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Generic Top Level Domain Name (gTLD) Decisions |
G.D. Searle & Co. v. Celebrex
Conference Correspondent
Claim Number: FA0209000124514
PARTIES
Complainant
is G.D. Searle & Co., Skokie,
IL, USA (“Complainant”) represented by Paul
D. McGrady, of Ladas & Parry. Respondent is Celebrex Conference Correspondent, Stanmore, AUSTRALIA
(“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <celebrexcorrespondent.com>,
registered with Melbourne IT.
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.
Hon.
Ralph Yachnin 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 4, 2002.
On
September 4, 2002, Melbourne IT confirmed by e-mail to the Forum that the
domain name <celebrexcorrespondent.com>
is registered with Melbourne IT and that Respondent is the current registrant
of the name. Melbourne IT has verified
that Respondent is bound by the Melbourne IT 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@celebrexcorrespondent.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 17, 2002, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the Forum appointed Hon.
Ralph Yachnin 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
<celebrexcorrespondent.com>
domain name is confusingly similar to Complainant’s CELEBREX mark.
Respondent
has no rights or legitimate interests in the <celebrexcorrespondent.com> domain name.
Respondent
registered and used the <celebrexcorrespondent.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 <celebrexcorrespondent.com> domain
name on June 18, 2001. Respondent has
never developed an active use of the domain name in nearly one and a half years
of ownership.
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 trademark registration and extensive use of the mark
in commerce.
Respondent’s <celebrexcorrespondent.com> domain name incorporates
Complainant’s entire CELEBREX mark with the addition of the word
“correspondent.” The addition of
“correspondent” to the notorious and fanciful CELEBREX mark merely suggests
some sort of relationship with Complainant’s
CELEBREX medication. Therefore, Respondent’s domain name is
confusingly similar to Complainant’s 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 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 satisfied it burden by
alleging a prima facie Complaint, in which Complainant contends that
Respondent has no rights or legitimate interests in the <celebrexcorrespondent.com> domain name. Since Complainant has satisfied its burden,
the burden shifts to Respondent to articulate its rights and legitimate
interests. Respondent, however, has
failed to come forward and answer 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, since Respondent has failed
to submit a Response, all reasonable inferences may be drawn in Complainant’s
favor and Complainant’s
allegations are accepted 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 has never provided content
under the <celebrexcorrespondent.com>
domain name. Respondent has passively
held the domain name for nearly one and a half years. Because Respondent’s domain name incorporates Complainant’s
fanciful CELEBREX mark and Respondent has failed to come forward to explain
its
lack of use, it is reasonable to infer that Respondent has no rights or
legitimate interests pursuant to Policy ¶¶ 4(c)(i) and
(iii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13,
2000) (finding no rights or legitimate interests where Respondent failed to
submit a Response to the Complaint
and had made no use of the domain name in
question); see also Vestel
Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000)
(finding that “merely registering the domain name is not sufficient to
establish rights or legitimate
interests for purposes of paragraph 4(a)(ii) of
the Policy”); see also Ritz-Carlton
Hotel v. Club Car Executive, D2000-0611 (WIPO Sept. 18, 2000) (finding that
prior to any notice of the dispute, Respondent had not used the domain names in
connection
with any type of bona fide offering of goods and services).
In addition, Respondent’s failure to come
forward means there is no evidence on the record establishing that Respondent
is commonly
known by the <celebrexcorrespondent.com>
domain name. Moreover, Respondent has
no business relationship with Complainant, as Complainant has never authorized
Respondent to use the CELEBREX
mark.
Therefore, Respondent has no rights or legitimate interests in the
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).
Accordingly, the Panel finds that
Respondent has no rights or legitimate interests in the <celebrexcorrespondent.com> domain name; thus, Policy ¶
4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
The Policy paragraph 4(b) prescribes a
list of bad faith circumstances. The
Policy does, however, make it clear that the list of bad faith circumstances is
without limitation. Thus, the Panel may
refer to the totality of circumstances when undertaking the bad faith
issue. 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”).
Respondent has not come forward to present
its case of why it registered the domain name.
Also, Respondent has not established demonstrable plans to use the
domain name. It is established
precedent that merely registering a domain name does not represent rights in
the domain name, and not actively using
the domain name for a substantial
period constitutes bad faith registration and use. It is true that a party registering a domain name gets a grace
period to develop a use for the domain name before passive holding
constitutes
bad faith. However, in the present
case, Respondent has passively held the domain name, which incorporates a
fanciful mark, for over a year,
and has failed to articulate a planned
use. Therefore, Respondent’s passive
holding constitutes bad faith registration and use under 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 Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely
holding an infringing domain name without active use can constitute use in
bad
faith); see also LFP, Inc. v. B & J Props., FA 109697 (Nat. Arb.
Forum May 30, 2002) (recognizing that in certain instances excusable delays
will inevitably arise, but noting
that those delays must be quantifiable and
limited; they cannot extend indefinitely).
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 <celebrexcorrespondent.com>
be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice,
Supreme Court, NY (Ret.)
Dated: October 21, 2002
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