DECISION

G.D. Searle & Co. v. E.T. Corp

Claim Number: FA0209000124537

PARTIES

Complainant is G.D. Searle & Co., Skokie, IL, USA (“Complainant”) represented by Paul D. McGrady, of Ladas & Parry.  Respondent is E.T. Corp., St. Johns, AG (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <trycelebrex.com>, registered with Bulkregister.

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 September 5, 2002; the Forum received a hard copy of the Complaint on September 6, 2002.

On September 5, 2002, Bulkregister confirmed by e-mail to the Forum that the domain name <trycelebrex.com> is registered with Bulkregister and that Respondent is the current registrant of the name.  Bulkregister has verified that Respondent is bound by the Bulkregister 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 6, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 26, 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@trycelebrex.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 14, 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.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

The <trycelebrex.com> domain name is confusingly similar to Complainant’s CELEBREX mark.

Respondent has no rights or legitimate interests in the <trycelebrex.com> domain name.

Respondent registered and used the <trycelebrex.com> domain name in bad faith. 

B. Respondent

Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant owns a registered trademark with the United States Patent and Trademark Office for the CELEBREX mark (Reg. No. 2,307,888).  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 fashioned 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. 

Furthermore, 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 <trycelebrex.com> domain name on December 19, 1999.  Respondent has not developed any use for the domain name for the nearly three years of registration 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 proof of registration with the USPTO and extensive use in commerce.

Respondent’s <trycelebrex.com> domain name contains Complainant’s entire CELEBREX mark with the addition of the prefix “try.”  The word “try” is suggestive of Complainant’s CELEBREX mark as it promotes the use of the CELEBREX medication.  As such, the prefix has no distinctive quality and the CELEBREX mark remains the dominant part of the domain name.  Therefore, Respondent’s <trycelebrex.com> 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 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, including Complainant’s allegation that Respondent has no rights or legitimate interests in the <trycelebrex.com> domain name.  Respondent has failed to come forward and answer the Complaint.  Therefore, Respondent has not met its burden of establishing rights or legitimate interests in the domain name, and the Panel presumes Respondent has no such rights.  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).

Furthermore, Respondent’s failure to challenge Complainant’s contentions allows all reasonable inferences to be drawn in favor of Complainant, while accepting Complainant’s 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 has made no active use of the <trycelebrex.com> domain name since it registered the domain name nearly three years ago.  Respondent has not come forward to explain the reason for holding registration rights in the domain name and not using it to resolve to a website with content.  Passively holding a domain name that incorporates another entity’s trademark does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor does it represent a legitimate noncommercial fair use pursuant to Policy ¶ 4(c)(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).

Although Complainant licenses its CELEBREX mark out for commercial use by other entities, Respondent has no such express authorization from Complainant.  In addition, Respondent has no business affiliation with Complainant and therefore is not impliedly permitted to use the CELEBREX mark.  Respondent is only known to this Panel as E.T. Corp., and there is no evidence that shows Respondent is commonly known by the <trycelebrex.com> domain name.  Therefore, 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 <trycelebrex.com> domain name; thus, Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Policy paragraph 4(b) lists a set of circumstances that represent bad faith use and registration.  The Policy, however, expressly states that the list of bad faith examples is without limitation.  Therefore, the Panel is permitted to look at the totality of circumstances upon determining the crucial 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’s <trycelebrex.com> domain name contains Complainant’s fanciful CELEBREX mark with the addition of the suggestive prefix “try.”  The prefix is essentially a message that encourages the use of Complainant’s product.  As such, it is evident that Respondent knew of Complainant’s CELEBREX medication and Complainant’s interests in the CELEBREX mark.  Hence, Respondent’s registration, despite its awareness of Complainant’s interests, constitutes bad faith under 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).

Respondent’s passive holding of the <trycelebrex.com> domain name evidences bad faith registration and use.  It is established precedent that registering a domain name containing another’s mark and holding it without a legitimate use for over two years constitutes bad faith registration and use.  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 Mondich & Am. Vintage Wine Biscuits, Inc. v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that Respondent’s failure to develop its website in a two year period raises the inference of registration in bad faith); see also E. & J. Gallo Winery v. Oak Inv. Group, D2000-1213 (WIPO Nov. 12, 2000) (finding bad faith where (1) Respondent knew or should have known of Complainant’s famous GALLO marks and (2) Respondent made no use of the domain name <winegallo.com>).

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 <trycelebrex.com> be TRANSFERRED from Respondent to Complainant.

James A. Carmody, Esq., Panelist

Dated: October 22, 2002

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