DECISION

G.D. Searle & Co. v. DMG Online

Claim Number: FA0209000126654

PARTIES

Complainant is G.D. Searle & Co., Peapack, NJ (“Complainant”) represented by Paul D. McGrady, Jr., of Ladas & Parry.  Respondent is DMG Online, La Crescenta, CA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <celebrex-medication.org>, registered with BulkRegister.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.

John J. Upchurch as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on September 30, 2002; the Forum received a hard copy of the Complaint on September 30, 2002.

On September 30, 2002, BulkRegister.com confirmed by e-mail to the Forum that the domain name <celebrex-medication.org> is registered with BulkRegister.com and that Respondent is the current registrant of the name. BulkRegister.com has verified that Respondent is bound by the BulkRegister.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 October 7, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 28, 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-medication.org 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 15, 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 makes the following assertions:

Respondent’s <celebrex-medication.org> domain name is confusingly similar to Complainant’s registered CELEBREX mark.

Respondent does not have any rights or legitimate interests in the <celebrex-medication.org> domain name.

Respondent registered and used the <celebrex-medication.org> 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 the CELEBREX mark, Complainant receives billions of dollars in annual sales.

Respondent, DMG Online, registered the <celebrex-medication.org> domain name on March 19, 2002 and is not licensed or otherwise authorized to make use of the CELEBREX mark for any purpose. Respondent’s website is used to solicit drug orders from Internet users for the drug Viagra.

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 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 <celebrex-medication.org> 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 “.org” after the mark, and the addition of the descriptive word “medication.” 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 descriptive word “medication” 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, while the word “medication” merely describes the type of product Complainant produces. See Pfizer, Inc. v. Papol Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name incorporates the VIAGRA mark in its entirety, and deviates only by the addition of the word “bomb,” the domain name is rendered confusingly similar to Complainant’s mark); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to Complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which Complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity).

Accordingly, the Panel finds that the <celebrex-medication.org> 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 uses the domain name to divert internet users to its own competing website for commercial gain. See G.D. Searle & Co. v. Mahoney, FA 112559 (Nat. Arb. Forum June 12, 2002) (finding Respondent’s use of the disputed domain name to solicit pharmaceutical orders without a license or authorization from Complainant does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i)); see also G.D. Searle & Co. v. Fred Pelham, FA 117911 (Nat. Arb. Forum Sept. 19, 2002) (finding that because Respondent is using the infringing domain name to sell prescription drugs it can be inferred that Respondent is opportunistically using Complainant’s mark in order to attract Internet users to its website); see also Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were confusingly similar to Complainant’s mark and that Respondent’s use of the domain names to sell competing goods was illegitimate and not a bona fide offering of goods). Respondent uses the infringing domain name to solicit orders for the drug Viagra, a drug produced by a competitor of Complainant. In taking advantage of the disputed domain name’s confusing similarity with Complainant’s registered and distinctive mark, Respondent is opportunistically using Complainant’s mark for commercial gain. As stated, this is neither 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 CELEBREX-MEDICATION or <celebrex-medication.org>. 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 Pfizer, Inc. v. Internet Gambiano Prods., D2002-0325 (WIPO June 20, 2002) (finding that because the VIAGRA mark was clearly well-known at the time of Respondent’s registration of the domain name it can be inferred that Respondent is attempting to capitalize on the confusion created by the domain name’s similarity to the mark). 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 <celebrex-medication.org> 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 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 constitutes bad faith registration under the Policy.  See Pfizer, Inc. v. Internet Gambiano Prods., D2002-0325 (WIPO June 20, 2002) (finding Respondent “was aware of and had knowledge of” Complainant’s mark when registering the domain name because Complainant’s mark was a coined arbitrary term with no meaning apart from Complainant’s products); see also 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).

Using an infringing domain name to profit from confused Internet users evidences opportunistic bad faith use. This is especially true when both Respondent and Complainant operate in a similar industry or field. See G.D. Searle & Co. v. Fred Pelham, FA 117911 (Nat. Arb. Forum Sept. 19, 2002) (“It can be inferred that Respondent had knowledge of Complainant’s rights in the CELEBREX mark because Respondent is using the CELEBREX mark as a means to sell prescription drugs, including Complainant’s CELEBREX drug”); see also Pfizer, Inc. v. Papol Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between Complainant’s mark and the content advertised on Respondent’s website was obvious, Respondent “must have known about the Complainant’s mark when it registered the subject domain name”).

Under the “totality of the circumstances,” the Panel concludes that Respondent registered and used 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, permitting the Panel to draw any necessary inferences in favor of Complainant. 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).

Accordingly, the Panel finds that the <celebrex-medication.org> domain name was registered and used in bad faith, and Policy ¶ 4(a)(i) is 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 <celebrex-medication.org> domain name be TRANSFERRED from Respondent to Complainant.

John J. Upchurch, Panelist

Dated: November 19, 2002

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