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Generic Top Level Domain Name (gTLD) Decisions |
G.D. Searle & Co. v. Joann Hefelinger
Claim Number: FA0210000126839
PARTIES
Complainant
is G.D. Searle & Co., Skokie, IL
(“Complainant”) represented by Paul D.
McGrady, of Ladas & Parry. Respondent is Joann Hefelinger, Spring Hill, FL (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <celebrex4life.com>,
registered with BulkRegister.
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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on October 3, 2002; the Forum received
a hard copy of the
Complaint on October 4, 2002.
On
October 4, 2002, BulkRegister confirmed by e-mail to the Forum that the domain
name <celebrex4life.com> is
registered with BulkRegister and that Respondent is the current registrant of
the name. BulkRegister has verified
that Respondent is bound by the BulkRegister 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@celebrex4life.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 19, 2002, pursuant to Complainant’s request to have the dispute
decided by a single-member Panel, the Forum appointed
the Honorable Charles K.
McCotter, Jr. (Ret.) 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
<celebrex4life.com> domain
name is confusingly similar to Complainant’s CELEBREX mark.
Respondent
has no rights or legitimate interests in the <celebrex4life.com> domain name.
Respondent
registered and used the <celebrex4life.com>
domain name in bad faith.
B.
Respondent
Respondent failed to submit a Response in
this proceeding.
FINDINGS
Complainant holds a United States Patent
and Trademark Office (“USPTO”) registration for the CELEBREX mark, which is
registered on
the Principal Register (Reg. No. 2,307,888). Complainant has actively sought trademark
protection of its CELEBREX mark in over 112 countries worldwide. Complainant started seeking trademark
protection for its CELEBREX mark as early as February 10, 1998.
The CELEBREX mark was coined to denote
Complainant’s arthritis drug.
Complainant began receiving press for its CELEBREX arthritis medication
as early as December of 1998. The
CELEBREX mark and related pharmaceutical product have been widely promoted by
Complainant as representing medicine intended as
an anti-inflammatory
analgesic. As a result of Complainant’s
developmental and advertising efforts the CELEBREX mark holds a substantial
amount of goodwill for Complainant. In
fact, the CELEBREX mark has been praised by The New York Times
and Forbes magazine as a “blockbuster arthritis drug” and as a “crown
jewel in [Complainant’s] new portfolio,” respectively.
Respondent registered the domain name on
November 13, 2000. Respondent has made
no active use of the domain name.
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 its rights in
the CELEBREX mark through proof of trademark registration with the USPTO.
Respondent’s <celebrex4life.com> domain name incorporates Complainant’s
entire CELEBREX mark. The only
difference between the CELEBREX mark and the <celebrex4life.com> domain name is the addition of the suffix
“4life” to the mark. This “4life”
suffix has a connotation that relates to Complainant’s CELEBREX medication,
because the medication is promoted as improving
the lifestyle of people
inflicted with arthritis. Hence, the
dominant portion of the <celebrex4life.com>
domain name remains Complainant’s CELEBREX mark and the domain name is
confusingly similar to the mark. See
Arthur Guinness Son & Co. (Dublin)
Ltd. v. Healy/BOSTH, D2001-0026
(WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in
dispute contains the identical mark of Complainant
combined with a generic word
or term); see also Space Imaging LLC v.
Brownwell, AF-0298 (eResolution Sept. 22,
2000) (finding confusing similarity where Respondent’s domain name combines
Complainant’s mark with
a generic term that has an obvious relationship to
Complainant’s business).
The Panel finds Policy ¶
4(a)(i) has been satisfied.
Rights or Legitimate Interests
Complainant has alleged a prima facie
case, including its allegation that Respondent has no rights or legitimate
interests in the <celebrex4life.com>
domain name because it is not actively used.
Complainant has discharged its burden under the Policy, which
effectively shifts the burden on Respondent to articulate rights or
legitimate
interests in the <celebrex4life.com>
domain name. Under Policy ¶ 4(a)(ii),
Respondent has three ways to show rights or legitimate interests in a domain
name. Respondent, however, has failed
to submit a Response and therefore the Panel presumes that Respondent lacks
rights or legitimate interests
in the <celebrex4life.com>
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 Boeing Co.
v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate
interests where Respondent has advanced no basis on which the Panel
could
conclude that it has a right or legitimate interest in the domain names, and no
use of the domain names has been established).
Furthermore, since Respondent has failed
to rebut the Complaint, the Panel accepts all allegations as true and will draw
all reasonable
inferences in favor of Complainant. See 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”);
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).
Respondent has never actively used the <celebrex4life.com> domain
name. Respondent has held the <celebrex4life.com> domain name
for two years and has been given the opportunity to respond and provide
demonstrable plans to use the domain name in
this dispute. Respondent has failed to come forward and,
as Complainant suggests, Respondent apparently registered the <celebrex4life.com> domain name
solely based on the value of the CELEBREX mark. Passive holding of a <celebrex4life.com>
domain name that contains another entity’s mark does not constitute a bona fide
offering of goods or service pursuant to Policy ¶
4(c)(i), nor does its
represent a legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii). See G.D. Searle v.
Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding where Complainant
has asserted that Respondent has no rights or legitimate interests
in respect
of the domain name it is incumbent on Respondent to come forward with concrete
evidence rebutting this assertion because
this information is “uniquely within
the knowledge and control of the respondent”); 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 no express or implied
consent to use Complainant’s CELEBREX mark.
Respondent has not come forward with any evidence and Complainant has
alleged that Respondent is not commonly known by the <celebrex4life.com> domain name. There is no evidence to suggest otherwise, so the Panel finds
that Respondent lacks rights or legitimate interests in the <celebrex4life.com> domain name
pursuant to Policy ¶ 4(c)(ii). See
Broadcom Corp. v. Intellifone Corp.,
FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate
interests because Respondent is not commonly known by
the disputed domain name
or using the domain name in connection with a legitimate or fair use).
Accordingly, the Panel finds that
Respondent has no rights or legitimate interests in the <celebrex4life.com> domain name; thus, Policy ¶ 4(a)(ii) has
been established.
Registration and Use in Bad Faith
A list of bad faith circumstances is
found in Policy paragraph 4(b). This
list, however, is merely intended to be illustrative of the types of situations
bad faith may be found. Thus, it is not
exhaustive and the Panel may look at the totality of circumstances upon
undertaking the bad faith issue. See
Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“the
examples [of bad faith] in Paragraph 4(b) are intended to be illustrative,
rather than exclusive”);
see also 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”).
Complainant’s CELEBREX mark is well
established on an international scale.
The CELEBREX mark also enjoys USPTO trademark protection as a mark
registered with the Principal Register.
The USPTO registration status imparts constructive knowledge of
Complainant’s CELEBREX mark upon all subsequent domestic users of
the mark,
like Respondent. Furthermore,
Respondent’s suffix “4life” suggests that Respondent had knowledge of
Complainant’s CELEBREX anti-inflammatory medication. Moreover, Complainant coined the fanciful CELEBREX mark for its
pharmaceutical product. Hence, it is
evident Respondent had knowledge of Complainant’s interests in the CELEBREX
mark prior to registering the <celebrex4life.com>
domain name. Therefore, the Panel finds
that Respondent registered the domain name in bad faith under Policy ¶
4(a)(iii). See Victoria’s Cyber Secret Ltd. P’ship v. V Secret Catalogue,
Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla.
2001) (noting that “a Principal Register registration [of a trademark or
service mark] is constructive
notice of a claim of ownership so as to eliminate
any defense of good faith adoption” pursuant to 15 U.S.C. § 1072); see also
Am. Online Inc. v. Shenzhen JZT
Computer Software Co. Ltd, D2000-0809 (WIPO Sept. 6, 2000) (finding that
<gameicq.com> and <gameicq.net> are obviously connected with
services
provided with the world-wide business of ICQ and that the use of the
domain names by someone with no connection to the product suggests
opportunistic bad faith); see also Aveda
Corp. v. Evita Mktg., Inc., 706 F. Supp. 1419, 12 U.S.P.Q.2d 1091, 1098 (D.
Minn. 1989) (quoting treatise: "Fanciful marks,
if adopted in a bona fide first use, are considered the strongest of marks
because their
inherent novelty creates a substantial impact on the buyer's
mind").
Respondent registered the <celebrex4life.com> domain name
two years ago and has not provided any content at the domain name. Respondent has not provided an explanation
for the delay of website development in association with the <celebrex4life.com> domain
name. In the absence of a Response and
given the passive holding and substantial similarity of the <celebrex4life.com> domain name
and CELEBREX mark, it can be inferred that any future use of the domain name
would be an infringement upon Complainant’s
interests in the mark. Inactive use of a domain name that
prominently features another entity’s mark is evidence of bad faith use, and
therefore the Panel
finds bad faith use on the part of Respondent under Policy
¶ 4(a)(iii). See Phat Fashions v. Kruger, FA 96193 (Nat.
Arb. Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even
though Respondent has not used the domain
name because “It makes no sense
whatever to wait until it actually ‘uses’ the name, when inevitably, when there
is such use, it will
create the confusion described in the Policy”); 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).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
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 <celebrex4life.com> be TRANSFERRED from
Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated: November 25, 2002
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