DECISION

G.D. Searle & Co. v. Interlocution, Inc.

Claim Number: FA0209000124518

PARTIES

Complainant is G.D. Searle & Co., Skokie, IL, USA (“Complainant”) represented by Paul D. McGrady, of Ladas & Parry.  Respondent is Interlocution, Inc., Safat, KUWAIT (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <ordercelebrex.com>, registered with NamesDirect.

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.

John J. Upchurch as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on September 4, 2002; the Forum received a hard copy of the Complaint on September 4, 2002.

On September 11, 2002, NamesDirect confirmed by e-mail to the Forum that the domain name <ordercelebrex.com> is registered with NamesDirect and that Respondent is the current registrant of the name.  NamesDirect has verified that Respondent is bound by the NamesDirect 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 16, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 7, 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@ordercelebrex.com by e-mail.

Having received no formal 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 25, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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  <ordercelebrex.com> domain name is confusingly similar to Complainant's CELEBREX mark.

Respondent has no rights or legitimate interests in the disputed domain name.

Respondent registered and used the disputed domain name in bad faith.

B. Respondent

Respondent did not file a formal Response, however it did submit a two paragraph email admitting that it should have refrained from registering the domain name.  Respondent also noted that it was willing to transfer the domain name to Complainant.

FINDINGS

Complainant has registered its CELEBREX mark in 112 countries around the world, including the United States.  Complainant’s mark is registered on the Principal Register of the Untied States Patent and Trademark Office as Registration Number 2,321,622.  Complainant’s mark represents “pharmaceutical products in the nature of anti-inflammatory analgesics.”  Complainant has promoted its CELEBREX mark on a global scale.  Due to its extensive marketing and advertising promoting the CELEBREX mark, the mark has earned worldwide notoriety.  The New York Times referred to Complainant’s CELEBREX product as a “blockbuster arthritis drug,” and Forbes referred to CELEBREX as the “sales crown jewel in Pharmacia’s (Complainant) new portfolio.”

Respondent registered the disputed domain name on June 6, 2002.  Respondent has made no use of the disputed domain name.  Respondent does not have a license from Complainant to use the CELEBREX mark.  Respondent has admitted that it “should have refrained from registering the disputed domain name.”  Respondent also stated in its correspondence that it is willing to transfer the domain name to Complainant, and that it volunteered to do so before the initiation of this proceeding by Complainant.

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 that it has rights in the CELEBREX mark through registration with the United States Patent and Trademark Office and extensive use.

Respondent’s <ordercelebrex.com> domain name is confusingly similar to Complainant’s mark because it incorporates Complainant’s entire CELEBREX mark and merely appends the word “order” in front of it in the domain name.  The addition of the word “order” does not create a distinct mark because it is merely communicating that Internet users can purchase CELEBREX brand drugs at Respondent’s domain name.  Therefore, Complainant’s CELEBREX mark is still the dominant element of the domain name which is likely to cause consumer confusion as to the source, sponsorship and affiliation of the <ordercelebrex.com> domain name.  See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding that, given the similarity of  Complainant’s marks with the domain name, consumers will presume the domain name is affiliated with Complainant; Respondent is attracting Internet users to a website, for commercial gain, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, or endorsement of Respondent’s website); see also Broadcom Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001) (finding the <broadcomonline.com> domain name is confusingly similar to Complainant’s BROADCOM mark).

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

Rights or Legitimate Interests

Although Respondent did not formally Respond in this matter, it has communicated to the Panel that it should not have registered the domain name.  This informal communication is an admission that Respondent acknowledges that it has no rights or legitimate interests in the disputed domain name.  Furthermore, Respondent has stated that it is willing to transfer the domain name to Complainant.  Based on these facts, it is clear that Respondent admits that it does not have any rights or legitimate interests in the disputed domain name and therefore, Policy ¶ 4(a)(ii) has been satisfied.  See Marcor Int’l v. Langevin, FA 96317 (Nat. Arb. Forum Jan. 12, 2001) (Respondent’s willingness to transfer the domain name at issue indicates that it has no rights or legitimate interests in the domain name in question); see also Colgate-Palmolive Co. v. Domains For Sale, FA 96248 (Nat. Arb. Forum Jan. 18, 2001) (Respondent’s willingness to transfer the domain name at issue to Complainant, as reflected in its Response, is evidence that it has no rights or legitimate interests in the domain name)

Registration and Use in Bad Faith

The UDRP Policy recognizes that there are more situations that can give rise to bad faith registration and use than the particular factors listed under Policy paragraph 4(b).  See Educ. Testing Serv. v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (finding that the Policy “[I]ndicates that its listing of bad faith factors is without limitation”); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence).

Respondent has admitted that it should not have registered the disputed domain name, and therefore Respondent has also conceded that it had no legitimate reason for registering the disputed domain name.  Furthermore, Respondent volunteered to do so before the initiation of this proceeding.  Respondent’s own admission and behavior are evidence that Respondent recognizes that it acted in bad faith when registering and using the disputed domain name. Furthermore, based on the fame of Complainant’s CELEBREX mark and Respondent’s admission, it is clear that Respondent was on notice of Complainant’s mark when it registered the disputed domain name and understood that its use of <ordercelebrex.com> would infringe on Complainant’s mark.  See Marcor Int’l v. Langevin, FA 96317 (Nat. Arb. Forum Jan. 12, 2001) (Respondent’s registration and use of the domain name at issue coupled with its expressed willingness to transfer the name amply satisfies the bad faith requirements set forth in ICANN Policy); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (finding Respondent’s willingness to transfer and its failure to develop the site are evidence of its bad faith registration and use).

Based on the above facts and admissions 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 <ordercelebrex.com> be transferred from Respondent to Complainant.

John J. Upchurch, Panelist

Dated: October 28, 2002

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