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Generic Top Level Domain Name (gTLD) Decisions |
G.D. Searle & Co. v. Rick Brewer
d/b/a Strategical Networks LLC
Claim Number: FA0209000126644
PARTIES
Complainant
is G.D. Searle & Co., Skokie, IL
(“Complainant”) represented by Paul D.
McGrady, of Ladas & Parry. Respondent is Strategical Networks LLC, McKinley, TX (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <doctorcelebrex.com>,
registered with Go Daddy Software.
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.
Tyrus
R. Atkinson, Jr., 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, Go Daddy Software confirmed by e-mail to the Forum that the
domain name <doctorcelebrex.com>
is registered with Go Daddy Software and that Respondent is the current
registrant of the name. Go Daddy
Software has verified that Respondent is bound by the Go Daddy Software
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 1, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of October 21,
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@doctorcelebrex.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 11, 2002, pursuant to Complainant’s request to have the dispute
decided by a single-member Panel, the Forum appointed
Tyrus R. Atkinson, Jr.,
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
<doctorcelebrex.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 in this proceeding.
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 [Complainant’s] new portfolio.”
Respondent registered the disputed domain
name on May 30, 2002. Respondent is
using the disputed domain name in order to divert Internet users to
<doctorviagra.com> where it has a website
that solicits orders for
popular drugs such as Viagra and Xenical, as well as Complainant’s CELEBREX
brand medication. Respondent does not have
permission from Complainant to use the CELEBREX mark, nor does Respondent hold
a license 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 its registration with the United States
Patent and Trademark
Office as well as through its various international
registrations.
Respondent’s <doctorcelebrex.com>
domain name is confusingly similar to Complainant’s mark because it includes
the entirety of Complainant’s mark and merely adds
the generic term
“doctor.” The addition of this term
does not create a distinct mark because Complainant’s CELEBREX mark is still
the dominant element of the
disputed domain name. 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
Treeforms, Inc. v. Cayne Indus. Sales
Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that confusion
would result when Internet users, intending to access Complainant’s
website,
think that an affiliation of some sort exists between Complainant and
Respondent, when in fact, no such relationship would
exist).
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Rights or Legitimate Interests
Respondent has failed to come forward
with a Response. Therefore, the Panel
is permitted to make reasonable inferences in favor of Complainant and accept
Complainant’s allegations as true. See Desotec N.V. v. Jacobi Carbons AB,
D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a
presumption that Complainant’s allegations are true unless
clearly contradicted
by the evidence); see also 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”).
Furthermore, based on Respondent’s
failure to respond, it is presumed that Respondent lacks all rights and
legitimate interests in
the disputed domain name. 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 Geocities v. Geociites.com, D2000-0326
(WIPO June 19, 2000) (finding that Respondent has no rights or legitimate
interest in the domain name because Respondent
never submitted a Response nor
provided the Panel with evidence to suggest otherwise).
Respondent is using the disputed domain
name in order to attract Internet users to its website to buy various
prescription drug products. Respondent
is therefore using Complainant’s mark in order to attract Internet users to
Respondent’s website for its own commercial
gain. Furthermore, there is no way for Internet users to know that
Respondent’s website is not endorsed by Complainant. As a result, Respondent is using and potentially tarnishing
Complainant’s goodwill for Respondent’s personal financial gain. This type of use is not in considered to be
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). See MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000)
(finding no rights or legitimate interests in the famous MSNBC mark where
Respondent attempted to
profit using Complainant’s mark by redirecting Internet
traffic to its own website); see also Household Int’l, Inc. v. Cyntom Enter., FA 95784 (Nat. Arb. Forum
Nov. 7, 2000) (inferring that Respondent registered the domain name
<householdbank.com>, which
incorporates Complainants HOUSEHOLD BANK mark,
with hopes of attracting Complainant’s customers and thus finding no rights or
legitimate
interests).
The disputed domain name redirects
Internet users to a website located at <doctorviagra.com>. There is no mention of a “Doctor Celebrex”
at this website, nor is the name prominently displayed at the top of the
website or anywhere
else in Respondent’s presentation. Respondent’s website merely offers
Complainant’s CELEBREX product for sale alongside other popular name brand
drugs such as Viagra,
and Xenical.
Respondent’s use of the <doctorcelebrex.com> domain name
has not created any evidence that it is commonly known by the disputed domain
name. Furthermore, Respondent has not
come forward with any evidence that it is commonly known as DOCTOR CELEBREX,
CELEBREX, or <doctorcelebrex.com>. Complainant has presented evidence that Respondent does not have
a license to use the CELEBREX mark, and Respondent has not come forward
with
any of its own evidence to refute this assertion. 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 Nokia Corp. v. Nokiagirls.com, D2000-0102 (WIPO Apr. 18, 2000) (finding that
Respondent has no rights or legitimate interests in the <nokiagirls.com>
domain
name because there was no element on website that would justify use of
the word NOKIA within the domain name); see also CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19,
2000) (finding that Respondent failed to demonstrate any rights or legitimate
interests in the <twilight-zone.net>
domain name since Complainant had
been using the TWILIGHT ZONE mark since 1959).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Registration and Use in Bad Faith
Based on the fact that Respondent is
using the disputed domain name in order to attract Internet users to its
website that sells popular
name brand drugs it can be inferred that Respondent
had knowledge of Complainant’s rights in the CELEBREX mark before it registered
<doctorcelebrex.com>. It
is reasonable to assume that Respondent would not have registered <doctorcelebrex.com>
if it did not know that the domain name would attract Internet users to its
website. Registration of an infringing
domain name, despite actual knowledge of Complainant’s rights in the mark
within the domain name, is
evidence of bad faith registration pursuant to
Policy ¶ 4(a)(iii). See Victoria's Secret v. Hardin, FA 96694
(Nat Arb. Forum Mar. 31, 2001) (finding that, in light of the notoriety of
Complainants' famous marks, Respondent had actual
or constructive knowledge of
the BODY BY VICTORIA marks at the time she registered the disputed domain name
and such knowledge constituted
bad faith); see also Yahoo! Inc. v.
Ashby, D2000-0241 (WIPO June 14, 2000) (finding that the fame of the YAHOO!
mark negated any plausible explanation for Respondent’s registration
of the
<yahooventures.com> domain name).
Respondent is using the <doctorcelebrex.com>
domain name in order to attract Internet users to its website that sells
prescription drugs. Therefore,
Respondent is using the disputed domain name to attract potential customers and
solicit sales. Because there is no way
for Internet users to know whether or not Complainant has sanctioned the
website located at <doctorcelebrex.com> Respondent is benefiting
commercially from the likelihood of confusion created as to the source,
sponsorship and affiliation
of the disputed domain name. This behavior is evidence of bad faith use
pursuant to 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 Fossil Inc. v. NAS, FA 92525 (Nat. Arb.
Forum Feb. 23, 2000) (finding that Respondent acted in bad faith by registering
the domain name <fossilwatch.com>
and using it to sell various watch brands).
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 <doctorcelebrex.com>
be transferred from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: November 22, 2002
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