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Generic Top Level Domain Name (gTLD) Decisions |
G. D. Searle & Co. v.
Xenadrin-Source.com
Claim Number: FA0209000125477
PARTIES
Complainant
is G.D. Searle & Co., Skokie,
IL, USA (“Complainant”) represented by Paul
D. McGrady, of Ladas & Parry. Respondent is Xenadrin-Source.com, Thunder Bay, Ontario, CANADA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <celebrex-xenical.com>,
registered with Network Solutions.
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 20, 2002; the Forum
received a hard copy of the
Complaint on September 23, 2002.
On
September 24, 2002, Network Solutions confirmed by e-mail to the Forum that the
domain name <celebrex-xenical.com>
is registered with Network Solutions and that Respondent is the current
registrant of the name. Network
Solutions has verified that Respondent is bound by the Network Solutions
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 24, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”),
setting a deadline
of October 14, 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@celebrex-xenical.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
November 4, 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.
Respondent’s
<celebrex-xenical.com> domain name incorporates numerous parties’
marks and interests. More specifically,
the following drug companies are implicated by way of Respondent’s domain name:
G.D. Searle (Complainant) (CELEBREX),
Roche Laboratories Inc.(XENICAL). 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
<celebrex-xenical.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
failed to submit a Response.
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 United 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 December 31, 2000. Respondent
has made no use of the disputed domain name, nor has it developed a
website. Respondent does not have a
license from Complainant to use the CELEBREX mark.
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 as well as its continuous and substantial use of the
CELEBREX mark.
Respondent’s <celebrex-xenical.com>
domain name is confusingly similar to Complainant’s mark because it merely adds
the name brand of another drug to Complainant’s
mark and separates the two with
a hyphen. The addition of another drug
brand name does not create a distinct mark because the additional brand name
combined with Complainant’s
mark will further confuse Internet users as to the
source, sponsorship, and affiliation of the disputed domain name. See G.D. Searle & Co. v. Fred
Pelham, FA 117911 (Nat. Arb. Forum Sept. 19, 2002) (finding that the
addition of other drug names does not create a distinct mark capable
of
overcoming a claim of confusing similarity, “it merely creates a domain name
with severe potential to confuse Internet users as
to the source, sponsorship
and affiliation of the domain”); see also G.D. Searle & Co. v.
Entm’t Hosting Servs., Inc., FA 110783 (Nat. Arb. Forum June 3, 2002) (“The
Panel concludes that the
<viagra-propecia-xenical-celebrex-claritin-prescriptions.com>
domain name
is confusingly similar to Complainant’s CELEBREX mark because the mere addition
of related competing products’ names
in the domain name does not defeat a
confusing similarity claim”).
Furthermore, the hyphen between the two words of the domain name does
not create a distinct characteristic capable of overcoming a
confusing
similarity claim. See Teleplace, Inc. v. De Oliveira, FA
95835 (Nat. Arb. Forum Dec. 4, 2000) (finding that the domain names
<teleplace.com>, <tele-place.com>, and <theteleplace.com>
are
confusingly similar to Complainant’s TELEPLACE trademark).
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Rights or Legitimate Interests
Respondent has failed to respond,
therefore it is assumed that Respondent lacks rights and legitimate interests
in the disputed domain
name. When
Complainant asserts a prima facie case against Respondent, the burden of
proof shifts to Respondent to show that it has rights or legitimate interests
pursuant to
Policy ¶ 4(a)(ii). 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 Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000)
(finding that by not submitting a Response, the Respondent has failed to invoke
any circumstance
which could demonstrate any rights or legitimate interests in
the domain name).
Furthermore, because Respondent has not
submitted a Response, it is appropriate for the Panel to accept all reasonable
allegations
and inferences in the Complaint 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 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).
Respondent has held the disputed domain
name for almost two years and has failed to develop a website, or make any
other use of the
<celebrex-xenical.com> domain name. The passive holding of a domain name does
not create rights or legitimate interests in a domain name because its holder
does not use
the domain name in connection with any activity that is considered
a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i), or a
legitimate, noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). Respondent has passively held the disputed
domain name since December 31, 2000, therefore, it has failed to use <celebrex-xenical.com>
for any purpose that could give rise to rights or legitimate interests pursuant
to Policy ¶ 4(a)(ii). See Bloomberg L.P. v. Sandhu, FA 96261
(Nat. Arb. Forum Feb. 12, 2001) (finding that no rights or legitimate interest
can be found when Respondent fails to use
disputed domain names in any way); see
also Chanel, Inc. v. Heyward,
D2000-1802 (WIPO Feb. 23, 2001) (finding no rights or legitimate interests
where “Respondent registered the domain name and did
nothing with it”).
Respondent has not submitted a Response
in this proceeding and therefore the Panel has no evidence before it that
establishes that
Respondent is commonly known by any other name than
“Xenadrin-Source.com.” There is no
evidence on record, and Respondent has presented no proof that it is commonly
known as CELEBREX-XENICAL or <celebrex-xenical.com>. Therefore, Respondent has failed to
establish that it has rights or legitimate interests in the disputed 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); 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).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Registration and Use in Bad Faith
Based on the fame of Complainant’s
CELEBREX mark it can be inferred that Respondent had actual or constructive
knowledge of Complainant’s
rights when it registered the disputed domain
name. Registration of a domain name
that includes Complainant’s mark, despite knowledge of Complainant’s rights, is
evidence of bad faith
registration pursuant to 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 registered the disputed domain
name in December of 2000 and has failed to make any use of it. The passive holding of a domain name for an
extended period of time gives rise to the inference of bad faith registration
and use
pursuant to 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 Caravan
Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that
Respondent made no use of the domain name or website that connects with the
domain name, and that passive holding of a domain name permits an inference of
registration and use in bad faith).
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 <celebrex-xenical.com>
be transferred from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: November 7, 2002
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