Generic Top Level Domain Name (gTLD) Decisions

DECISION

G.D. Searle & Co. v. Erica Amane

Claim Number: FA0210000126838

PARTIES

Complainant is G. D. Searle & Co., Skokie, IL (“Complainant”) represented by Paul D. McGrady, of Ladas & Parry.  Respondent is Erica Amane, Mobile, AL (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <get-vioxx-celebrex.com>, registered with Stargate Communications.

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.

Hon. Ralph Yachnin 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 8, 2002, Stargate Communications confirmed by e-mail to the Forum that the domain name <get-vioxx-celebrex.com> is registered with Stargate Communications and that Respondent is the current registrant of the name.  Stargate Communications has verified that Respondent is bound by the Stargate Communications 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 8, 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@get-vioxx-celebrex.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 22, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Ralph Yachnin 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.

PROCEDURAL ISSUE - MARKS OF MULTIPLE PARTIES

Respondent’s <get-vioxx-celebrex.com> domain name incorporates multiple parties’ marks and interests.  More specifically, the following drug companies are implicated by way of Respondent’s domain name: G.D. Searle (Complainant) (CELEBREX) and Merck (VIOXX). 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.  See Smart Design LLC v. Hughes, D2000-0993 (WIPO Oct. 18, 2000) (holding that ICANN Policy ¶ 4(a)(i) does not require Complainant to demonstrate ‘exclusive rights,’ but only that Complainant has a bona fide basis for making the Complaint in the first place). 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 mark is 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); see also G.D. Searle v. Dunham, FA 123901 (Nat. Arb. Forum Oct. 9, 2002).

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A.      Complainant makes the following assertions:

1.      Respondent’s <get-vioxx-celebrex.com> domain name is confusingly similar to Complainant’s CELEBREX registered mark.

2.      Respondent does not have any rights or legitimate interests in the <get-vioxx-celebrex.com> domain name.

3.      Respondent registered and used the <get-vioxx-celebrex.com> domain name in bad faith.

B.      Respondent did not submit a Response in this proceeding.

FINDINGS

Complainant, G.D. Searle and Co., is the owner of numerous applications and registrations for its fanciful CELEBREX mark. Complainant has filed applications to register the CELEBREX mark in more than 112 countries around the world. An example of one of Complainant’s registrations is U.S. Patent and Trademark Office (“USPTO”) Reg. No. 2,307,888 registered on the Principal Register January 11, 2000 reflecting the CELEBREX mark.

 

Complainant’s CELEBREX mark began receiving media attention as early as December of 1998. Complainant filed its applications for registration of the mark as early as February 10, 1998 in the U.S., and internationally as early as February 16, 1998.

 

Complainant’s CELEBREX mark denotes “pharmaceutical products in the nature of anti-inflammatory analgesics” to the international consuming public. Complainant has made extensive use of its CELEBREX mark by using it in connection with the sale of anti-arthritic medicine on an international scale. Complainant’s CELEBREX drug was referred to in an article for The New York Times as a “blockbuster arthritis drug,” and Forbes magazine featured Complainant’s CELEBREX drug, referring to it as “the $2 billion (sales) crown jewel in [Complainant’s] new portfolio.”

 

Due to Complainant’s extensive marketing campaign and the substantial advertising resources it has expended on the CELEBREX mark, Complainant’s CELEBREX mark has earned (1) worldwide notoriety for the purpose of protection under the Paris Convention, and (2) fame in the U.S. for the purpose of protection under the Trademark Dilution Act.

Respondent registered the <get-vioxx-celebrex.com> domain name on March 14, 2002. Complainant’s submission reveals that Respondent is using the subject domain name in conjunction with a website that offers drugs via an online pharmacy. Complainant has not authorized or provided consent, express or implied, for Respondent to use the CELEBREX mark in connection with any purpose.

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 the CELEBREX mark through registration with the USPTO and subsequent continuous use of the mark as denoting its famous analgesic drug.

Respondent’s <get-vioxx-celebrex.com> domain name is confusingly similar to Complainant’s CELEBREX mark. Respondent’s domain name incorporates a suggestive phrase into the second-level domain, indicating that Internet users can acquire Complainant’s product on Respondent’s website. The addition of a generic and suggestive word, such as “get,” fails to create a unique domain name capable of overcoming a Policy ¶ 4(a)(i) analysis. Further, the addition of another drug name does not create a distinct domain name, but merely creates a domain name with severe potential to confuse Internet users as to the source or sponsorship of the domain name and corresponding website. See 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”); see also Prudential Ins. Co. of Am. v. Irvine, FA 95768 (Nat. Arb. Forum Nov. 6, 2000) (finding that the domain name is identical to Complainant’s PRUDENTIAL ONLINE trademark…also the root of the domain name, namely the word "Prudential," is identical to Complainant’s mark…thus, the domain name in its entirety is confusingly similar to Complainant’s family of marks).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Significantly, Respondent failed to submit a Response in this proceeding and Complainant’s assertions have gone unopposed. Because Complainant’s submission constitutes a prima facie case, Respondent has an obligation to rebut Complainant’s supported arguments and present circumstances that represent rights or legitimate interests in the domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding where a 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”).

The Panel may draw such inferences as it considers appropriate if a respondent fails to submit a response. Because Respondent failed to respond, all inferences in the Complaint may be accepted as true, unless clearly contradicted by the evidence. See 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); 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).

Uncontested circumstances indicate that Respondent is using the disputed domain name to solicit drug orders. Respondent is opportunistically trading and commercially benefiting from the fame of Complainant’s CELEBREX mark. Such unauthorized use fails to establish rights or legitimate interests under Policy ¶¶ 4(c)(i) or (iii). If the Panel found otherwise, Respondent would be allowed to derive benefits from Complainant’s extensive and costly advertising campaign and pharmaceutical development. See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); 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).

No evidence suggests that Respondent has a legitimate connection with the <get-vioxx-celebrex.com> domain name. Respondent’s asserted name is Erica Amane. Therefore, Respondent fails in establishing rights or legitimate interests in the domain name under Policy ¶ 4(c)(ii) because nothing indicates Respondent is commonly known by the infringing <get-vioxx-celebrex.com> domain name. Additionally, Respondent is not licensed or authorized to make use of Complainant’s CELEBREX mark for any reason or purpose. See 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).

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

The more distinctive a trademark is, the greater its influence in stimulating sales, its impression on the memory of the consumer and the likelihood of associating similar designations on other goods with the same source. Because Complainant’s CELEBREX mark is a coined term, it is more likely that any goods on which a similar designation is used will be regarded as emanating from the same source and sponsored by the same entity. McCarthy on Trademarks and Unfair Competition, § 11:6 (4th ed. 2000). Respondent utilizes the infringing domain name to divert Internet users to its website, where it sells Complainant’s products and those of Complainant’s competitor. Therefore, Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv). Respondent is attempting to profit from confusion generated as a result of its unauthorized use of Complainant’s famous mark in its domain name.

Further, Respondent’s use of Complainant’s mark, despite knowledge of Complainant’s rights, indicates bad faith intentions. 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 G.D. Searle & Co. v. 24-7-Commerce.com, FA 114707 (Nat. Arb. Forum July 31, 2002) (finding that “[i]t is evident that Respondent knew of Complainant’s rights in the CELEBREX mark” since Complainant’s CELEBREX mark is a fanciful term, and Respondent uses the mark in conjunction with marks of Complainant’s competitors); see also Red Bull GmbH v. Gutch, D2000-0766 (WIPO Sept. 21, 2000) (finding that Respondent’s expected use of the domain name <redbull.org> would lead people to believe that the domain name was connected with Complainant, and thus is the equivalent to bad faith use).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.

Accordingly, it is Ordered that the <get-vioxx-celebrex.com> domain name be TRANSFERRED from Respondent to Complainant.

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

Dated: November 25, 2002

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