DECISION

G.D. Searle & Co. v. Domain Manager

Claim Number: FA0209000124755

PARTIES

Complainant is G.D. Searle & Co., Skokie, IL, USA (“Complainant”) represented by Paul D. McGrady, of Ladas & Parry.  Respondent is Domain Manager, Worthing Post Office, BB (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <buy-celebrex-online-pain-relief-painkillers.com>, registered with eNom, Inc.

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 6, 2002; the Forum received a hard copy of the Complaint on September 9, 2002.

On September 10, 2002, eNom, Inc. confirmed by e-mail to the Forum that the domain name <buy-celebrex-online-pain-relief-painkillers.com> is registered with eNom, Inc. and that Respondent is the current registrant of the name.  eNom, Inc. has verified that Respondent is bound by the eNom, Inc. 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 10, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 30, 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@buy-celebrex-online-pain-relief-painkillers.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 22, 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.

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 <buy-celebrex-online-pain-relief-painkillers.com> domain name is confusingly similar to Complainant’s CELEBREX mark.

Respondent’s has no rights or legitimate interests in the <buy-celebrex-online-pain-relief-painkillers.com> domain name.

Respondent registered and used the <buy-celebrex-online-pain-relief-painkillers.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.  Because of 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 <buy-celebrex-online-pain-relief-painkillers.com> domain name on July 10, 2002.  Respondent uses the domain name to resolve to a website that lists other web-addresses where one can purchase pharmaceutical products.

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 extensive use in commerce.

Respondent’s <buy-celebrex-online-pain-relief-painkillers.com> domain name incorporates Complainant’s entire CELEBREX mark, deviating by the mere addition of the generic words “buy,” “online,” “pain,” “relief” and “painkillers.”  The generic words all refer to Complainant’s CELEBREX mark in the way they are strung together in the second-level domain.  Furthermore, the words “pain,” “relief” and “painkillers” all reference the function of the CELEBREX drug.  Therefore, the CELEBREX mark remains the dominant portion of the domain name and thus Respondent’s domain is confusingly similar to Complainant’s mark.  See 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); 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

Respondent has failed to come forward and state a claim representing its rights or legitimate interests in the <buy-celebrex-online-pain-relief-painkillers.com> domain name.  Complainant has successfully alleged a prima facie case, in which Complainant alleges that Respondent has no rights or legitimate interests in the domain name.  Since Respondent failed to rebut that contention, the Panel accepts Complainant’s assertion and presumes that Respondent lacks rights or legitimate interests in the domain name.  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 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).

Respondent uses the <buy-celebrex-online-pain-relief-painkillers.com> domain name to provide a search engine for individuals seeking to purchase pharmaceutical products online.  Presumably, Respondent profits from the websites that are listed on its search directory.  Therefore, Respondent’s diversionary use of the domain name does not represent 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 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).

Respondent has no connection with Complainant and no authorized permission to use the CELEBREX mark.  Respondent’s WHOIS information designates “Domain Manager” as Respondent’s business name.  This indicates that Respondent is not commonly known by the <buy-celebrex-online-pain-relief-painkillers.com> domain name or any similar variation thereof.  Furthermore, Respondent has failed to come forward to provide the Panel with information that may demonstrate Respondent is commonly known by the domain name.  Therefore, Respondent has no rights or legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii).  See 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); see also 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).

Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the domain name; thus, Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent attracts Internet users to its website by using Complainant’s CELEBREX mark as the dominant feature of the <buy-celebrex-online-pain-relief-painkillers.com> domain name.  Respondent then diverts those Internet uses, who are interested in Complainant’s CELEBREX medication, to its own commercial website, which offers a directory of websites that solicit drug orders.  Hence, there exists a high likelihood of Internet user confusion as to Complainant’s affiliation with Respondent’s website.  Therefore, Respondent’s behavior evidences bad faith registration and use under 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).

Furthermore, since Respondent uses the <buy-celebrex-online-pain-relief-painkillers.com> domain name for the purpose of diverting Internet traffic to its online pharmacy related website, it can be reasonably inferred that Respondent had knowledge of the goodwill and notoriety of the CELEBREX mark.  The Panel may draw this inference because Respondent has not come forward to challenge the Complaint.  Hence, Respondent’s registration of the domain name, with the CELEBREX mark as the dominant part, was done in bad faith because of Respondent’s apparent knowledge of Complainant’s interests in the CELEBREX mark.  See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint); see also 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").

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 <buy-celebrex-online-pain-relief-painkillers.com> be transferred from Respondent to Complainant.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated: October 28, 2002

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