DECISION

G.D. Searle & Co. v. Innovative Solution Technologies a/k/a Vedavyasa Alapati

Claim Number: FA0208000123927

PARTIES

Complainant is G.D. Searle & Co., Skokie, IL (“Complainant”) represented by Paul D. McGrady, of Ladas & Parry.  Respondent is Innovative Solution Technologies a/k/a Vedavyasa Alapati, Los Angeles, CA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <xenical-viagra-phentermine-celebrex.com>, registered with Register.com.

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.

Tyrus R. Atkinson, Jr., 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 August 30, 2002, Register.com confirmed by e-mail to the Forum that the domain name <xenical-viagra-phentermine-celebrex.com> is registered with Register.com and that Respondent is the current registrant of the name.  Register.com has verified that Respondent is bound by the Register.com 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@xenical-viagra-phentermine-celebrex.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 9, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., 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 <xenical-viagra-phentermine-celebrex.com> domain name incorporates numerous parties’ marks and interests.  More specifically, the following drug companies are implicated by way of Respondent’s domain name: Roche Laboratories Inc. (XENICAL), Pfizer (VIAGRA), Eon Labs (PHENTERMINE), and G.D. Searle (Complainant) (CELEBREX).  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 <xenical-viagra-phentermine-celebrex.com> domain name is confusingly similar to Complainant’s CELEBREX mark.

Respondent has no rights or legitimate interests in the <xenical-viagra-phentermine-celebrex.com> domain name.

Respondent registered and used the <xenical-viagra-phentermine-celebrex.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 (“USPTO”) 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. 

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 <xenical-viagra-phentermine-celebrex.com> domain name on September 18, 2000.  Respondent uses the domain name to attract Internet users to its website where Respondent solicits drug orders online.  Respondent solicits CELEBREX medicine orders and uses Complainant’s CELEBREX mark on its website to do so. 

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 trademark registration status with the USPTO, among many other authorized trademark governing bodies. 

Respondent’s <xenical-viagra-phentermine-celebrex.com> domain name contains Complainant’s CELEBREX mark in its entirety along side three other pharmaceutical related marks (XENICAL, VIAGRA and PHENTERMINE).  Using other industry related marks with Complainant’s CELEBREX mark does not create a distinguishable domain name.  Rather, Respondent’s domain name incorporates the pharmaceutical marks as a means to advertise its website to Complainant’s customer base.  Such use does not defeat a confusingly similar claim and therefore Respondent’s domain name is confusingly similar to Complainant’s CELEBREX mark.  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).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Complainant has successfully alleged a prima facie case, including its allegation that Respondent has no rights or legitimate interests in the <xenical-viagra-phentermine-celebrex.com> domain name.  Complainant has fulfilled its burden under the Policy, effectively shifting the burden on Respondent to articulate its rights or legitimate interests in the domain name.  Respondent has failed to appear in this proceeding and therefore the Panel presumes that Respondent has no rights or legitimate interests in the <xenical-viagra-phentermine-celebrex.com> 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 Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed).

Furthermore, Respondent’s failure to come forward and contest Complainant’s allegations permits the Panel to accept all of Complainant’s allegations as true.  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 domain name to resolve to a website where it offers pharmaceuticals for sale.  At the website, Respondent uses Complainant’s CELEBREX mark to solicit orders for the related anti-arthritic drug.  This is all done without any implied or express consent by Complainant to use the CELEBREX mark.  Using Complainant’s CELEBREX mark to advertise the sale of the related drug in the domain name and at the website does not amount to establishing rights or legitimate interests in the domain name under Policy ¶¶ 4(c)(i) and (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).

As previously mentioned, Respondent was never granted a license to use the CELEBREX mark for any purpose, let alone to advertise the sale of the CELEBREX medicine on the Internet.  Respondent has no connection to the CELEBREX mark, and it is highly unlikely that Respondent is commonly known by the CELEBREX mark because it was coined by Complainant.  Furthermore, there is nothing on the record that shows Respondent is commonly known by the <xenical-viagra-phentermine-celebrex.com> domain name.  Therefore, Respondent has failed to demonstrate rights or legitimate interests in the domain name.  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 Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).

Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the <xenical-viagra-phentermine-celebrex.com> domain name; thus, Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Policy paragraph 4(b) contains a non-exhaustive list of bad faith circumstances.  The list is without limitation and therefore the Panel is permitted to look at the totality of circumstances to shed light on 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”).

As an online pharmacy, Respondent clearly has knowledge of the pharmaceutical industry.  Part of that knowledge is the awareness of trademark rights of the pharmaceutical companies from which Respondent obtains it drugs.  In addition, Respondent not only uses the CELEBREX mark as a signal in the domain name, Respondent uses the CELEBREX mark at the website to solicit orders for the anti-arthritic drug.  Respondent registered and uses the domain name, despite its knowledge of Complainant’s rights in the CELEBREX mark, which 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 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 mark in the domain name is merely an unauthorized advertisement tool.  The use of the CELEBREX mark creates a likelihood of confusing Internet users as to Complainant’s affiliation with the attached commercial pharmacy website.  Therefore, Respondent uses the domain name in bad faith under Policy ¶ 4(b)(iv).  See Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent); 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 <xenical-viagra-phentermine-celebrex.com> be TRANSFERRED from Respondent to Complainant.

Tyrus R. Atkinson, Jr., Panelist

Dated: October 23, 2002.

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