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Generic Top Level Domain Name (gTLD) Decisions |
G.D. Searle & Co. v. Universal
Medical Alliance
Claim Number: FA0209000126632
PARTIES
Complainant
is G.D. Searle & Co., Skokie, IL
(“Complainant”) represented by Paul D.
McGrady, of Ladas & Parry.
Respondent is Universal Medical Alliance,
Davie, FL (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <celebrexdirectonline.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 27, 2002; the Forum
received a hard copy of the
Complaint on September 30, 2002.
On
September 30, 2002, Network Solutions confirmed by e-mail to the Forum that the
domain name <celebrexdirectonline.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
October 2, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of October 22,
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@celebrexdirectonline.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 13, 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 makes the following
assertions:
Respondent’s
<celebrexdirectonline.com> domain name is confusingly similar to
Complainant’s registered CELEBREX mark.
Respondent does not have any rights or legitimate
interests in the <celebrexdirectonline.com> domain
name.
Respondent registered and used the <celebrexdirectonline.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
FINDINGS
Complainant, G.D. Searle & Co., holds
two domestic trademarks for the CELEBREX mark (U.S. Reg. Nos. 2,321,622 and
2,307,888).
Complainant registered these marks on February 22, 2000 and January
11, 2000, respectively, on the Principal Register of the United
States Patent
and Trademark Office (“USPTO”) and has used them in commerce since February of
1999. Complainant has also applied for
or received trademark registrations in
more than 112 countries worldwide.
Complainant adopted the use of its distinctive
CELEBREX mark to market “pharmaceutical products in the nature of
anti-inflammatory
analgesics” in a global campaign for its anti-arthritic
medicine. Under its mark, Complainant receives billions of dollars in annual
sales.
Respondent, Universal Medical Alliance,
registered the <celebrexdirectonline.com>
domain name on January 23, 2001 and is not licensed or otherwise authorized to
make use of the CELEBREX mark for any purpose. Currently,
Respondent’s website
states to Internet users that “You are not authorized to view this page,” and
displays no original content,
implying to the Panel that Respondent either has
made no use of the disputed domain name since registration, or as Complainant
asserts,
was “most likely offer[ing] goods or services” in violation of
Complainant’s rights.
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 rights in its
CELEBREX mark through registration on the Principal Register of the USPTO, as
well as via
continuous and widespread use of the mark worldwide. Complainant’s
use of its internationally recognized and registered CELEBREX
mark demonstrates
that it has sufficient rights in the mark to bring this Complaint against
Respondent. See Wal-Mart Stores,
Inc. v. MacLeod, D2000-0662 (WIPO Sept. 19, 2000) (finding that the failure
of the Complainant to register all possible domain names that surround
its
substantive mark does not hinder Complainant’s rights in the mark. “Trademark
owners are not required to create ‘libraries’ of
domain names in order to
protect themselves”).
Respondent’s <celebrexdirectonline.com> domain name is confusingly similar
to Complainant’s registered CELEBREX mark. The only difference between
Respondent’s domain name
and the registered mark of Complainant is the addition
of the top-level domain “.com” after the mark, and the addition of the
descriptive
words “direct” and “online.” As top-level domain names are a
standard feature for any domain name, its addition does not prevent
a finding
of confusing similarity. See Rollerblade,
Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the
top-level of the domain name such as “.net” or “.com” does not affect the
domain
name for the purpose of determining whether it is identical or
confusingly similar); see also
Blue Sky Software Corp. v. Digital Sierra Inc., D2000-0165 (WIPO Apr. 27,
2000) (holding that the domain name <robohelp.com> is identical to
Complainant’s registered ROBOHELP
trademark, and that the "addition of
.com is not a distinguishing difference").
The addition of the generic words
“direct” and “online” to Complainant’s registered CELEBREX mark also fails to
sufficiently differentiate
the disputed domain name from Complainant’s mark.
The dominant feature of the disputed domain name remains Complainant’s
distinctive
CELEBREX mark, and the generic words “direct” and “online” do
nothing to detract from this distinction. See 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); see also State Farm Mut. Auto. Ins. Co. v. Kaufman, FA 94335 (Nat. Arb.
Forum Apr. 24, 2000) (finding that <statefarmdirect.com> is confusingly
similar to Complainant’s registered
mark); see also Gen. Elec. Co. v. Forddirect.com, Inc., D2000-0394 (WIPO June 22,
2000) (finding that adding the generic term “direct” on to Complainant’s marks
(GE CAPTIAL and GECAL)
does not alter the underlying mark held by Complainant,
and thus Respondent’s domain names are confusingly similar).
Accordingly, the Panel finds that the <celebrexdirectonline.com> domain
name is confusingly similar to Complainant’s registered and distinctive
CELEBREX mark under Policy ¶ 4(a)(i).
Rights or Legitimate Interests
Respondent’s
lack of a Response to the Complaint is in and of itself evidence of a lack of
legitimate rights and interests in its
domain name. 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).
It is neither a bona fide offering of
goods or services, nor legitimate noncommercial or fair use under Policy ¶¶
4(c)(i) and (iii)
when the holder of a domain name that is confusingly similar
to an established mark fails to develop the domain name. See Ziegenfelder Co. v. VMH Enter., Inc.,
D2000-0039 (WIPO Mar. 14, 2000) (finding that failure to provide a product or
service or develop the site demonstrates that Respondents
have not established
any rights or legitimate interests in the domain name); 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”); see also Am. Home Prod. Corp. v. Malgioglio,
D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in
the domain name <solgarvitamins.com> where Respondent
merely passively
held the domain name). Complainant has asserted that Respondent has not
developed a website associated with the
disputed domain name since its
registration over twenty-one months ago, an averment that is not contradicted
by Respondent. Therefore,
Respondent’s holding of the <celebrexdirectonline.com> domain name is neither a bona fide
offering of goods or services nor use of the domain name for noncommercial or
fair use.
Complainant has not given Respondent permission
or consent to use its CELEBREX mark, and has shown that Respondent is not
“commonly
known by” the name CELEBREXDIRECTONLINE or <celebrexdirectonline.com>. Furthermore, as Complainant’s mark is highly distinctive,
specifically coined by Complainant, it is doubtful that anyone other than
Complainant could claim to be “commonly known by” the name. See Nike, Inc. v. B. B. de Boer, D2000-1397
(WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one
“would be hard pressed to find a person who
may show a right or legitimate
interest” in a domain name containing Complainant's distinct and famous NIKE
trademark); see also Nokia Corp.
v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding that Respondent is not
commonly known by the mark contained in the domain name where Complainant
has
not permitted Respondent to use the NOKIA mark and no other facts or elements
can justify prior rights or a legitimate connection
to the name). In light of
Respondent’s failure to offer any evidence that it has ever been commonly known
by the disputed domain
name, The Panel concludes that Respondent has no rights
or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii).
See
RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001)
(Interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been
commonly known
by the domain name prior to registration of the domain name to
prevail").
Accordingly, the Panel finds that
Respondent does not have any rights or legitimate interests in its domain name
under Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Respondent both registered and used the <celebrexdirectonline.com> domain name in bad faith. While Policy
paragraph 4(b) lists four circumstances evidencing bad faith registration and
use of a domain
name by a respondent, that list not exhaustive. See 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); see also Home Interiors & Gifts, Inc. v. Home
Interiors, D2000-0010 (WIPO Mar. 7, 2000) (“[J]ust because Respondent’s
conduct does not fall within the ‘particular’ circumstances set out
in ¶4(b),
does not mean that the domain names at issue were not registered in and are not
being used in bad faith”).
In determining what circumstances entail
bad faith use and registration, the Panel will look to the “totality of the
circumstances”
before reaching a conclusion. See 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”).
Registering an infringing domain name
despite the fame of Complainant’s distinct and registered mark qualifies as
evidence of bad
faith use and registration.
See Cellular One Group v.
Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding bad faith when (1) the
domain name contains the Complainant’s mark in its entirety, (2)
the mark is a
coined word, well-known and in use prior to Respondent’s registration of the
domain name, and (3) Respondent fails
to allege any good faith basis for use of
the domain name); see also Exxon
Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that
Respondent had actual and constructive knowledge of Complainant’s EXXON mark
given
the world-wide prominence of the mark and thus Respondent registered the
domain name in bad faith). Under the “totality of the circumstances,”
the Panel
concludes that Respondent registered the disputed domain name, which includes
in its entirety Complainant’s distinctive
CELEBREX mark, in bad faith. This
conclusion is supported by the fact that Respondent did not submit a Response
to the Complaint
in this proceeding. 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 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).
By failing to use its infringing domain
name, Respondent used the disputed domain name in bad faith. See Body Shop Int’l PLC v. CPIC NET &
Hussain, D2000-1214 (Nov. 26, 2000) (finding bad faith where (1) Respondent
failed to use the domain name and (2) it is clear that Respondent
registered
the domain name as an opportunistic attempt to gain from the goodwill of the Complainant);
see also Alitalia –Linee Aeree
Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding
bad faith where Respondent made no use of the domain name in question and there
are no
other indications that Respondent could have registered and used the
domain name in question for any non-infringing purpose). Furthermore,
in light
of the distinctive quality of the CELEBREX mark, the Panel finds it difficult
to imagine a circumstance where Respondent
would be able to use its domain name
without violating the Policy. Without a submission by Respondent that rebuts
the allegations
and inferences made by Complainant, the Panel concludes that
Respondent’s failure to use the disputed domain name is bad faith use
by
Respondent pursuant to Policy ¶ 4(a)(iii). See Hewlett-Packard Co. v. Martineau, FA 95359 (Nat. Arb. Forum Aug.
30, 2000) (finding that Respondent’s failure to submit an assertion of good
faith intent to use the
domain name, in addition to the passive holding of the
domain name, reveal that Respondent registered and uses the domain name in
bad
faith).
Accordingly, the Panel finds that
Respondent both registered and used its <celebrexdirectonline.com>
domain name in bad faith, and Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three elements
under ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.
Accordingly, it is Ordered that the <celebrexdirectonline.com> domain
name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: November 15, 2002
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