DECISION

G.D. Searle & Co. v. John Gergen

Claim Number: FA0208000123931

PARTIES

Complainant is G.D. Searle & Co., Skokie, IL (“Complainant”) represented by Paul D. McGrady, of Ladas & Parry.  Respondent is John Gergen, Mantorville, MN (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <celebrex-ultram-vioxx-md.com>, registered with Network Solutions.

PANEL

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

Sandra Franklin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 29, 2002; the Forum received a hard copy of the Complaint on August 30, 2002.

On September 3, 2002, Network Solutions confirmed by e-mail to the Forum that the domain name <celebrex-ultram-vioxx-md.com> is registered with Network Solutions and that Respondent is the current registrant of the name.  Network Solutions has verified that Respondent is bound by the Network Solutions 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 3, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 23, 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-ultram-vioxx-md.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 8, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Sandra Franklin 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 <celebrex-ultram-vioxx-md.com> domain name incorporates 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), and Merck (VIOXX).  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 <celebrex-ultram-vioxx-md.com> domain name is confusingly similar to Complainant’s CELEBREX mark.

Respondent has no rights or legitimate interests in the <celebrex-ultram-vioxx-md.com> domain name.

Respondent registered and used the <celebrex-ultram-vioxx-md.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. 

In addition, 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.  Due to Complainant’s extensive use of the fanciful CELEBREX mark in commerce and the publicity associated with the CELEBREX medicine, the CELEBREX mark is well-known in the United States and abroad. 

Respondent registered the <celebrex-ultram-vioxx-md.com> domain name on October 8, 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 established its rights in the CELEBREX mark through proof of registration with the USPTO and continuous use in commerce.

Respondent’s <celebrex-ultram-vioxx-md.com> domain name incorporates Complainant’s entire CELEBREX mark with the addition of other pharmaceutical trademarks (ULTRAM and VIOXX), and the abbreviation “md.”  Respondent uses the CELEBREX mark to attract Internet users to its pharmacy website, which constitutes a confusingly unauthorized use of the mark.  The use of other pharmaceutical marks in the domain name only enhances the capacity of the domain name to confuse the consuming public.  In addition, the use of “md” (medical doctor) does not take the domain name out of the realm of confusing similarity because “md” has an obvious relationship to Complainant’s business.  See G.D. Searle & Co.  v. Christensen, FA 100647 (finding <celebrexclaritinpharmacy.com> to be confusingly similar to Complainant’s CELEBREX mark); see also 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 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 or Legitimate Interests

Complainant has successfully alleged a prima facie case, including Complainant’s contention that Respondent has no rights or legitimate interests in the <celebrex-ultram-vioxx-md.com> domain name.  Thus, the burden effectively shifts to Respondent to articulate its rights or legitimate interests in the domain name.  Respondent, however, has not fulfilled its burden because Respondent has failed to submit a Response.  Therefore, the Panel may presume that Respondent has no rights or legitimate interests in the domain name.  See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under certain circumstances the mere assertion by Complainant that Respondent has no right or legitimate interest is sufficient to shift the burden of proof to Respondent to demonstrate that such a right or legitimate interest does exist); 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).

In addition, since Respondent failed to rebut Complainant’s contentions, Complainant’s allegations may be accepted as true and all reasonable inferences will be in favor of Complainant.  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 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).

Respondent uses the <celebrex-ultram-vioxx-md.com> domain name to resolve to its website where it solicits pharmaceutical orders.  Respondent specifically solicits orders for the three medications listed in the domain name (CELEBREX, ULTRAM and VIOXX), which are all pain-relieving medicines.  It is established precedent that the unauthorized use of another’s mark to sell that entity’s products along with other products is not 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 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 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).

Respondent has no legitimate business affiliation with Complainant and, as such, Respondent does not have authorized permission to use the CELEBREX mark.  Based on the information contained on the record, Respondent is known as John Gergen.  There is nothing to indicate that Respondent is commonly known by the <celebrex-ultram-vioxx-md.com> domain name.  Therefore, Respondent failed to establish rights or legitimate interests in the domain name under 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 <celebrex-ultram-vioxx-md.com> domain name; thus, Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

The Policy lays out a list of bad faith circumstances in paragraph 4(b), which is expressly non-exhaustive.  Thus, the Panel is permitted to look at the totality of circumstances when undertaking a bad faith analysis.  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”).

Circumstances make it evident that Respondent was well aware of Complainant’s interests in the CELEBREX mark.  Respondent operates as an online pharmacy distributing Complainant’s CELEBREX medication.  Hence, Respondent presumably is knowledgeable about the pharmaceutical industry and the relevant rights of the pharmaceutical companies.  Respondent chose to incorporate the three medication names in order to capture those seeking the medications.  It can be reasonably inferred that Respondent was aware of the valuable interests Complainant owns in the CELEBREX mark, as the mark is specifically used as an advertising tool.  Therefore, Respondent’s registration and use of the <celebrex-ultram-vioxx-md.com> domain name, despite knowledge of Complainant’s rights, represents bad faith.  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 Albrecht v. Natale, FA 95465 (Nat. Arb. Forum Sept. 16, 2000) (finding registration in bad faith based where there is no reasonable possibility, and no evidence from which to infer that the domain name was selected at random since it entirely incorporated Complainant’s name).

Furthermore, Respondent’s use of the <celebrex-ultram-vioxx-md.com> domain name to divert Internet traffic to its commercial pharmaceutical website represents bad faith use under Policy ¶ 4(b)(iv).  By using Complainant’s CELEBREX mark in the domain name as a means to sell the CELEBREX medication, Respondent creates potential source confusion and dilutes the mark.  See 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); see also Fanuc Ltd v. Mach. Control Serv., FA 93667 (Nat. Arb. Forum Mar. 13, 2000) (finding that Respondent violated Policy ¶ 4(b)(iv) by selling used Fanuc parts and robots on website <fanuc.com> because customers visiting the site were confused as to the relationship between Respondent and 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 <celebrex-ultram-vioxx-md.com> be TRANSFERRED from Respondent to Complainant.

Sandra Franklin, Panelist

Dated: October 18, 2002

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2002/1456.html