIES
Complainant
is G.D. Searle & Co., Skokie,
IL, USA (“Complainant”) represented by Paul
D. McGrady, of Ladas & Parry. Respondent is Celebrex Cox-2 Vioxx.com, Brighton, East Sussex, UNITED KINGDOM
(“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <celebrex-cox-2-vioxx.com>,
registered with Tucows.
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 September 3, 2002; the Forum received
a hard copy of the
Complaint on September 3, 2002.
On
September 4, 2002, Tucows confirmed by e-mail to the Forum that the domain name
<celebrex-cox-2-vioxx.com> is
registered with Tucows and that the 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
September 5, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”),
setting a deadline
of September 25, 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@celebrex-cox-2-vioxx.com
by e-mail.
A
timely Response was received and determined to be complete on September 17,
2002.
Complainant
and Respondent timely sent Additional Submissions on September 20, 2002.
On October 7, 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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
The
<celebrex-cox-2-vioxx.com> domain name is confusingly similar to
Complainant’s mark.
Respondent has no rights or legitimate interests in
the <celebrex-cox-2-vioxx.com> domain name.
Respondent registered and used the <celebrex-cox-2-vioxx.com>
domain name in bad faith.
B.
Respondent
Respondent,
a resident of the U.K., contends that the Forum lacks jurisdiction over the
controversy.
C.
Additional Submissions
The
parties address jurisdictional contentions in the additional submissions.
FINDINGS
Complainant owns registered trademarks
for the CELEBREX mark. The CELEBREX
mark is used by Complainant to market “pharmaceutical products in the nature of
anti-inflammatory analgesics.”
Moreover, Complainant has successfully used the CELEBREX mark to market
and advertise the sale of anti-arthritic medicine throughout
the world.
Since the
inception of the CELEBREX mark, Complainant has aggressively pursued worldwide
trademark protection for the mark; Complainant
has filed for applications to
register the mark in over 112 countries.
Complainant’s CELEBREX medication has
been recognized as a “blockbuster arthritis drug” and a “crown jewel in
[Complainant’s] new
portfolio” by The New York Times and Forbes,
respectively. Because of Complainant’s
marketing efforts and the popularity of Complainant’s medication, the CELEBREX
mark enjoys a substantial
amount of notoriety.
The mark VIOXX, which is in the disputed
domain name, is used by a competitor of Complainant to denote similar pain
relieving pharmaceuticals.
Respondent registered the <celebrex-cox-2-vioxx.com> domain
name on September 18, 2000. Respondent
is using the disputed domain name in order to solicit drug orders from
individuals. Complainant never
authorized Respondent’s registration of the domain name containing Complainant’s
CELEBREX mark, nor did Complainant
ever grant Respondent permission to use the
CELEBREX mark.
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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.”
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;
(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.
Jurisdiction
Respondent challenges the Forum’s
jurisdiction. By registering the
disputed domain name with Tucows, Respondent is bound by the Tucows’
registration agreement and has agreed to resolve
domain name disputes in
accordance with ICANN’s Policy.
Respondent has submitted to the UDRP Policy by virtue of its domain name
registration with Tucows, which adopted the UDRP Policy. See Draw-Lite, Inc. v. Plattsburgh Spring
Inc., D2000-0017 (WIPO March 14, 2000) (“The Forum has jurisdiction over
this matter pursuant to the Policy”).
Identical and/or Confusingly Similar
Complainant has established its rights in
the CELEBREX mark through registration with
the USPTO and continuous use since the
mark’s inception.
Respondent’s
<celebrex-cox-2-vioxx.com> domain
name contains Complainant’s entire CELEBREX mark at the forefront. Respondent uses the CELEBREX mark along with
the VIOXX mark, which is a mark of a competitor of Complainant, in a string of
names
in the second-level domain. These
marks are used for identification.
Using Complainant’s mark along with a competitor’s mark in a domain name
does not defeat a confusingly similar claim.
See G.D. Searle & Co. v. Entm’t Hosting Services, Inc., FA 110783 (Nat. Arb. Forum June 3, 2002) (“[t]he
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”); see also G.D.
Searle & Co. v. Christensen, FA 100647
(Nat. Arb. Forum Dec. 4, 2001) (finding <celebrexclaritinpharmacy.com> to
be confusingly similar to Complainant’s
CELEBREX mark).
Furthermore, Complainant uses the
generic, hyphenated phrase “cox-2” as a suffix to the source identifying marks
in the second-level
domain. The use of
the phrase “cox-2” fails to detract from the dominating presence of
Complainant’s CELEBREX mark.
Complainant’s mark has an especially dominating presence compared to the
use of Complainant’s competitor’s mark in the domain name
because it is the
first mark used in the second-level domain.
Therefore, the Panel finds that the <celebrex-cox-2-vioxx.com> domain name is confusingly similar to
Complainant’s CELEBREX 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 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
Respondent has no connection to
Complainant that would allow Respondent to rightfully use the CELEBREX mark in
the disputed domain
name. Complainant
never authorized or licensed Respondent to use the CELEBREX mark for any reason.
Respondent is using the <celebrex-cox-2-vioxx.com> domain
name to sell pharmaceuticals. Because
the domain name is confusingly similar
to Complainant’s mark, Respondent is using Complainant’s mark in order to
attract Internet users
interested in Complainant’s product to Respondent’s
website for Respondent’s commercial gain.
Respondent’s use is not considered to be 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 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
The list of bad faith circumstances in
Policy paragraph 4(b) is not an exhaustive representation of what constitutes
bad faith. The Panel must review the
totality of circumstances when determining whether Respondent registered and
used the domain name in bad
faith. See
Cellular One Group v. Brien,
D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of
the Policy is not an exhaustive list of bad faith
evidence); 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”).
Based on the fame of Complainant’s
CELEBREX mark, its international recognition, and the fact that Respondent
chose to include the
CELEBREX mark in the disputed domain name for the purpose
of attracting customers, it can be inferred that Respondent had knowledge
of
Complainant’s rights in the mark when it registered the disputed domain
name. Registration of a domain name
that includes a famous mark, despite knowledge of Complainant’s rights in the
mark, is evidence of bad
faith 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 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 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); see also Nintendo of
Am. Inc v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding that
Respondent, at the time of registration, had notice of Complainant’s famous
POKÉMON and PIKACHU trademarks given their extreme
popularity); see also Victoria’s Cyber
Secret Ltd. P’ship v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a
Principal Register registration [of a trademark or service mark] is
constructive
notice of a claim of ownership so as to eliminate any defense of
good faith adoption” pursuant to 15 U.S.C. § 1072).
Furthermore, Respondent is using the
disputed domain name in order to attract Internet users looking for
Complainant’s products to
Respondent’s website. Respondent is therefore commercially benefiting from the likelihood
of confusion created by Respondent’s use of Complainant’s mark. This type of behavior is evidence of bad
faith use pursuant to Policy ¶ 4(b)(iv).
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 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).
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 <celebrex-cox-2-vioxx.com> be TRANSFERRED from
Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated: October 16, 2002
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